Mirpuri vs CA, GR No.

114508, 19 November 1999, 318 SCRA 516

FACTS Lolita Escobar applied with the Bureau of Patents for the registration of the trademark Barbizon, alleging that she had been manufacturing and selling these products since 1970. private respondent Barbizon Corp opposed the application in IPC No. 686. The Bureau granted the application and a certificate of registration was issued for the trademark Barbizon. Escobar later assigned all her rights and interest over the trademark to petitioner Mirpuri. In 1979, Escobar failed to file with the Bureau the Affidavit of Use of the trademark. Due to his failure, the Bureau cancelled the certificate of registration. Escobar reapplied and Mirpuri also applied and this application was also opposed by private respondent in IPC No. 2049, claiming that it adopted said trademark in 1933 and has been using it. It obtained a certificate from the US Patent Office in 1934. Then in 1991, DTI cancelled petitioners registration and declared private respondent the owner and prior user of the business name Barbizon International.

ISSUE Whether or not the treaty (Paris Convention) affords protection to a foreign corporation against a Philippine applicant for the registration of a similar trademark.

HELD The Court held in the affirmative. RA 8293 defines trademark as any visible sign capable of distinguishing goods. The Paris Convention is a multilateral treaty that seeks to protect industrial property consisting of patents, utility models, industrial designs, trademarks, service marks, trade names and indications of source or appellations of origin, and at the same time aims to repress unfair competition. 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. Nationals of the various member nations are thus assured of a certain minimum of international protection of their industrial property.

ABS CBN Broadcasting v Philippine Multi-media system 576 SCRA 262- 2009

Facts: ABS-CBN

is engaged in television and radio broadcastingthrough wireless and satellite means while Philippine Multi-Media Systems Inc. (PMSI for brevity), the operator of DreamBroadcasting System provides direct-to-home (DTH) television viasatellite to its subscribers all over the Philippines. PMSI was granted legislative franchise under RA 8630 to install, operate and maintain a nationwide DTH satellite service and is obligated under by NTC Memorandum Circular No. 4-08-88, Section 6.2 of which requires all cable television system operators operating in a community within Grade A or B contours to carry the television signals of the authorized television broadcast stations (must-carry rule). ABS-CBN filed a complaint with Intellectual Property Office (IPO) for violation of laws involving property rights. It alleged that PMSIs unauthorized rebroadcasting of Channels 2 and 23 infringed on its broadcasting rights and copyright and that the NTC circular only covers cable television system operators and not DTH satellitetelevision operators. Moreover, NTC Circular 4-08-88 violates Sec. 9 of Art. III of the Constitution because it allows the taking of property for public use without payment of just compensation. PMSI argued that its rebroadcasting of Channels 2 and 23 is sanctioned by Memorandum Circular No. 04-08-88; that

the must-carry rule under the Memorandum Circular is a valid exercise of police power. IPO and Court of Appeals ruled in favor of PMSI.

Issues: (1) w/n PMSI infringed on ABS-CBNs broadcasting rights and copyright (2) w/n PMSI is covered by the NTC Circular (must-carry rule) (3) Whether NTC Circular 4-08-88 violates Sec. 9 of Art. III of the Constitution because it allows the taking of property for public use without payment of just compensation or it is a valid exercise of police power.

Held: (1) NO. PMSI does not infringe on ABS-CBNs broadcasting rights under the IP Code as PMSI is not engaged in rebroadcasting of Channels 2 and 23. Rebroadcasting, which is prohibited by the IP Code, is the simultaneous broadcasting by one broadcasting organization of the broadcast of another broadcasting organization. ABS-CBN creates and transmits its own signals; PMSI merely carries such signals which the viewers receive in its unaltered form. PMSI does not

produce, select, or determine the programs to be shown in Channels 2 and 23. Likewise, it does not pass itself off as the origin or author of such programs. Insofar as Channels 2 and 23 are concerned, PMSI merely retransmits the same in accordance with NTC Memorandum Circular 0408-88. (2) YES. DTH satellite tv operators is covered under the NTC Circular which requires all cable television system operators to carry the television signals of the authorized television broadcaststations. The DirectorGeneral of the IPO and the Court of Appealscorrectly found that PMSIs services are similar to a cable television system because the services it renders fall under cable retransmission. Thus, PMSI, being a DTH Satellite TV operator is covered by the NTC Circular. (3) The carriage of ABS-CBNs signals by virtue of the must-carry rule in Memorandum Circular No. 04-08-88 is under the direction and control of the government though the NTC which is vested with exclusive jurisdiction to supervise, regulate and control telecommunications and broadcast services/facilities in the Philippines. The imposition of the must-carry rule is within the NTCs power to promulgate rules and regulations, as public safety and interest may require, to encourage a larger and more effective use of communications, radio and television broadcasting facilities, and to maintain effective competition among private entities.

EMERALD GARMENT MANUFACTURING CORPORATION vs. HON. COURT OF APPEALS, BUREAU OF PATENTS, TRADEMARKS AND TECHNOLOGY TRANSFER and H.D. LEE COMPANY, INC. G.R. No. 100098, December 29, 1995 FACTS: On 18 September 1981, private respondent H.D. Lee Co., Inc. filed with the Bureau of Patents, Trademarks & Technology Transfer (BPTTT) a Petition for Cancellation of Registration No. SR 5054 for the trademark "STYLISTIC MR. LEE" used on skirts, jeans, blouses, socks, briefs, jackets, jogging suits, dresses, shorts, shirts and lingerie under Class 25, issued on 27 October 1980 in the name of petitioner Emerald Garment Manufacturing Corporation. Private respondent averred that petitioner's trademark "so closely resembled its own trademark, 'LEE' as previously registered and used in thePhilippines cause confusion, mistake and deception on the part of the purchasing public as to the origin of the goods. On 19 July 1988, the Director of Patents rendered a decision granting private respondent's petition for cancellation and opposition to registration. The Director of Patents, using the test of dominancy, declared that petitioner's trademark was confusingly similar to private respondent's mark because "it is the word 'Lee' which draws the attention of the buyer and leads him to conclude that the goods originated from the same manufacturer. It is undeniably the dominant feature of the mark. ISSUE: Whether or not a trademark causes confusion and is likely to deceive the public is a question of fact which is to be resolved by applying the "test of dominancy", meaning, if the competing trademark contains the main or essential or dominant features of another by reason of which confusion and deception are likely to result. HELD: The word "LEE" is the most prominent and distinctive feature of the appellant's trademark and all of the appellee's "LEE" trademarks. It is the mark which draws the attention of the buyer and leads him to conclude that the goods originated from the same manufacturer. The alleged difference is too insubstantial to be noticeable. The likelihood of confusion is further made more probable by the fact that both parties are engaged in the same line of business. Although the Court decided in favor of the respondent, the appellee has sufficiently established its right to prior use and registration of the trademark "LEE" in

the Philippines and is thus entitled to protection from any infringement upon the same. The dissenting opinion of Justice Padilla is more acceptable.