LIP CASE DOCTRINES (2018)
Atty. C. Busmente
MIDTERM CASES
1. MIGHTY CORP V. GALLO WINERY
- Intellectual Property Code shall have no retroactive effect.
Laws shall have no retroactive effect unless otherwise
provided.
2. SASOT & SASOT V. PEOPLE
- A foreign corporation not engaged and licensed to do
business in the PH may maintain a case of unfair
competition due to the fact that the Court recognizes our
duties and the rights of foreign states under the Paris
Convention to which the PH and France are parties.
- The crime of Unfair competition, punishable under Art.
189 of the RPC, is essentially an act against the state and it
is the latter which principally stands as the injured party.
The complainant’s capacity to sue in such case becomes
immaterial.
3. KHO V. CA
- Trademark – visible sign capable of distinguishing the
goods or services of an enterprise and shall include a
stamped or marked container of goods
- Trade Name – name of designation identifying or
distinguishing an enterprise
- Copyright – confined to literary and artistic domain
protected from the moment of their creation
- Patentable Inventions – any technical solution of a
problem in any field of human activity which is new,
involves an inventive step, and is industrially applicable
- In order to be entitled to exclusive use of the same in the
sale of the beauty product, the user must sufficiently
prove that she registered or used it before anybody else
did.
- the petitioners copyright and patent registration of the
name and container would not guarantee her right to the
exclusive use of the same for the reason that they are not
appropriate subjects of the said intellectual rights.
4. PEARL AND DEAN V. SHOEMART
- Copyright is a purely statutory right. The rights are limited
to what the statute confers. Accordingly, it can cover only
the work falling within the statutory enumeration or
description
5. LA CHEMISE LACOSTE V. FERNANDEZ
- A foreign corporation not doing business in the PH needs
no license to sue before the PH courts for infringement of
trademark and unfair competition. The Court recognizes
our duties and the rights of foreign states under the Paris
Convention for the protection of industrial property to
which the PH and France are parties.
6. PHIL. PHARMAWEALTH V. PFIZER, INC.
- Interlocutory orders of the BLA-IPO are appealable in the
ordinary courts and not to the Director General of the IPO.
Only final orders are appealable to the Director General.
7. IN-N-OUT BURGER V. SEHWANI INC.
- Complaint seeking the cancellation of the disputed mark
and damages for violation of the petitioner’s intellectual
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property rights falls within the jurisdiction of the IPO
Director of Legal Affairs.
8. ROMA DRUG V. RTC OF GUAGUA
- Section 7 of Rep. Act No. 9502 amends Section 72 of the
Intellectual Property Code in that the later law
unequivocally grants third persons the right to import
drugs or medicines whose patent were registered in the
Philippines by the owner of the product.
9. SMITH KLINE V. CA
- When the language of its claims is clear and distinct, the
patentee is bound thereby and may not claim anything
beyond them.
- The doctrine of equivalents provides that an infringement
also takes place when a device appropriates a prior
invention by incorporating its innovative concept and,
although with some modification and change, performs
substantially the same function in substantially the same
way to achieve substantially the same result.
10. MCDONALD’S V. LC BIG MAK
- To establish trademark infringement, the following
elements must be shown:
1. the validity of plaintiff’s mark;
2. the plaintiff’s ownership of the mark; and
3. the use of the mark or its colorable imitation by the
alleged infringer results in “likelihood of confusion.”
- Of these, it is the element of likelihood of confusion that is
the gravamen of trademark infringement.
11. MCDONALD’S V. MCJOY
- In determining similarity and likelihood of confusion,
jurisprudence has developed two tests, the dominancy
test and the holistic test. The dominancy test focuses on
the similarity of the prevalent features of the competing
trademarks that might cause confusion or deception. In
contrast, the holistic test requires the court to consider the
entirety of the marks as applied to the products, including
the labels and packaging, in determining confusing
similarity. Under the latter test, a comparison of the words
is not the only determinant factor.
12. ANG V. TEODORO
- To determine whether noncompeting goods are or are not
of the same class is confusion as to the origin of the goods
of the second user. Although two noncompeting arti-cles
may be classified under two different classes by the Patent
Office because they are deemed not to possess the same
de-scriptive properties, they would neverthe-less be held
by the courts to belong to the same class if the
simultaneous use on them of identical or closely similar
trade-marks would be likely to cause confusion as to the
origin, or personal source, of the sec-ond user's goods.
13. FREDCO V. HARVARD
- Harvard University can invoke the IP Law which prohibits
the registration of a mark which may disparage or falsely
suggest a connection with persons, living or dead, or
institutions.
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LIP CASE DOCTRINES (2018)
Atty. C. Busmente
14. BIRKENSTOCK V. PHILIPPINE SHOE
- Registration merely creates a prima facie presumption of
the validity of the registration, of the registrant’s
ownership of the trademark, and of the exclusive right to
the use thereof. Such presumption may be rebuttable and
must give way to evidence to the contrary.
15. SKECHERS V. INTER PACIFIC
- The Dominancy Test focuses on the similarity of the
prevalent or dominant features of the competing
trademarks that might cause confusion, mistake, and
deception in the mind of the purchasing public.
- The Dominancy Test focuses on the similarity of the
prevalent or dominant features of the competing
trademarks that might cause confusion, mistake, and
deception in the mind of the purchasing public.
they appear in their respective labels or hang tags must
also be considered in relation to the goods to which they
are attached.
20. BERRIES AGRICULTURAL V. ABYADANG
- The Holistic or Totality Test necessitates a consideration of
the entirety of the marks as applied to the products,
including the labels and packaging, in determining
confusing similarity.
21. FREDCO V. HARVARD
- Under the Paris Convention, the trademark to be
protected must be well-known in the country where
protection is sought. The power to determine whether the
trademark is well-known lies in the competent authority of
the country of registration or use.

16. ASIA BREWERY V. CA AND SAN MIGUEL 22. 246 CORP V. DAWAY
- If the competing trademark contains the main or essential - A junior user of a well-known mark on goods or services
or dominant features of another, and confusion and which are not similar to the goods or services, and are
deception is likely to result, infringement takes place. therefore unrelated, to those specified in the certificate of
registration of the well-known mark is precluded from
17. PROSOURCE V. HORPHAG using the same on the entirely unrelated goods or services,
- In determining similarity and likelihood of confusion, subject to the following requisites:
jurisprudence has developed two tests: the Dominancy 1. Mark is well-known internationally and in the PH
Test and the Holistic or Totality Test. The Dominancy Test 2. The use of the well-known mark on the entirely
focuses on the similarity of the prevalent features of the unrelated goods or services would indicate a
competing trademarks that might cause confusion and connection between such unrelated goods
deception, thus constituting infringement. If the 3. Interests of the owner of the well-known mark are
competing trademark contains the main, essential and likely to be damaged.
dominant features of another, and confusion or deception
is likely to result, infringement takes place. Duplication or
imitation is not necessary; nor is it necessary that the
infringing label should suggest an effort to imitate. The
question is whether the use of the marks involved is likely
to cause confusion or mistake in the mind of the public or
to deceive purchasers. Courts will consider more the aural
and visual impressions created by the marks in the public
mind, giving little weight to factors like prices, quality,
sales outlets, and market segments. In contrast, the
Holistic Test entails a consideration of the entirety of the
marks as applied to the products, including the labels and
packaging, in determining confusing similarity. The
discerning eye of the observer must focus not only on the
predominant words but also on the other features
appearing on both labels in order that the observer may
draw his conclusion whether one is confusingly similar to
the other.

18. DEL MONTE V. CA

- The question is not whether the 2 articles are
distinguishable by their labels when set side by side but
whether the general confusion made by the article upon
the eye of the casual purchaser who is unsuspicious and
off his guard, is such as to likely result in his confounding it
with the original.

19. FRUIT OF THE LOOM V. CA

- In determining whether the trademarks are confusingly
similar, a comparison of the words is not the only
determinant factor. The trademarks in their entirety as

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