Del Rosario v. Donato 1. A.M.

02-1-06-SC, the Rule on Search and Seizure in Civil Actions for Infringement of Intellectual Property Rights, provides: SEC. 21. Claim for damages. Where the writ [of search and seizure] is discharged on any of the grounds provided in this Rule, or where it is found after trial that there has been no infringement or threat of infringement of an intellectual property right, the court, upon motion of the alleged infringing defendant or expected adverse party and after due hearing, shall order the applicant to compensate the defendant or expected adverse party upon the cash bond, surety bond or other equivalent security for any injury or damage the latter suffered by the issuance and enforcement of the writ. Should the damages exceed the amount of the bond, the applicant shall be liable for the payment of the excess. When a complaint is already filed in court, the motion shall be filed with the same court during the trial or before appeal is perfected or before judgment becomes executory, with due notice to the applicant, setting forth the facts showing the defendants right to damages and the amount thereof. The award of damages shall be included in the judgment in the main case. Where no complaint is filed against the expected adverse party, the motion shall be filed with the court which issued the writ. In such a case, the court shall set the motion for summary hearing and immediately determine the expected adverse partys right to damages. A judgment in favor of the applicant in its principal claim should not necessarily bar the alleged infringing defendant from recovering damages where he suffered losses by reason of the wrongful issuance or enforcement of the writ. The damages provided for in this section shall be independent from the damages claimed by the defendant in his counterclaim. - I learned from this case that for claim of damages under the above-mentioned provision, the offended party should file their claim for compensation from the same court that issued the writ of search and seizure for infringement of an intellectual property right. If the one who has such claim for compensation files it on another court, then he will be deemed guilty of forum shopping. 2. Cause of action in civil cases - I learned from this case the elements or requisites for a complaint to state a cause of action for the court to have sufficient basis on determining whether to grant judgment in favor of the plaintiff or against the defendant. The three elements are: 1) Plaintiffs legal right in the matter; 2) Defendants obligation to honor or respect such right; 3) Defendants subsequent violation of the right. 3. A judicially ordered search is not per se unlawful - I learned from this case that if the search order fails to yield the illegal things subject to it, it does not render such search warrant unlawful. The party alleging that such search warrant is unlawful should present clear evidence that it was issued in bad faith

like inducing the judge through illegal means or through malicious intention of the one seeking the search warrant to be issued. 4. Motion to dismiss dos not extend to mere conclusions of law - If the allegations in the motion to dismiss are merely conclusions of law that was made by the party who filed such motion, then such complaint is in danger of being dismissed because of failure to state a cause of action. 5. Enforcement of search warrants in view of neighbors is not wrong - There is nothing is wrong in enforcing a valid search warrant wherein the neighbors of the place being search saw the actual searching of the place by the proper authorities. The rules safeguards the right of the owners from possible abuses that might arise in the searching process by requiring that if the owner or his representatives is not present on the actual search, then it should be done in the presence of two residents of the same locality.

Soceite Des Produits Nestle, S.A. vs. Martin T. Dy, Jr. 1. Elements of infringement under R.A. 166 Section 22 of R.A. No. 166, the following constitute the elements of Trademark infringement: A Trademark actually used in commerce and registered in the principal register of the PPO Used by another person in connection with the sale of goods or services or in connection with which such use is likely to cause confusion or mistake or to deceive purchasers or others as to the source or origin of such goods or services, or identity of such business Trademark is used for identical or similar goods Such act is done without the consent of the Trademark registrant. - I learned from the case the elements that constitute trademark infringement under the above-mentioned law. It helps protect the usage of trademarks or trade names. 2. Elements of infringement under R.A. 8293 The Trademark infringed is registered in the IPO, in trade name, the same need not be registered The Trademark or Trade name is not reproduced, counterfeited, copied, or colorably imitated by the infringer The infringing mark or trade name is used in connection with the sale, offering for sale, or advertising of any goods; or the infringing mark or trade name is applied to labels, signs, prints, intended to be used upon or in connection with such goods, business, or services;

The use or application of the infringing mark or trade name is likely to cause confusion or mistake or to deceive purchasers or others as to the goods or services themselves or as to the source or origin of such goods or services or the identity of such business Without the consent of the trademark or trade name owner or assignee. - I learned from the case the pertinent provision which enumerates the elements of Trademark infringement under the Intellectual Property Code. This gave me knowledge on how Trademark infringement is being done that is prohibited by the said code also to protect those companies that will attempt to infringe trademarks of well-known companies that does business here in our country. 3. Types of confusion with respect to trademarks - I learned from the case that there are two types that likelihood of confusion can occur: 1) Confusion of goods which in the event the ordinarily prudent purchaser would be induced to purchase one product in the belief that he was purchasing the other; 2) Confusion of business which though the goods of the parties are different, the defendants product is such as might reasonably be assumed to originate with the plaintiff, and the public would then be deceived either into that belief or into the belief that there is some connection between the plaintiff and defendant which, in fact does not exist. 4. The dominancy test - I learned from the case that this is one of the types that determine the likelihood of confusion. This test focuses on the similarity of the main, prevalent or essential features of the competing trademarks that might cause confusion. Infringement takes place when the competing trademark contains the essential features of another. Imitation or an effort to imitate is unnecessary. The question is whether the use of the marks is likely to cause confusion or deceive purchasers. 5. The holistic test - I learned from the case that this is another type that determines the likelihood that confusion will happen with respect to trademarks. This test considers the entirety of the marks, including labels and packaging, in determining confusing similarity. The focus is not only on the predominant words but also on the other features appearing on the labels.

Skechers, U.S.A, Inc. v. Inter Pacific Industrial Trading Corporation, et. al. 1. Issuance of search and seizure warrant - I learned from the case that in the determination of the existence of probable cause for the issuance or quashal of a warrant, it is inevitable that the court may touch on issues properly threshed out in a regular proceeding. When the court, in determining probable cause for issuing or quashing a search warrant, finds that no offense has been committed, it does not interfere with or encroach upon the proceedings in the preliminary investigation being or to be conducted by the investigating officer.

2. Holistic or Totality test - I learned from the case that this test was developed by jurisprudence to determine if there is a likelihood that confusion will happen. This test considers the entirety of the marks that is applied to the products in determining confusing similarity. The observer of the product should focus on the labels appearing in both products and not only on the words used to determine whether one is confusingly similar to the other. 3. Dominancy Test - I learned from the case that this focuses on the similarity of the dominant features of competing trademarks that might cause confusion on the eyes of the public consumers. What is given more consideration in this case are the visual impression that is made by the marks on the buyers of the goods and giving only of little importance the factors like quality, prices, market segments, and sales outlets. 4. Difference in price not a complete defense in trademark infringement - I learned from the case that just because there is a difference in price between competing products that have similar trademarks, it doesnt mean that such difference can be used as an absolute defense to the prejudice of the one who originally have thought or registered the trademark that was used. In McDonalds Corporation v. L.C. Big Mak Burger. Inc., the SC held: Modern law recognizes that the protection to which the owner of a trademark is entitled is not limited to guarding his goods or business from actual market competition with identical or similar products of the parties, but extends to all cases in which the use by a junior appropriator of a trade-mark or trade-name is likely to lead to a confusion of source, as where prospective purchasers would be misled into thinking that the complaining party has extended his business into the field (see 148 ALR 56 et seq; 53 Am. Jur. 576) or is in any way connected with the activities of the infringer; or when it forestalls the normal potential expansion of his business (v. 148 ALR 77, 84; 52 Am. Jur. 576, 577). x x x 5. Protection of trademark intended to preserve reputation of business - I learned from the case that in protecting the trademarks of business as an intellectual property, this not only preserves the good will and reputation of the business but also the public who consumes the goods so as confusion not to occur. While there are dissimilarities in the products, the SC will not close its eyes when it is clearly apparent that the overall design and features was duplicated or was copied by the offending party.