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HON NE CHAN, YUNJI ZENG, AND JOHN DOE vs. HONDA MOTOR CO., LTD., AND HONDA PHIL.

, INC. G.R. No. 172775, December 19, 2007 CHICO-NAZARIO, J.: In this case, the following for me are the salient principles: 1. The fact that the products of the two contending parties in this case do not bear the same trade name would eliminate any possible confusion on the part of the public that the motorcycle units they would be buying from Ne Chan are those manufactured and/or sold by Honda. Also the motorcycles in question bears strikingly dissimilar features which would reinforce the idea that consumers wouldnt be perplexed on the identity of the product they are buying. 2. Under Republic Act No. 8293 also known as Intellectual Property Code, under Sec. 168 in relation to 170, an Unfair Competition involving design patents should have a clear evidence whether a crime exist; thereafter it shall be penalized under Art. 189 par. 3 of the Revised Penal Code. The person concerned shall procure from the patent office or any other office which may hereafter be established by law for such purposes, the registration of a trade name, trademark or service mark, or himself as the owner of such trade name, trademark or service mark or an entry respecting a trade name, trademark mark and service mark. 3. When the trial court unmistakably declared that no unfair competition exists in this case it clearly overstepped its authority for such conclusion is not within its competence to make; its task is merely confined to the preliminary matter of determination of probable cause and nothing more. Consequently, the evidence the court requires in dispensing search warrants is far less stringent than that required in the trial on the merits of the charge involving unfair competition. 4. In this case, it is quite obvious that the petitioners and the respondents cause of action arose out of the intrusion into their established goodwill involving the two motorcycle models and not patent infringement. 5. In every application for a search warrant, it is settled that in determining probable cause, a judge is duty-bound to personally examine under oath the complainant and the witnesses he may present. Such petitioner and his witnesses must attest to the truth of the facts within their personal knowledge because the purpose thereof is to convince the committing magistrate, not the individual making the affidavit and seeking the issuance of the warrant, of the existence of probable cause.

SEHWANI, INCORPORATED and/or BENITA'S FRITES, INC. vs. IN-N-OUT BURGER, INC. G.R. No. 171053, October 15, 2007 YNARES-SANTIAGO, J.: In this case, the following for me are the salient principles: 1. According to Sec. 160 of R.A. No. 8293, any foreign national or juridical person who meets the requirements of Sec. 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. 2. Even though IN-N-OUT BURGERs marks are neither registered nor used in the Philippines is not a major consideration. The scope of protection initially afforded by Article 6 of the Paris Convention has been expanded in the 1999 Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks, wherein the World Intellectual Property Organization (WIPO) General Assembly and the Paris Union agreed to a nonbinding recommendation that a wellknown mark should be protected in a country even if the mark is neither registered nor used in that country. 3. According to the Paris Convention, particularly Article 6 which governs the protection of wellknown trademarks, such particular provision is self-executing and does not require legislative enactment to give it effect in the member country. It may be applied directly by the tribunals and officials of each member country by the mere publication or proclamation of the Convention, after its ratification according to the public law of each state and the order for its execution. The essential requirement under this Article is that the trademark to be protected must be "wellknown" in the country where protection is sought. The power to determine whether a trademark is well-known lies in the "competent authority of the country of registration or use." This competent authority would be either the registering authority if it has the power to decide this, or the courts of the country in question if the issue comes before a court. 4. The question of whether or not respondents trademarks are considered "well-known" is factual in nature, involving as it does the appreciation of evidence adduced before the BLA-IPO. The settled rule is that the factual findings of quasi-judicial agencies, like the IPO, which have acquired expertise because their jurisdiction is confined to specific matters, are generally accorded not only respect, but, at times, even finality if such findings are supported by substantial evidence. 5. The Ongpin Memorandum dated October 25, 1983 set the criteria for determining whether a mark is well known, and takes into consideration the extent of registration of a mark. Similarly, the implementing rules of Republic Act 8293, specifically Section (e) Rule 102 also takes into account the extent to which the mark has been registered in the world in determining whether a mark is well known.

MATTEL, INC. vs. EMMA FRANCISCO, Director-General >of the Intellectual Property Office, HON. ESTRELLITA B. ABELARDO, Director of the Bureau of Legal Affairs (IPO), and JIMMY UY G.R. No. 166886, July 30, 2008 AUSTRIA-MARTINEZ, J.: In this case, the following for me are the salient principles: 1. The non-filing of the Declaration of Actual Use as mandated by pertinent provisions of R.A. No. 8293 is a judicial admission that the applicant or registrant effectively abandoned or withdrawn any right or interest in his trademark. And such non-filing will give the Director the right to refuse or remove the subject marks from the Register. 2. According to Rule 204 of the Rules and Regulations on Trademarks, the Office will not require any proof of use in commerce in the processing of trademark applications. However, without need of any notice from the Office, all applicants or registrants, shall file a declaration of actual use of the mark with evidence to that effect within three years, without the possibility of extension, from the filing date of the application. Otherwise, the application shall be refused or the mark shall be removed from the register by the Director motu propio. 3. For pending applications prosecuted under R.A. 166, the law distinguishes that base on use, the applicant or registrant must submit Declaration of Actual Use and evidence of use on or before December 1, 2001, subject to a single six (6) month extension 4. Uy's admission in his Comment and Memorandum of non-compliance with the foregoing requirements is a judicial admission and an admission against interest combined. A judicial admission binds the person who makes the same. In the same vein, an admission against interest is the best evidence which affords the greatest certainty of the facts in dispute. The rationale for the rule is based on the presumption that no man would declare anything against himself unless such declaration is true. Thus, it is fair to presume that the declaration corresponds with the truth, and it is his fault if it does not. 5. It cannot be gainsaid that for a court to exercise its power of adjudication, there must be an actual case or controversy one which involves a conflict of legal rights, an assertion of opposite legal claims susceptible of judicial resolution; the case must not be moot or academic or based on extra-legal or other similar considerations not cognizable by a court of justice. However, the courts will decide cases, otherwise moot and academic, if: first, there is a grave violation of the Constitution; second, the exceptional character of the situation and the paramount public interest is involved; third, when the constitutional issue raised requires formulation of controlling principles to guide the bench, the bar, and the public; and fourth, the case is capable of repetition yet evading review.

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