SECOND DIVISION

G.R. No. 185830, June 05, 2013

ECOLE DE CUISINE MANILLE (CORDON BLEU OF THE PHILIPPINES),
INC., Petitioner, v.RENAUIL COINTREAU & CIE AND LE CORDON BLEU
INT'L., B.V., Respondents.
DECISION
PERLAS-BERNABE, J.:
Assailed in.this petition for review on certiorari1 is the December 23, 2008
Decision2 of the Court of Appeals (CA) in CA-G.R. SP No. 104672 which
affirmed in toto the Intellectual Property Office (IPO) Director General's April
21, 2008 Decision3 that declared respondent Renaud Cointreau & Cie
(Cointreau) as the true and lawful owner of the mark "LE CORDON BLEU &
DEVICE" and thus, is entitled to register the same under its name.
The Facts
On June 21, 1990, Cointreau, a partnership registered under the laws of
France, filed before the (now defunct) Bureau of Patents, Trademarks, and
Technology Transfer (BPTTT) of the Department of Trade and Industry a
trademark application for the mark "LE CORDON BLEU & DEVICE".for
goods falling under classes 8, 9, 16, 21, 24, 25, 29, and 30 of the
International Classification of Goods and Services for the Purposes of
Registrations of Marks ("Nice Classification") (subject mark). The application
was filed pursuant to Section 37 of Republic Act No. 166, as amended (R.A.
No. 166), on the basis of Home Registration No. 1,390,912, issued on
November 25, 1986 in France. Bearing Serial No. 72264, such application
was published for opposition in the March-April 1993 issue of the BPTTT
Gazette and released for circulation on May 31, 1993.4
On July 23, 1993, petitioner Ecole De Cuisine Manille, Inc. (Ecole) filed an
opposition to the subject application, averring that: (a) it is the owner of the
mark "LE CORDON BLEU, ECOLE DE CUISINE MANILLE," which it has
been using since 1948 in cooking and other culinary activities, including in its
restaurant business; and (b) it has earned immense and invaluable goodwill
such that Cointreaus use of the subject mark will actually create confusion,
mistake, and deception to the buying public as to the origin and sponsorship
of the goods, and cause great and irreparable injury and damage to Ecoles

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business reputation and goodwill as a senior user of the same.5
On October 7, 1993, Cointreau filed its answer claiming to be the true and
lawful owner of the subject mark. It averred that: (a) it has filed applications
for the subject marks registration in various jurisdictions, including the
Philippines; (b) Le Cordon Bleu is a culinary school of worldwide acclaim
which was established in Paris, France in 1895; (c) Le Cordon Bleu was the
first cooking school to have set the standard for the teaching of classical
French cuisine and pastry making; and (d) it has trained students from more
than eighty (80) nationalities, including Ecoles directress, Ms. Lourdes L.
Dayrit. Thus, Cointreau concluded that Ecoles claim of being the exclusive
owner of the subject mark is a fraudulent misrepresentation.6
During the pendency of the proceedings, Cointreau was issued Certificates
of Registration Nos. 60631 and 54352 for the marks "CORDON BLEU &
DEVICE" and "LE CORDON BLEU PARIS 1895 & DEVICE" for goods and
services under classes 21 and 41 of the Nice Classification, respectively.7
The Ruling of the Bureau of Legal Affairs
In its Decision8 dated July 31, 2006, the Bureau of Legal Affairs (BLA) of the
IPO sustained Ecoles opposition to the subject mark, necessarily resulting
in the rejection of Cointreaus application.9 While noting the certificates of
registration obtained from other countries and other pertinent materials
showing the use of the subject mark outside the Philippines, the BLA did not
find such evidence sufficient to establish Cointreaus claim of prior use of the
same in the Philippines. It emphasized that the adoption and use of
trademark must be in commerce in the Philippines and not abroad. It then
concluded that Cointreau has not established any proprietary right entitled to
protection in the Philippine jurisdiction because the law on trademarks rests
upon the doctrine of nationality or territoriality.10
On the other hand, the BLA found that the subject mark, which was the
predecessor of the mark "LE CORDON BLEU MANILLE" has been known
and used in the Philippines since 1948 and registered under the name
"ECOLE DE CUISINE MANILLE (THE CORDON BLEU OF THE
PHILIPPINES), INC." on May 9, 1980.11
Aggrieved, Cointreau filed an appeal with the IPO Director General.
The Ruling of the IPO Director General
In his Decision dated April 21, 2008, the IPO Director General reversed and

In resolving the issue of ownership and right to register the subject mark in
favor of Cointreau, he considered Cointreaus undisputed use of such mark
since 1895 for its culinary school in Paris, France (in which petitioners own
directress, Ms. Lourdes L. Dayrit, had trained in 1977). Contrarily, he found
that while Ecole may have prior use of the subject mark in the Philippines
since 1948, it failed to explain how it came up with such name and mark.
The IPO Director General therefore concluded that Ecole has unjustly
appropriated the subject mark, rendering it beyond the mantle of protection
of Section 4(d)14 of R.A. No. 166.15
Finding the IPO Director Generals reversal of the BLAs Decision
unacceptable, Ecole filed a Petition for Review16 dated June 7, 2008 with the
CA.
Ruling of the CA
In its Decision dated December 23, 2008, the CA affirmed the IPO Director
Generals Decision in toto.17 It declared Cointreau as the true and actual
owner of the subject mark with a right to register the same in the Philippines
under Section 37 of R.A. No. 166, having registered such mark in its country
of origin on November 25, 1986.18
The CA likewise held that Cointreaus right to register the subject mark
cannot be barred by Ecoles prior use thereof as early as 1948 for its
culinary school "LE CORDON BLEU MANILLE" in the Philippines because
its appropriation of the mark was done in bad faith. Further, Ecole had no
certificate of registration that would put Cointreau on notice that the former
had appropriated or has been using the subject mark. In fact, its application
for trademark registration for the same which was just filed on February 24,
1992 is still pending with the IPO.19
Hence, this petition.
Issues Before the Court

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set aside the BLAs decision, thus, granting Cointreaus appeal and allowing
the registration of the subject mark.12 He held that while Section 2 of R.A.
No. 166 requires actual use of the subject mark in commerce in the
Philippines for at least two (2) months before the filing date of the
application, only the owner thereof has the right to register the same,
explaining that the user of a mark in the Philippines is not ipso facto its
owner. Moreover, Section 2-A of the same law does not require actual use in
the Philippines to be able to acquire ownership of a mark.13

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The sole issue raised for the Courts resolution is whether the CA was
correct in upholding the IPO Director Generals ruling that Cointreau is the
true and lawful owner of the subject mark and thus, entitled to have the
same registered under its name.
At this point, it should be noted that the instant case shall be resolved under
the provisions of the old Trademark Law, R.A. No. 166, which was the law in
force at the time of Cointreaus application for registration of the subject
mark.
The Courts Ruling
The petition is without merit.
In the petition, Ecole argues that it is the rightful owner of the subject mark,
considering that it was the first entity that used the same in the Philippines.
Hence, it is the one entitled to its registration and not Cointreau.
Petitioners argument is untenable.
Under Section 220 of R.A. No. 166, in order to register a trademark, one must
be the owner thereof and must have actually used the mark in commerce in
the Philippines for two (2) months prior to the application for registration.
Section 2-A21 of the same law sets out to define how one goes about
acquiring ownership thereof. Under Section 2-A, it is clear that actual use in
commerce is also the test of ownership but the provision went further by
saying that the mark must not have been so appropriated by another.
Additionally, it is significant to note that Section 2-A does not require that the
actual use of a trademark must be within the Philippines. Thus, as correctly
mentioned by the CA, under R.A. No. 166, one may be an owner of a mark
due to its actual use but may not yet have the right to register such
ownership here due to the owners failure to use the same in the Philippines
for two (2) months prior to registration.22
Nevertheless, foreign marks which are not registered are still accorded
protection against infringement and/or unfair competition. At this point, it is
worthy to emphasize that the Philippines and France, Cointreaus country of
origin, are both signatories to the Paris Convention for the Protection of
Industrial Property (Paris Convention).23 Articles 6bis and 8 of the Paris
Convention state:cralavvonlinelawlibrary
ARTICLE 6bis

ARTICLE 8
A trade name shall be protected in all the countries of the Union without the
obligation of filing or registration, whether or not it forms part of a
trademark. (Emphasis and underscoring supplied)
In this regard, Section 37 of R.A. No. 166 incorporated Article 8 of the Paris
Convention, to wit:cralavvonlinelawlibrary
Section 37. Rights of foreign registrants. - Persons who are nationals of,
domiciled in, or have a bona fide or effective business or commercial
establishment in any foreign country, which is a party to any international
convention or treaty relating to marks or trade-names, or the repression of
unfair competition to which the Philippines may be a party, shall be entitled
to the benefits and subject to the provisions of this Act to the extent and
under the conditions essential to give effect to any such convention and
treaties so long as the Philippines shall continue to be a party thereto,
except as provided in the following paragraphs of this section.
xxxx
Trade-names of persons described in the first paragraph of this section shall
be protected without the obligation of filing or registration whether or not they
form parts of marks.
xxxx
In view of the foregoing obligations under the Paris Convention, the
Philippines is obligated to assure nationals of the signatory-countries that
they are afforded an effective protection against violation of their intellectual
property rights in the Philippines in the same way that their own countries
are obligated to accord similar protection to Philippine nationals.24 "Thus,

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(1) The countries of the Union undertake, ex officio if their legislation so

permits, or at the request of an interested party, to refuse or to cancel the
registration, and to prohibit the use, of a trademark which constitutes a
reproduction, an imitation, or a translation, liable to create confusion, of a
mark considered by the competent authority of the country of registration or
use to be well known in that country as being already the mark of a person
entitled to the benefits of this Convention and used for identical or
similar goods. These provisions shall also apply when the essential
part of the mark constitutes a reproduction of any such well- known
mark or an imitation liable to create confusion therewith.

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under Philippine law, a trade name of a national of a State that is a party to
the Paris Convention, whether or not the trade name forms part of a
trademark, is protected "without the obligation of filing or registration."25
In the instant case, it is undisputed that Cointreau has been using the
subject mark in France since 1895, prior to Ecoles averred first use of the
same in the Philippines in 1948, of which the latter was fully aware thereof.
In fact, Ecoles present directress, Ms. Lourdes L. Dayrit (and even its
foundress, Pat Limjuco Dayrit), had trained in Cointreaus Le Cordon Bleu
culinary school in Paris, France. Cointreau was likewise the first registrant of
the said mark under various classes, both abroad and in the Philippines,
having secured Home Registration No. 1,390,912 dated November 25, 1986
from its country of origin, as well as several trademark registrations in the
Philippines.26
On the other hand, Ecole has no certificate of registration over the subject
mark but only a pending application covering services limited to Class 41 of
the Nice Classification, referring to the operation of a culinary school. Its
application was filed only on February 24, 1992, or after Cointreau filed its
trademark application for goods and services falling under different classes
in 1990. Under the foregoing circumstances, even if Ecole was the first to
use the mark in the Philippines, it cannot be said to have validly appropriated
the same.
It is thus clear that at the time Ecole started using the subject mark, the
same was already being used by Cointreau, albeit abroad, of which Ecoles
directress was fully aware, being an alumna of the latters culinary school in
Paris, France. Hence, Ecole cannot claim any tinge of ownership
whatsoever over the subject mark as Cointreau is the true and lawful owner
thereof. As such, the IPO Director General and the CA were correct in
declaring Cointreau as the true and lawful owner of the subject mark and as
such, is entitled to have the same registered under its name.
In any case, the present law on trademarks, Republic Act No. 8293,
otherwise known as the Intellectual Property Code of the Philippines, as
amended, has already dispensed with the requirement of prior actual use at
the time of registration.27 Thus, there is more reason to allow the registration
of the subject mark under the name of Cointreau as its true and lawful
owner.
As a final note, "the function of a trademark is to point out distinctly the origin
or ownership of the goods (or services) to which it is affixed; to secure to
him, who has been instrumental in bringing into the market a superior article
of merchandise, the fruit of his industry and skill; to assure the public that
they are procuring the genuine article; to prevent fraud and imposition; and

WHEREFORE, the petition is DENIED. Accordingly, the December 23, 2008

Decision of the Court of Appeals in CA-G.R. SP No. 104672 is
hereby AFFIRMED in toto.
SO ORDERED.

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to protect the manufacturer against substitution and sale of an inferior and

different article as his product."28 As such, courts will protect trade names or
marks, although not registered or properly selected as trademarks, on the
broad ground of enforcing justice and protecting one in the fruits of his toil.29

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G.R. No. 194062, June 17, 2013

REPUBLIC GAS CORPORATION, ARNEL U. TY, MARI ANTONETTE N.
TY, ORLANDO REYES, FERRER SUAZO AND ALVIN U.
TY, Petitioners, v. PETRON CORPORATION, PILIPINAS SHELL
PETROLEUM CORPORATION, AND SHELL INTERNATIONAL
PETROLEUM COMPANY LIMITED,Respondents.
DECISION
PERALTA, J.:
This resolves the Petition for Review on Certiorari under Rule 45 of the
Rules of Court filed by petitioners seeking the reversal of the Decision1 dated
July 2, 2010, and Resolution2 dated October 11, 2010 of the Court of
Appeals (CA) in CA-G.R. SP No. 106385.
Stripped of non-essentials, the facts of the case, as summarized by the CA,
are as follows:cralavvonlinelawlibrary

Petitioners Petron Corporation (Petron for brevity) and Pilipinas Shell

Petroleum Corporation (Shell for brevity) are two of the largest bulk
suppliers and producers of LPG in the Philippines. Petron is the registered
owner in the Philippines of the trademarks GASUL and GASUL cylinders
used for its LGP products. It is the sole entity in the Philippines authorized to
allow refillers and distributors to refill, use, sell, and distribute GASUL LPG
containers, products and its trademarks. Pilipinas Shell, on the other hand, is
the authorized user in the Philippines of the tradename, trademarks,
symbols or designs of its principal, Shell International Petroleum Company
Limited, including the marks SHELLANE and SHELL device in connection
with the production, sale and distribution of SHELLANE LPGs. It is the only
corporation in the Philippines authorized to allow refillers and distributors to
refill, use, sell and distribute SHELLANE LGP containers and products.
Private respondents, on the other hand, are the directors and officers of
Republic Gas Corporation (REGASCO for brevity), an entity duly licensed
to engage in, conduct and carry on, the business of refilling, buying, selling,
distributing and marketing at wholesale and retail of Liquefied Petroleum
Gas
(LPG).

LPG Dealers Associations, such as the Shellane Dealers Association, Inc.,

Petron Gasul Dealers Association, Inc. and Totalgaz Dealers Association,
received reports that certain entities were engaged in the unauthorized
refilling, sale and distribution of LPG cylinders bearing the registered
tradenames and trademarks of the petitioners. As a consequence, on
February 5, 2004, Genesis Adarlo (hereinafter referred to as Adarlo), on
behalf of the aforementioned dealers associations, filed a letter-complaint in
the National Bureau of Investigation (NBI) regarding the alleged illegal
trading of petroleum products and/or underdelivery or underfilling in the sale
of
LPG
products.
Acting on the said letter-complaint, NBI Senior Agent Marvin E. De Jemil
(hereinafter referred to as De Jemil) was assigned to verify and confirm the
allegations contained in the letter-complaint. An investigation was thereafter
conducted, particularly within the areas of Caloocan, Malabon, Novaliches
and Valenzuela, which showed that several persons and/or establishments,
including REGASCO, were suspected of having violated provisions of Batas
Pambansa Blg. 33 (B.P. 33). The surveillance revealed that REGASCO LPG
Refilling Plant in Malabon was engaged in the refilling and sale of LPG
cylinders bearing the registered marks of the petitioners without authority
from the latter. Based on its General Information Sheet filed in the Securities
and Exchange Commission, REGASCOs members of its Board of Directors
are: (1) Arnel U. Ty President, (2) Marie Antoinette Ty Treasurer, (3)
Orlando Reyes Corporate Secretary, (4) Ferrer Suazo and (5) Alvin Ty
(hereinafter
referred
to
collectively
as
private
respondents).
De Jemil, with other NBI operatives, then conducted a test-buy operation on
February 19, 2004 with the former and a confidential asset going
undercover. They brought with them four (4) empty LPG cylinders bearing
the trademarks of SHELLANE and GASUL and included the same with the
purchase of J&S, a REGASCOs regular customer. Inside REGASCOs
refilling plant, they witnessed that REGASCOs employees carried the empty
LPG cylinders to a refilling station and refilled the LPG empty cylinders.
Money was then given as payment for the refilling of the J&Ss empty
cylinders which included the four LPG cylinders brought in by De Jemil and
his companion. Cash Invoice No. 191391 dated February 19, 2004 was
issued
as
evidence
for
the
consideration
paid.
After leaving the premises of REGASCO LPG Refilling Plant in Malabon, De
Jemil and the other NBI operatives proceeded to the NBI headquarters for
the proper marking of the LPG cylinders. The LPG cylinders refilled by
REGASCO
were
likewise
found
later
to
be
underrefilled.
Thus, on March 5, 2004, De Jemil applied for the issuance of search

4. Respondents REGASCO LPG Refilling Plant-Malabon is not one of

those entities authorized to refill LPG cylinders bearing the marks of PSPC,
Petron and Total Philippines Corporation. A Certification dated February 6,
2004 confirming such fact, together with its supporting documents, are
attached
as
Annex
E
hereof.
6. For several days in the month of February 2004, the other NBI operatives
and I conducted surveillance and investigation on respondents REGASCO
LPG refilling Plant-Malabon. Our surveillance and investigation revealed that
respondents REGASCO LPG Refilling Plant-Malabon is engaged in the
refilling and sale of LPG cylinders bearing the marks of Shell International,
PSPC
and
Petron.
x

x.

8. The confidential asset and I, together with the other operatives of [the]
NBI, put together a test-buy operation. On February 19, 2004, I, together
with the confidential asset, went undercover and executed our test-buy
operation. Both the confidential assets and I brought with us four (4) empty
LPG cylinders branded as Shellane and Gasul. x x x in order to have a
successful test buy, we decided to ride-on our purchases with the purchase
of Gasul and Shellane LPG by J & S, one of REGASCOs regular
customers.
9. We proceeded to the location of respondents REGASCO LPG Refilling
Plant-Malabon and asked from an employee of REGASCO inside the
refilling plant for refill of the empty LPG cylinders that we have brought
along, together with the LPG cylinders brought by J & S. The REGASCO
employee, with some assistance from other employees, carried the empty
LPG cylinders to a refilling station and we witnessed the actual refilling of our
empty
LPG
cylinders.
10. Since the REGASCO employees were under the impression that we
were together with J & S, they made the necessary refilling of our empty
LPG cylinders alongside the LPG cylinders brought by J & S. When we
requested for a receipt, the REGASCO employees naturally counted our
LPG cylinders together with the LPG cylinders brought by J & S for refilling.

Page

warrants in the Regional Trial Court, Branch 24, in the City of Manila against
the private respondents and/or occupants of REGASCO LPG Refilling Plant
located at Asucena Street, Longos, Malabon, Metro Manila for alleged
violation of Section 2 (c), in relation to Section 4, of B.P. 33, as amended by
PD 1865. In his sworn affidavit attached to the applications for search
warrants, Agent De Jemil alleged as follows:cralavvonlinelawlibrary
x
x
x.

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Hence, the amount stated in Cash Invoice No. 191391 dated February 19,
2004, equivalent to Sixteen Thousand Two Hundred Eighty-Six and 40/100
(Php16,286.40), necessarily included the amount for the refilling of our four
(4)
empty
LPG
cylinders.
x
x
x.
11. After we accomplished the purchase of the illegally refilled LPG cylinders
from respondents REGASCO LPG Refilling Plant-Malabon, we left its
premises bringing with us the said LPG cylinders. Immediately, we
proceeded to our headquarters and made the proper markings of the illegally
refilled LPG cylinders purchased from respondents REGASCO LPG
Refilling Plant-Malabon by indicating therein where and when they were
purchased. Since REGASCO is not an authorized refiller, the four (4) LPG
cylinders illegally refilled by respondents REGASCO LPG Refilling PlantMalabon, were without any seals, and when [weighed], were under-refilled.
Photographs of the LPG cylinders illegally refilled from respondents
REGASCO LPG Refilling Plant-Malabon are attached as Annex G hereof. x
x x.
After conducting a personal examination under oath of Agent De Jemil and
his witness, Joel Cruz, and upon reviewing their sworn affidavits and other
attached documents, Judge Antonio M. Eugenio, Presiding Judge of the
RTC, Branch 24, in the City of Manila found probable cause and
correspondingly issued Search Warrants Nos. 04-5049 and 04-5050.
Upon the issuance of the said search warrants, Special Investigator Edgardo
C. Kawada and other NBI operatives immediately proceeded to the
REGASCO LPG Refilling Station in Malabon and served the search warrants
on the private respondents. After searching the premises of REGASCO, they
were able to seize several empty and filled Shellane and Gasul cylinders as
well
as
other
allied
paraphernalia.
Subsequently, on January 28, 2005, the NBI lodged a complaint in the
Department of Justice against the private respondents for alleged violations
of Sections 155 and 168 of Republic Act (RA) No. 8293, otherwise known as
the
Intellectual
Property
Code
of
the
Philippines.
On January 15, 2006, Assistant City Prosecutor Armando C. Velasco
recommended the dismissal of the complaint. The prosecutor found that
there was no proof introduced by the petitioners that would show that private
respondent REGASCO was engaged in selling petitioners products or that it
imitated and reproduced the registered trademarks of the petitioners. He
further held that he saw no deception on the part of REGASCO in the
conduct of its business of refilling and marketing LPG. The Resolution
issued by Assistant City Prosecutor Velasco reads as follows in its
dispositive portion:cralavvonlinelawlibrary

Page

WHEREFORE, foregoing considered, the undersigned finds the evidence

against the respondents to be insufficient to form a well-founded belief that
they have probably committed violations of Republic Act No. 9293. The
DISMISSAL of this case is hereby respectfully recommended for
insufficiency of evidence.
On appeal, the Secretary of the Department of Justice affirmed the
prosecutors dismissal of the complaint in a Resolution dated September 18,
2008, reasoning therein that:cralavvonlinelawlibrary

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Atty. Espinas
Petitioners then filed a motion for reconsideration. However, the same was
denied by the CA in a Resolution dated October 11, 2010.
Accordingly, petitioners filed the instant Petition for Review
on Certiorari raising the following issues for our
resolution:cralavvonlinelawlibrary

x x x, the empty Shellane and Gasul LPG cylinders were brought by the NBI
agent specifically for refilling. Refilling the same empty cylinders is by no
means an offense in itself it being the legitimate business of Regasco to
engage in the refilling and marketing of liquefied petroleum gas. In other
words, the empty cylinders were merely filled by the employees of Regasco
because they were brought precisely for that purpose. They did not pass off
the goods as those of complainants as no other act was done other than to
refill
them
in
the
normal
course
of
its
business.

Whether the Petition for Certiorari filed by RESPONDENTS should have

been
denied
outright.

In some instances, the empty cylinders were merely swapped by customers

for those which are already filled. In this case, the end-users know fully well
that the contents of their cylinders are not those produced by complainants.
And the reason is quite simple it is an independent refilling station.

Whether probable cause exists to hold INDIVIDUAL PETITIONERS liable for

the offense charged.5

At any rate, it is settled doctrine that a corporation has a personality

separate and distinct from its stockholders as in the case of herein
respondents. To sustain the present allegations, the acts complained of must
be shown to have been committed by respondents in their individual
capacity by clear and convincing evidence. There being none, the complaint
must necessarily fail. As it were, some of the respondents are even gainfully
employed in other business pursuits. x x x.3

Anent the first issue, the general rule is that a motion for reconsideration is a
condition sine qua nonbefore a certiorari petition may lie, its purpose being
to grant an opportunity for the court a quo to correct any error attributed to it
by re-examination of the legal and factual circumstances of the case.6

Dispensing with the filing of a motion for reconsideration, respondents

sought recourse to the CA through a petition for certiorari.
In a Decision dated July 2, 2010, the CA granted
respondents certiorari petition. The fallo states:cralavvonlinelawlibrary

WHEREFORE, in view of the foregoing premises, the petition filed in this

case is herebyGRANTED. The assailed Resolution dated September 18,
2008 of the Department of Justice in I.S. No. 2005-055 is
hereby REVERSED and SET
ASIDE.
SO ORDERED.4nadcralavvonlinelawlibrary

Whether sufficient evidence was presented to prove that the crimes of

Trademark Infringement and Unfair Competition as defined and penalized in
Section 155 and Section 168 in relation to Section 170 of Republic Act No.
8293 (The Intellectual Property Code of the Philippines) had been
committed.

Let us discuss the issues in seriatim.

However, this rule is not absolute as jurisprudence has laid down several
recognized exceptions permitting a resort to the special civil action
for certiorari without first filing a motion for reconsideration,
viz.:cralavvonlinelawlibrary

(a) Where the order is a patent nullity, as where the court a quo has no
jurisdiction;
(b) Where the questions raised in the certiorari proceedings have been
duly raised and passed upon by the lower court, or are the same as
those raised and passed upon in the lower court.
(c) Where there is an urgent necessity for the resolution of the question and
any further delay would prejudice the interests of the Government or of
the petitioner or the subject matter of the petition is perishable;
(d) Where, under the circumstances, a motion for reconsideration would be
useless;

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In the present case, the filing of a motion for reconsideration may already be
dispensed with considering that the questions raised in this petition are the
same as those that have already been squarely argued and passed upon by
the Secretary of Justice in her assailed resolution.
Apropos the second and third issues, the same may be simplified to one
core issue: whether probable cause exists to hold petitioners liable for the
crimes of trademark infringement and unfair competition as defined and
penalized under Sections 155 and 168, in relation to Section 170 of Republic
Act (R.A.) No. 8293.
Section 155 of R.A. No. 8293 identifies the acts constituting trademark
infringement as follows:cralavvonlinelawlibrary

Section 155. Remedies; Infringement. Any person who shall, without

the consent of the owner of the registered mark:
155.1 Use in commerce any reproduction, counterfeit, copy or
colorable imitation of a registered mark of the same container or a
dominant feature thereof in connection with the sale, offering for sale,
distribution, advertising of any goods or services including other
preparatory steps necessary to carry out the sale of any goods or
services on or in connection with which such use is likely to cause
confusion,
or
to
cause
mistake,
or
to
deceive;
or
155.2 Reproduce, counterfeit, copy or colorably imitate a registered mark or
a dominant feature thereof and apply such reproduction, counterfeit, copy or
colorable imitation to labels, signs, prints, packages, wrappers, receptacles
or advertisements intended to be used in commerce upon or in connection
with the sale, offering for sale, distribution, or advertising of goods or
services on or in connection with which such use is likely to cause confusion,
or to cause mistake, or to deceive, shall be liable in a civil action for
infringement by the registrant for the remedies hereinafter set forth:

Page

(e) Where petitioner was deprived of due process and there is extreme
urgency for relief;
(f) Where, in a criminal case, relief from an order of arrest is urgent and the
granting of such relief by the trial court is improbable;
(g) Where the proceedings in the lower court are a nullity for lack of due
process;
(h) Where the proceeding was ex parte or in which the petitioner had no
opportunity to object; and,
(i) Where the issue raised is one purely of law or public interest is involved.7

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Atty. Espinas
Provided, That the infringement takes place at the moment any of the acts
stated in Subsection 155.1 or this subsection are committed regardless of
whether there is actual sale of goods or services using the infringing
material.8
From the foregoing provision, the Court in a very similar case, made it
categorically clear that the mere unauthorized use of a container bearing a
registered trademark in connection with the sale, distribution or advertising
of goods or services which is likely to cause confusion, mistake or deception
among the buyers or consumers can be considered as trademark
infringement.9
Here, petitioners have actually committed trademark infringement when they
refilled, without the respondents consent, the LPG containers bearing the
registered marks of the respondents. As noted by respondents, petitioners
acts will inevitably confuse the consuming public, since they have no way of
knowing that the gas contained in the LPG tanks bearing respondents
marks is in reality not the latters LPG product after the same had been
illegally refilled. The public will then be led to believe that petitioners are
authorized refillers and distributors of respondents LPG products,
considering that they are accepting empty containers of respondents and
refilling them for resale.
As to the charge of unfair competition, Section 168.3, in relation to Section
170, of R.A. No. 8293 describes the acts constituting unfair competition as
follows:cralavvonlinelawlibrary

Section 168. Unfair Competition, Rights, Regulations and Remedies. x x x.

168.3 In particular, and without in any way limiting the scope of protection
against unfair competition, the following shall be deemed guilty of unfair
competition:cralavvonlinelawlibrary
(a) Any person, who is selling his goods and gives them the general
appearance of goods of another manufacturer or dealer, either as to the
goods themselves or in the wrapping of the packages in which they are
contained, or the devices or words thereon, or in any other feature of their
appearance, which would be likely to influence purchasers to believe that the
goods offered are those of a manufacturer or dealer, other than the actual
manufacturer or dealer, or who otherwise clothes the goods with such
appearance as shall deceive the public and defraud another of his legitimate
trade, or any subsequent vendor of such goods or any agent of any vendor
engaged in selling such goods with a like purpose;chanroblesvirtualawlibrary

From jurisprudence, unfair competition has been defined as the passing off
(or palming off) or attempting to pass off upon the public of the goods or
business of one person as the goods or business of another with the end
and probable effect of deceiving the public.10
Passing off (or palming off) takes place where the defendant, by imitative
devices on the general appearance of the goods, misleads prospective
purchasers into buying his merchandise under the impression that they are
buying that of his competitors. Thus, the defendant gives his goods the
general appearance of the goods of his competitor with the intention of
deceiving the public that the goods are those of his competitor.11
In the present case, respondents pertinently observed that by refilling and
selling LPG cylinders bearing their registered marks, petitioners are selling
goods by giving them the general appearance of goods of another
manufacturer.
What's more, the CA correctly pointed out that there is a showing that the
consumers may be misled into believing that the LPGs contained in the
cylinders bearing the marks GASUL and SHELLANE are those goods or
products of the petitioners when, in fact, they are not. Obviously, the mere
use of those LPG cylinders bearing the trademarks GASUL and
SHELLANE will give the LPGs sold by REGASCO the general appearance
of the products of the petitioners.
In sum, this Court finds that there is sufficient evidence to warrant the
prosecution of petitioners for trademark infringement and unfair competition,
considering that petitioner Republic Gas Corporation, being a corporation,
possesses a personality separate and distinct from the person of its officers,
directors and stockholders.12 Petitioners, being corporate officers and/or
directors, through whose act, default or omission the corporation commits a
crime, may themselves be individually held answerable for the
crime.13 Veritably, the CA appropriately pointed out that petitioners, being in
direct control and supervision in the management and conduct of the affairs
of the corporation, must have known or are aware that the corporation is
engaged in the act of refilling LPG cylinders bearing the marks of the

Page

xxxx
Section 170. Penalties. Independent of the civil and administrative sanctions
imposed by law, a criminal penalty of imprisonment from two (2) years to five
(5) years and a fine ranging from Fifty thousand pesos (P50,000) to Two
hundred thousand pesos (P200,000), shall be imposed on any person who
is found guilty of committing any of the acts mentioned in Section 155,
Section 168 and Subsection 169.1.

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Atty. Espinas
respondents without authority or consent from the latter which, under the
circumstances, could probably constitute the crimes of trademark
infringement and unfair competition. The existence of the corporate entity
does not shield from prosecution the corporate agent who knowingly and
intentionally caused the corporation to commit a crime. Thus, petitioners
cannot hide behind the cloak of the separate corporate personality of the
corporation to escape criminal liability. A corporate officer cannot protect
himself behind a corporation where he is the actual, present and efficient
actor.14
WHEREFORE, premises considered, the petition is hereby DENIED and the
Decision dated July 2, 2010 and Resolution dated October 11, 2010 of the
Court of Appeals in CA-G.R. SP No. 106385 areAFFIRMED.
SO ORDERED.
Velasco, Jr., (Chairperson), Abad, Mendoza, and Leonen, JJ., concur.

July 24, 2013

N O T I C E OF J U D G M E N T
Sirs/Mesdames:cralavvonlinelawlibrary
Please take notice that on ___June 17, 2013 a Decision, copy attached
herewith, was rendered by the Supreme Court in the above-entitled
case, the original of which was received by this Office on July 24, 2013
at 2:00 p.m.
Very truly yours,
(SGD)
LUCITA ABJELINA SORIANO
Division Clerk of Court

Page

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Atty. Espinas

G.R. No. 202423 : January 28, 2013

CHESTER UYCO, WINSTON UYCHIYONG, and CHERRY C. UYCOONG, Petitioners, v. VICENTE LO,Respondents.
RESOLUTION
BRION, J.:
We resolve the motion for reconsideration1 dated October 22, 2012
filed by petitioners Chester Uyco, Winston Uychiyong and Cherry C.
Uyco-Ong to set aside the Resolution2 dated September 12, 2012 of
this Court, which affirmed the decision3 dated March 9, 2012 and the
resolution4 dated June 21, 2012 of the Court of Appeals (CA) in CAG.R. SP No. 111964. The CA affirmed the resolution5 dated September
1, 2008 of the Department of Justice (DOJ). Both the CA and the DOJ
found probable cause to charge the petitioners with false designation
of origin, in violation of Section 169.1, in relation with Section 170, of
Republic Act No. (RA) 8293, otherwise known as the "Intellectual
Property Code of the Philippines."6
?r?l1

The disputed marks in this case are the "HIPOLITO & SEA HORSE &
TRIANGULAR DEVICE," "FAMA," and other related marks, service
marks and trade names of Casa Hipolito S.A. Portugal appearing in
kerosene burners. Respondent Vicente Lo and Philippine Burners
Manufacturing Corporation (PBMC) filed a complaint against the
officers of Wintrade Industrial SalesCorporation (Wintrade), including

petitioners Chester Uyco, Winston Uychiyong and Cherry Uyco-Ong,

and of National Hardware, including Mario Sy Chua, for violation of
Section 169.1, in relation to Section 170, of RA 8293.
Lo claimed in his complaint that Gasirel-Industria de Comercio e
Componentes para Gass, Lda. (Gasirel), the owner of the disputed
marks, executed a deed of assignment transferring these marks in his
favor, to be used in all countries except for those in Europe and
America.7 In a test buy, Lo purchased from National Hardware
kerosene burners with the subject marks and the designations "Made
in Portugal" and "Original Portugal" in the wrappers. These products
were manufactured by Wintrade. Lo claimed that as the assignee for
the trademarks, he had not authorized Wintrade to use these marks,
nor had Casa Hipolito S.A. Portugal. While a prior authority was given
to Wintrades predecessor-in-interest, Wonder Project & Development
Corporation (Wonder), Casa Hipolito S.A. Portugal had already revoked
this authority through a letter of cancellation dated May 31, 1993. 8 The
kerosene burners manufactured by Wintrade have caused confusion,
mistake and deception on the part of the buying public. Lo stated that
the real and genuine burners are those manufactured by its agent,
PBMC.
In their Answer, the petitioners stated that they are the officers of
Wintrade which owns the subject trademarks and their variants. To
prove this assertion, they submitted as evidence the certificates of
registration with the Intellectual Property Office. They alleged that
Gasirel, not Lo, was the real party-in-interest. They allegedly derived
their authority to use the marks from Casa Hipolito S.A. Portugal
through Wonder, their predecessor-in-interest. Moreover, PBMC had
already ceased to be a corporation and, thus, the licensing agreement
between PBMC and Lo could not be given effect, particularly because
the agreement was not notarized and did not contain the provisions
required by Section 87 of RA 8293. The petitioners pointed out that Lo
failed to sufficiently prove that the burners bought from National
Hardware were those that they manufactured. But at the same time,
they also argued that the marks "Made in Portugal" and "Original
Portugal" are merely descriptive and refer to the source of the design
and the history of manufacture.

After the preliminary investigation, the Chief State Prosecutor found

probable cause to indict the petitioners for violation of Section 169.1,
in relation with Section 170, of RA 8293. This law punishes any person
who uses in commerce any false designation of origin which is likely to
cause confusion or mistake as to the origin of the product. The law
seeks to protect the public; thus, even if Lo does not have the legal
capacity to sue, the State can still prosecute the petitioners to prevent
damage and prejudice to the public.
On appeal, the DOJ issued a resolution affirming the finding of
probable case. It gave credence to Los assertion that he is the proper
assignee of the subject marks. More importantly, it took note of the
petitioners admission that they used the words "Made in Portugal"
when in fact, these products were made in the Philippines. Had they
intended to refer to the source of the design or the history of the
manufacture, they should have explicitly said so in their packaging. It
then concluded that the petitioners defenses would be better
ventilated during the trial and that the admissions of the petitioners
make up a sufficient basis for probable cause.
The CA found no grave abuse of discretion on the part of the DOJ and
affirmed the DOJs ruling.
When the petitioners filed their petition before us, we denied the
petition for failure to sufficiently show any reversible error in the
assailed judgment to warrant the exercise of the Courts discretionary
power.

Page

In a separate Answer, Chua admitted that he had dealt with Wintrade

for several years and had sold its products. He had not been aware
that Wintrade had lost the authority to manufacture, distribute, and
deal with products containing the subject marks, and he was never
informed of Wintrades loss of authority. Thus, he could have not been
part of any conspiracy.

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Atty. Espinas
question were not manufactured by, or in any way connected with, the
petitioners and/or Wintrade. They also allege that the words "Made in
Portugal" and "Original Portugal" refer to the origin of the design and
not to the origin of the goods.
The petitioners again try to convince the Court that they have not
manufactured the products bearing the marks "Made in Portugal" and
"Original Portugal" that were bought during the test buy. However,
their own admission and the statement given by Chua bear
considerable weight.
The admission in the petitioners Joint Affidavit is not in any way
hypothetical, as they would have us believe. They narrate incidents
that have happened. They refer to Wintrades former association with
Casa Hipolito S.A. Portugal; to their decision to produce the burners in
the Philippines; to their use of the disputed marks; and to their
justification for their use. It reads as follows:
cralawlibrary

24. As earlier mentioned, the predecessor-in-interest of Wintrade was

the former exclusive licensee of Casa Hipolito SA of Portugal since the
1970s, and that Wintrade purchased all the rights on the said
trademarks prior to the closure of said company. Indeed, the burners
sold by Wintrade used to be imported from Portugal, but Wintrade
later on discovered the possibility of obtaining these burners from
other sources or of manufacturing the same in the Philippines.
Wintrades decision to procure these burners from sources other than
Portugal is certainly its management prerogative. The presence of the
words "made in Portugal" and "original Portugal" on the wrappings of
the burners and on the burners themselves which are manufactured by
Wintrade is an allusion to the fact that the origin of the design of said
burners can be traced back to Casa Hipolito SA of Portugal, and that
the history of the manufacture of said burners are rooted in Portugal.
These words were not intended to deceive or cause mistake and
confusion in the minds of the buying public.9
?r?l1

We find no reversible error on the part of the CA and the DOJ to merit
reconsideration. The petitioners reiterate their argument that the
products bought during the test buy bearing the trademarks in

Chua, the owner of National Hardware the place where the test buy
was conducted admits that Wintrade has been furnishing it with

IPL- Trademark Additional Cases

Atty. Espinas

14

kerosene burners with the markings "Made in Portugal" for the past 20
years, to wit:
5. I hereby manifests (sic) that I had been dealing with Wintrade
Industrial Sales Corporation (WINTRADE for brevity) for around 20
years now by buying products from it. I am not however aware that
WINTRADE was no longer authorized to deal, distribute or sell
kerosene burner bearing the mark HIPOLITO and SEA HORSE Device,
with markings "Made in Portugal" on the wrapper as I was never
informed of such by WINTRADE nor was ever made aware of any
notices posted in the newspapers informing me of such fact. Had I
been informed, I would have surely stopped dealing with WINTRADE. 10

Page

cralawlibrary

?r?l1

Thus, the evidence shows that petitioners, who are officers of

Wintrade, placed the words "Made in Portugal" and "Original Portugal"
with the disputed marks knowing fully well because of their previous
dealings with the Portuguese company that these were the marks used
in the products of Casa Hipolito S.A. Portugal. More importantly, the
products that Wintrade sold were admittedly produced in the
Philippines, with no authority from Casa Hipolito S.A. Portugal. The law

on trademarks and trade names precisely precludes a person from

profiting from the business reputation built by another and from
deceiving the public as to the origins of products. These facts support
the consistent findings of the State Prosecutor, the DOJ and the CA
that probable cause exists to charge the petitioners with false
designation of origin. The fact that the evidence did not come from Lo,
but had been given by the petitioners, is of no significance.
The argument that the words "Made in Portugal" and "Original
Portugal" refer to the origin of the design and not to the origin of the
goods does not negate the finding of probable cause; at the same
time, it is an argument that the petitioners are not barred by this
Resolution from raising as a defense during the hearing of the case.
WHEREFORE, premises considered, we hereby DENY the motion for
reconsideration for lack of merit.
SO ORDERED.