SOCIETE DES PRODUITS NESTLE, S.A.AND NESTLE PHILIPPINES INC. V. CA AND CFC CORPORATION G.R. No. 112012, April 4, 2001 Facts: CFC Corporation filed with the Bureau of Patents, Trademarks and Technology Transfer (BPTTT) an application for the registration of the trademark FLAVOR MASTER for instant coffee. Upon notice of the application, Societe Des Produits Nestle, S.A., a Swiss company, filed a Notice of Opposition claiming that the trademark of CFC Corporation’s product is confusingly similar to its trademarks for coffee and coffee extracts, to wit: MASTER ROAST and MASTER BLEND. Likewise, a Notice of Opposition was filed by Nestle Philippines, Inc., licensee of Societe Des Produits Nestle S.A., against CFCs application. Nestle claimed that the use, if any, by CFC of the trademark FLAVOR MASTER and its registration would likely (1) cause confusion in the trade; (2) deceive purchasers and would falsely suggest to the purchasing public a connection in the business of Nestle, as the dominant word present in the three trademarks is MASTER; (3) or that the goods of CFC might be mistaken as having originated from the latter. In answer to the two oppositions, CFC argued that its trademark, FLAVOR MASTER, is not confusingly similar with the formers trademarks, MASTER ROAST and MASTER BLEND, alleging that, except for the word MASTER (which cannot be exclusively appropriated by any person for being a descriptive or generic name), the other words that are used respectively with said word in the three trademarks are very different from each other in meaning, spelling, pronunciation, and sound. CFC further argued that its trademark is clearly very different from any of Nestles alleged trademarks especially when the marks are viewed in their entirety, by considering their pictorial representations, color schemes and the letters of their respective labels. In its Decision, the BPTTT denied CFCs application for registration. The Court of Appeals reversed the Decision and ruled that the overall appearance of the contending marks, the physical discrepancies between CFCs and Nestle respective logos are so ostensible that the casual purchaser cannot likely mistake one for the other. Issue: Whether or not CFCs trade dress bear a striking resemblance with Nestle trademarks as to create in the purchasing publics mind the mistaken impression that both coffee products come from one and the same source? Whether the trademark FLAVOR MASTER is a colorable imitation of the trademarks MASTER ROAST and MASTER BLEND? Ruling: Colorable imitation denotes such a close or ingenious imitation as to be calculated to deceive ordinary persons, or such a resemblance to the original as to deceive an ordinary purchaser giving such attention as a purchaser usually gives, as to cause him to purchase the one supposing it to be the other. In determining if colorable imitation exists, jurisprudence has developed two kinds of tests - the Dominancy Test and the Holistic Test. The test of dominancy focuses on the similarity of the prevalent features of the competing trademarks which might cause confusion or deception and thus constitute infringement. On the other side of the spectrum, the holistic test mandates that the entirety of the marks in question must be considered in determining confusing similarity. In the case at bar, the Court of Appeals held that the determination of whether two trademarks are indeed confusingly similar must be taken from the viewpoint of the ordinary purchasers who are, in general, undiscerningly rash in buying the more common and less expensive household products like coffee, and are therefore less inclined to closely examine specific details of similarities and dissimilarities between competing products. From this perspective, the test of similarity is to consider the two marks in their entirety, as they appear in the respective labels, in relation to the goods to which they are attached. The basis for the Court of Appeals application of the totality or holistic test is the ordinary purchaser buying the product under normally prevalent conditions in trade and the attention such products normally elicit from said ordinary purchaser. An ordinary purchaser or buyer does not usually make such scrutiny nor does he usually have the time to do so. This Court cannot agree with the above reasoning. If the ordinary purchaser is undiscerningly rash in buying such common and inexpensive household products as instant coffee, and would therefore be less inclined to closely examine specific details of similarities and dissimilarities between the two competing products, then it would be less likely for the ordinary purchaser to notice that CFCs trademark FLAVOR MASTER carries the colors orange and mocha while that of Nestles uses red and brown. The application of the totality or holistic test is improper since the ordinary purchaser would not be inclined to notice the specific features, similarities or dissimilarities, considering that the product is an inexpensive and common household item. Rather, this Court believes that the dominancy test is more suitable to this case in light of its peculiar factual milieu. The totality or holistic test is contrary to the elementary postulate of the law on trademarks and unfair competition that confusing similarity is to be determined on the basis of visual, aural, connotative comparisons and overall impressions engendered by the marks in controversy as they are encountered in the realities of the marketplace. The totality or holistic test only relies on visual comparison between two trademarks whereas the dominancy test relies not only on the visual but also on the aural and connotative comparisons and overall impressions between the two trademarks. From the evidence at hand, it is sufficiently established that the word MASTER is the dominant feature of Nestle mark. The word MASTER is printed across the middle portion of the label in bold letters almost twice the size of the printed word ROAST. Further, the word MASTER has always been given emphasis in the TV and radio commercials and other advertisements made in promoting the product. In due time, because of these advertising schemes the mind of the buying public had come to learn to associate the word MASTER with the Nestle goods. When one looks at the label bearing the trademark FLAVOR MASTER, ones attention is easily attracted to the word MASTER, rather than to the dissimilarities that exist. Therefore, the possibility of confusion as to the goods which bear the competing marks or as to the origins thereof is not farfetched. The word MASTER is neither a generic nor a descriptive term. As such, said term can not be invalidated as a trademark and, therefore, may be legally protected. The term MASTER is a suggestive term brought about by the advertising scheme of Nestle. Suggestive terms are those which, in the phraseology of one court, require imagination, thought and perception to reach a conclusion as to the nature of the goods. Such terms, which subtly connote something about the product, are eligible for protection in the absence of secondary meaning. The term MASTER, therefore, has acquired a certain connotation to mean the coffee products MASTER ROAST and MASTER BLEND produced by Nestle. As such, the use by CFC of the term MASTER in the trademark for its coffee product FLAVOR MASTER is likely to cause confusion or mistake or even to deceive the ordinary purchasers. ASIA BREWERY, INC. VS. COURT OF APPEALS G.R. No. 103543, July 5, 1993 FACTS: On September 1988, San Miguel Corporation (SMC) sued Asia Brewery Inc. for allegedly infringing upon their trademark on their beer product popularly known as “San Miguel Pale Pilsen”; that Asia Brewery’s “Beer na Beer” product, by infringing upon SMC’s trademark has committed unfair competition as “Beer na Beer” creates confusion between the two products. The RTC ruled in favor of Asia Brewery but the Court of Appeals reversed the RTC. ISSUE: Whether or not Asia Brewery Inc. committed infringement of trademark and unfair competition against San Miguel Corporation.? RULING: No infringement. Infringement is determined by the "test of dominancy" rather than by differences or variations in the details of one trademark and of another. If the competing trademark 1) contains the main or essential or dominant features of another, and 2) confusion and deception is likely to result, infringement takes place. In the instant case, the dominant feature of SMC is the words “SAN MIGUEL PALE PILSEN” with elaborate serifs at the beginning and end of the letters "S" and "M." While the dominant feature of ABI's trademark is the name: “BEER PALE PILSEN” with the word "Beer" written in large amber letters. Besides the dissimilarity in their dominant feature, the following other dissimilarities in the appearance of the competing products abound: "Bottled by the San Miguel Brewery, Philippines," "Especial Incorpora With SMC logo No logo Price: P7.00 per bottle Price: P4. Based on the dissimilarity in their dominant features as well as in sound, spelling & appearance, Beer na Beer cannot be said to be similarly confusing with San Miguel Pale Pilsen. The fact that the words pale pilsen are part of ABI's trademark does not constitute an infringement of SMC's trademark: SAN MIGUEL PALE PILSEN, for "pale pilsen" are generic words descriptive of the color ("pale"), of a type of beer ("pilsen"), which originated in the City of Pilsen, Czechoslovakia. No unfair competition. Sec 29, Republic Act No. 166 as amended describes unfair competition as the employment of deception or any other means contrary to good faith by which a person shall pass off the goods manufactured by him or in which he deals, or his business, or services, for those of another who has already established goodwill for his similar goods, business or services, or any acts calculated to produce the same result. Therefore, the universal test question is whether the public is likely to be deceived. In this case, the use of similar but unidentical bottle size, shape & color is not unlawful as aptly explained. The 320 ml capacity is the standard prescribed by the Dept of Trade. The amber color is a functional feature for it prevents transmission of light and provides the maximum protection to beer. Being of functional or common use, SMC’s being the first to use does not give SMC exclusive right to such use. The bottle shape is usually standardized just as a ketchup or vinegar bottle with its familiar elongated neck, thereby dismissing the attendance of bad faith or the intention to deceive the public by ABI. Moreover, buyers generally order their beer by brand in the supermarket, sari-sari stores, restaurants; thus dismissing the idea that Beer na Beer can be passed off as San Miguel Beer. There can be no confusion or the likelihood of deception among the consumers. Both products are manufactured using amber colored steinie bottles of 320 ml. Both were labeled in a rectangular fashion using white color paint. But other than these similarities, there are salient differences between the two. As found by the Supreme Court, among others they are the following: words "San Miguel Brewery Philippines" encircling the 1. The dominant feature of SMC’s trademark are the words “San Miguel Pale Pilsen” while that of Asia Brewery’s trademark is the word “Beer”. Nowhere in SMC’s product can be seen the word “Beer” nor in Asia Brewery’s product can be seen Fat, bulging neck. the words “San Miguel Pale Pilsen”. Surely, Stamped someone with the buying name "BEER" in Beer” the center, “Beer na cannot mistake it as “San Miguel Pale Pilsen” beer. surrounded by same Incorporated Philippines.” San Miguel Bottle has a slender tapered neck Bottle cap is stamped with a coat of arms and the 2. The bottle designs are different. SMC’s bottles have slender tapered neck while that of “Beer na Beer” are fat. Though both beer products use steinie bottles, SMC cannot claim that Asia Brewery copied the idea from SMC. SMC did not invent but merely borrowed the steinie bottle from abroad and SMC does not have any patent or trademark to protect the steinie bottle shape and design. 3. In SMC bottles, the words “pale pilsen” are written diagonally while in “Beer na Beer”, the words “pale pilsen” are written horizontally. Further, the words “pale pilsen” cannot be said to be copied from SMC for “pale pilsen” are generic words which originated from Pilsen, Czechoslovakia. “Pilsen” is a geographically descriptive word and is non-registrable. 4. SMC bottles have no slogans written on them while Asia Brewery’s bottles have a copyrighted slogan written on them that is “Beer na Beer”. 5. In SMC bottles, it is expressly labeled as manufactured by SMC. In Asia Brewery beer products, it is likewise expressly labeled as manufactured by Asia Brewery. Surely, there is no intention on the part of Asia Brewery to confuse the public and make it appear that “Beer na Beer” is a product of SMC, a long-established and more popular brand. Justice Cruz Dissenting: A number of courts have held that to determine whether a trademark has been infringed, we must consider the mark as a whole and not as dissected. If the buyer is deceived, it is attributable to the marks as a totality, not usually to any part of it. The court therefore should be guided by its first impression, for a buyer acts quickly and is governed by a casual glance, the value of which may be dissipated as soon as the court assumes to analyze carefully the respective features of the mark. (Del Monte vs CA & Sunshine Sauce) COFFEE PARTNERS V. SAN FRANCISCO Facts: Identities of the parties: Petitioner: Coffee Partners, Inc. is a local corporation engaged in the business of establishing and maintaining coffee shops in the country. It registered with the Securities and Exchange Commission (SEC) in January 2001 and has a franchise agreement withCoffee Partners Ltd. (CPL), a business entity organized and existing under the laws of British Virgin Islands, for a non-exclusive right to operate coffee shops in the Philippines using trademarks designed by CPL such as SAN FRANCISCO COFFEE. Respondent: a local corporation engaged in the wholesale and retail sale of coffee. It registered with the SEC in May 1995. It registered the business name SAN FRANCISCO COFFEE & ROASTERY, INC. with the Department of Trade and Industry (DTI) in June 1995. Respondent had since built a customer base that included Figaro Company, Tagaytay Highlands, Fat Willys, and other coffee companies. 1. In 1998, respondent formed a joint venture company with Boyd Coffee USAunder the company name Boyd Coffee Company Philippines, Inc. (BCCPI). 2. In June 2001, respondent discovered that petitioner was about to open a coffee shop under the name “SAN FRANCISCO COFFEE” in Libis, Quezon City. 3. Respondent sent a letter to petitioner demanding that the latter stop using the name “SAN FRANCISCO COFFEE.” 4. Respondent also filed a complaint with the Bureau of Legal Affairs-Intellectual PropertyOffice (BLA-IPO) for infringement and/or unfair competition with claims for damages 5. Ruling of the Bureau of Legal Affairs-Intellectual Property Officea. Petitioner’s trademark infringed on respondent’s trade name. b. The right to the exclusive use of a trade name with freedom from infringement bysimilarity is determined from priority of adoption c. Since respondent registered its business name with the DTI in 1995 andpetitioner registered its trademark with the IPO in 2001 in the Philippines and in1997 in other countries, then respondent must be protected from infringement of its trade name. 6. BLA-IPO also held that respondent did not abandon the use of its trade name assubstantial evidence indicated respondent continuously used its trade name inconnection with the purpose for which it was organized. 7. Petitioner’s use of the trademark “SAN FRANCISCO COFFEE” will likely cause confusion because of the exact similarity in sound, spelling, pronunciation, and commercial impression of the words which is the dominant portion of respondent’s trade name and petitioner’s trademark. -No significant difference resulted even with a diamondshaped figure with a cupin the center in petitioner's trademark because greater weight is given to words. 8. On the issue of unfair competition, the BLA-IPO absolved petitioner from liability; therewas no evidence of intent to defraud on the part of petitioner. 9. The Office of the Director General– Intellectual Property Office (ODG-IPO) reversedthe BLA-IPO. - It ruled that petitioner's use of the trademark "SAN FRANCISCO COFFEE" did not infringe on respondent's trade name. - Also, it found that respondent had stopped using its trade name after it entered into a joint venture with Boyd Coffee USA in 1998 while petitioner continuously used the trademark since June 2001 when it opened its first coffee shop in Libis, Quezon City. - It ruled that between a subsequent user of a trade name in good faith and a prior user who had stopped using such trade name, it would be inequitable to rule in favor of the latter. 10. The Court of Appeals reversed the ODG-IPO decision and reinstated the decision of theBLA-IPO finding infringement. - It denied petitioner's motion for reconsideration and respondent's motion for partial reconsideration. Issue: Whether petitioner’s use of the trademark “SAN FRANCISCO COFFEE” constitutesinfringement of respondent’s trade name “SAN FRANCISCO COFFEE &ROASTERY, INC.,” even if the trade name is not registered with the Intellectual Property Office (IPO) Ruling: Yes In Prosource International, Inc. v.Horphag Research Management SA, this Court laiddown what constitutes infringement of an unregistered trade name, thus: 1. The trademark being infringed is registered in the Intellectual Property Office;however, in infringement of trade name, the same need not be registered; 2. The trademark or trade name is reproduced, counterfeited, copied, or colorably imitated by the infringer; 3. The infringing mark or trade name is used in connection with the sale, offering for sale, or advertising of any goods, business or services; or the infringing mark or trade name is applied to labels, signs, prints, packages, wrappers, receptacles,or advertisements intended to be used upon or in connection with such goods, business, or services; 4. The use or application of the infringing mark or trade name is likely to causeconfusion 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 theidentity of such business; and 5. It is without the consent of the trademark or trade name owner or the assigneethereof Clearly, a trade name need not be registered with the IPO before an infringement suit may be filed by its owner against the owner of an infringing trademark. All that is required is that the trade name is previously used in trade or commerce in the Philippines. HOWEVER, RA 8293, WHICH TOOK EFFECT ON 1 JANUARY 1998, HAS REQUIREMENT. DISPENSED SECTION WITH THE 165.2 OF REGISTRATION RA 8293 CATEGORICALLY STATES THAT TRADE NAMES SHALL BE PROTECTED, EVEN PRIOR TO OR WITHOUT REGISTRATION WITH THE IPO, AGAINST ANY UNLAWFUL ACT INCLUDING ANY SUBSEQUENT USE OF THE TRADE NAME BY A THIRD PARTY, WHETHER AS A TRADE NAME OR A TRADEMARK LIKELY TO MISLEAD THE PUBLIC. THUS: SEC. 165.2 (A) NOTWITHSTANDING ANY LAWS OR REGULATIONS PROVIDING FOR ANY OBLIGATION TO REGISTER TRADE NAMES, SUCH NAMES SHALL BE PROTECTED, EVEN PRIOR TO OR WITHOUT REGISTRATION, AGAINST ANY UNLAWFUL ACT COMMITTED BY THIRD PARTIES. (B) IN PARTICULAR, ANY SUBSEQUENT USE OF A TRADE NAME BY A THIRD PARTY, WHETHER AS A TRADE NAME OR A MARK OR COLLECTIVE MARK, OR ANY SUCH USE OF A SIMILAR TRADE NAME OR MARK, LIKELY TO MISLEAD THE PUBLIC, SHALL BE DEEMED UNLAWFUL. (EMPHASIS SUPPLIED) APPLYING EITHER THE DOMINANCY TEST OR THE HOLISTIC TEST, PETITIONERS SAN FRANCISCO COFFEE TRADEMARK IS A CLEAR INFRINGEMENT OF RESPONDENTS SAN FRANCISCO COFFEE & ROASTERY, INC. TRADE NAME. THE DESCRIPTIVE WORDS SAN FRANCISCO COFFEE ARE PRECISELY THE DOMINANT FEATURES OF RESPONDENTS TRADE NAME. PETITIONER AND RESPONDENT ARE ENGAGED IN THE SAME BUSINESS OF SELLING COFFEE, WHETHER WHOLESALE OR RETAIL. THE LIKELIHOOD OF CONFUSION IS HIGHER IN CASES WHERE THE BUSINESS OF ONE CORPORATION IS THE SAME OR SUBSTANTIALLY THE SAME AS THAT OF ANOTHER CORPORATION. IN THIS CASE, THE CONSUMING PUBLIC WILL LIKELY BE CONFUSED AS TO THE SOURCE OF THE COFFEE BEING SOLD AT PETITIONERS COFFEE SHOPS. PETITIONERS ARGUMENT THAT SAN FRANCISCO IS JUST A PROPER NAME REFERRING TO THE FAMOUS CITY IN CALIFORNIA AND THAT COFFEE IS SIMPLY A GENERIC TERM, IS UNTENABLE. RESPONDENT HAS ACQUIRED AN EXCLUSIVE RIGHT TO THE USE OF THE TRADE NAME SAN FRANCISCO COFFEE & ROASTERY, INC. SINCE THE REGISTRATION OF THE BUSINESS NAME WITH THE DTI IN 1995. THUS, RESPONDENTS USE OF ITS TRADE NAME FROM THEN ON MUST BE FREE FROM ANY INFRINGEMENT BY SIMILARITY. OF COURSE, THIS DOES NOT MEAN THAT RESPONDENT HAS EXCLUSIVE USE OF THE GEOGRAPHIC WORD SAN FRANCISCO OR THE GENERIC WORD COFFEE. GEOGRAPHIC OR GENERIC WORDS ARE NOT, PER SE, SUBJECT TO EXCLUSIVE APPROPRIATION. IT IS ONLY THE COMBINATION OF THE WORDS SAN FRANCISCO COFFEE, WHICH IS RESPONDENTS TRADE NAME IN ITS COFFEE BUSINESS, THAT IS PROTECTED AGAINST INFRINGEMENT ON MATTERS RELATED TO THE COFFEE BUSINESS TO AVOID CONFUSING OR DECEIVING THE PUBLIC. MCDONALD’S CORPORATION VS MACJOY FASTFOOD CORPORATION Facts: MacJoy is a domestic corporation engaged in the sale of fast foods in Cebu. In March 1991, MacJoy filed an application for registration of the trademark “MACJOY & DEVICE” for fried chicken, chicken barbeque, burgers, fries, spaghetti, palabok, tacos, sandwiches, halo-halo and steaks. McDonald’s Corporation is a corporation duly organized and existing under the laws of Delaware, USA. They filed a verified notice of opposition against MacJoy’s application claiming that the trademark “MACJOY & DEVICE” resembles it corporate logo (Golden Arches or “M” Design, and its marks “McDonald’s”, “McChicken”, “MacFries”, “BigMac”, “McDo”, which are McDONALD’s marks). Such that, when used on identical of related goods, the trademark applied for would confuse or deceive purchasers into believing that the goods originate from the same source. They also alleged that MacJoy’s adoption in bad faith of the “MACJOY & DEVICE” would falsely tend to suggest a connectionor affiliation with McDonald’s Corporation restaurant services and food products, thus, constituting a fraud upon the general public. MacJoy contended that it had been using the said trademark for the past manyyears in good faith and that it has spent considerable sums of money for said mark’s extensive promotion in tri-media, especially in Cebu where it has been doing business long before McDonald’s Corporation opened its outlet thereat sometime in 1992. They also contended that the use of the said trademark would not confuse affiliation with McDonald’s services and food products because of the differences in the design and detail of the 2 marks. The IPO (Intellectual Property Office) ruled that there is confusing similarity between the marks of McDonald’s and MacJoy, hence, it rejected the application of MacJoy. The IPO used the dominancy test and took note of the appearance of the predominant features “M”, “Mc”, and “Mac” in justifying its rejection of the application of MacJoy However, the CA reversed the IPO Decision. Hence, this petition by McDonald’s. Issue: WON the trademark “MACJOY & DEVICE” is confusingly similar to McDonald’s marks Held: YES. In determining similarity between 2 trademarks, jurisprudence has developed 2 tests: the dominancy test and the holistic test. The dominancy test focuses on the similarity of prevalent features of the 2 trademarks that might cause the confusion or deception. On the other hand, 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 holistic test, a comparison of the words is not the only determinant factor. The dominancy test is better applicable in the case at bar. The Court ruled that McDonald’s marks and MacJoy’s are confusingly similar such that an ordinary purchaser can conclude an association or relation between the marks. Both the trademarks use the corporate M design logo as dominant features. For sure, it is the prefix, “Mc” which catches the attention of the public. Verily, the work MACJOY attracts attention the same way as other McDonald’s marks which all use the prefixes “Mc” or “Mac”. Both trademarks are also used in the sale of fast food products. Furthermore, the trademarks both cover goods under Classes 29 and 30 of the International Classification of Goods, namely, fried chicken, chicken barbeque, burgers, fries, spaghetti, etc. On MacJoy’s contention that McDonald’s cannot claim ownership of the word “Mac” because it is a personal name which may not be monopolized as a trademark as against other of the same name or surname, the Court ruled that as a rule, once a trademark has been registered, the validity of the mark is prima facie presumed. In this case, MacJoy failed to overcome such presumption. MacJoy’s explanation that the word “MacJoy” came from their president’s niece’s name Scarlett Yu Carcell is untenable. First, there is no connection between the name and MacJoy. Second, even assuming that it was really a term of endearment, the same is not sufficient as to how and why out of the many choices of words, it used the word “MacJoy”. Therefore, the only logical conclusion is MacJoy wants to ride high on the established reputation and goodwill of McDonald’s marks. McDonald’s registered its marks on October 4, 1971. On the other hand, MacJoy only started using the marks on December 7, 1987 and filed application thereof on March 14, 1991. It is clear therefore that McDonald’s has the rightful claim of ownership over said marks. Wherefore, the Decision of CA is reversed and set aside. The IPO Decision is reinstated. Nota Bene: The other contention of MacJoy that it was the first user of the mark in the Philippines is also unmeritorious. MacJoy first used the mark in 1987, while McDonald’s first outlet was opened only in 1992. This is immaterial since under the law, the requirement of actual use in commerce in the Philippines before one may register a trademark pertains to the territorial jurisdiction of the Philippines and is not only confined to a certain region, province, city or barangay JAIME BIANA V GEORGE GIMENEZ GR No 132768 September 9, 2005 FACTS In a labor case filed entitled Santos Mendones vs. Gimenez Park Subdivision and herein respondent George Gimenez, the defendants were ordered to pay a total of P5,248.50 to Mendones. Due to defendants’ failure to pay the judgment obligation, sheriff Madera levied and attached 4 parcels of urban land situated in Naga City with an area of more than 74 hectares. On December 6, 1978, a public auction was conducted where Mendones won as sole bidder with his bid of P8,908.50 representing the judgment obligation plus expenses of execution. Gimenez asserted that he was not informed of the execution sale and that it was known only when he was asked to pay for the full publication fee and immediaely paid them. He was then informed that the redemption price including interest and sheriff fee is P6,615.89. He then issued checks worth P5,615.89 in the name of sheriff Garchitorena, since sheriff Madera was not around to facilitate the redemption. On December 3, 1979, sheriff Madera informed the counsel of Gimenez that the 1-year redemption period will soon expire and that he still have a subsisting balance of P4,367.81. Gimenez asked for the details of said account and disagreed with its itemization since he had already paid for the publication fee. Seriff Madera executed a Definite Deed of Sale in favor of Mendones. Gimenez then requested sheriff Garchitorena to execute a deed of redemption in his favor. His request having been refused, Gimenez filed an acion for mandamus with damages to compel the sheriffs to execute the deed of redemption and nullification of the Deed of Sale. During pendency of the case, Mendones assigned his right over the subject property to petitioner Jaime Biana in consideration of P1,000,000.00. RTC ruled in favor of Gimenez. CA affirmed. ISSUE W/N the provincial sheriff may be legally compelled to execute a deed of redemption in favor of respondent Gimenez. RULING Yes. The right of redemption involves the exercise of a right, what applies is the settled rule that a mere tender of a check is sufficient to compel redemption but it is not in itself a payment that relieves he redemptioner from his liability to ay the redemption price. This is strenghtened by the fact that sheriff Madera himself deducted the 4 checks issued by Gimenez from the latter’s liability when he submitted the itemization requested by the latter’s counsel. the Twin Tower(s) for the hefty sum of P2,048,900.00 considering that the Twin Towers was then yet to be built. In contravention of [petitioners] warranties and of good engineering practices, the condominium unit purchased by [respondent] suffered from the defects and/or deficiencies. Respondents Answer prayed that judgment be rendered ordering [petitioner] to correct such defects/deficiencies in the condominium unit, and that the due reliefs be granted. ISSUES: WON petitioner suffered damages? RULING: The Petition is partly meritorious. BPI V ALS MGMT G.R. No. 151821. April 14, 2004 FACTS On July 29, 1985, [petitioner] BPI Investment Corporation filed a complaint for a Sum of Money against ALS Management and Development Corporation, alleging inter alia that on July 22, 1983, [petitioner] and [respondent] executed at Makati, Metro Manila a Deed of Sale for one (1) unfurnished condominium unit of the Twin Towers Condominium located at Ayala Avenue, corner Apartment Ridge Street, Makati, Metro Manila designated as Unit E-4A comprising of 271 squares [sic] meters more or less, together with parking stalls identified as G022 and G-63. The Condominium Certificate of Title No. 4800 of the Registry of Deeds for Makati, Metro Manila was issued after the execution of the said Deed of Sale. [Petitioner] advanced the amount of P26,300.45 for the expenses in causing the issuance and registration of the Condominium Certificate of Title. Under the penultimate paragraph of the Deed of Sale, it is stipulated that the VENDEE [respondent] shall pay all the expenses for the preparation and registration of this Deed of Sale and such other documents as may be necessary for the issuance of the corresponding Condominium Certificate of Title. After the [petitioner] complied with its obligations under the said Deed of Sale, [respondent], notwithstanding demands made by [petitioner], failed and refused to pay [petitioner] its legitimate advances for the expenses mentioned above without any valid, legal or justifiable reason. In its Answer with Compulsory Counterclaim, [respondent] averred among others that it has just and valid reasons for refusing to pay [petitioners] legal claims. In clear and direct contravention of Section 25 of Presidential Decree No. 957 which provides that No fee except those required for the registration of the deed of sale in the Registry of Deeds shall be collected for the issuance of such title, the [petitioner] has jacked-up or increased the amount of its alleged advances for the issuance and registration of the Condominium Certificate of Title in the name of the [respondent], by including therein charges which should not be collected from buyers of condominium units. [Petitioner] made and disseminated brochures and other sales propaganda in and before May 1980, which made warranties as to the facilities, improvements, infrastructures or other forms of development of the condominium units (known as The Twin Towers) it was offering for sale to the public, which included the following: [Respondent] further averred that [petitioner] represented to the [respondent] that the condominium unit will be delivered completed and ready for occupancy not later than December 31, 1981. [Respondent] relied solely upon the descriptions and warranties contained in the aforementioned brochures and other sales propaganda materials when [respondent] agreed to buy Unit E-4A of Warranties and Representations in the Brochure The brochure that was disseminated indicated features that would be provided each condominium unit; and that, under Section 19 of PD No. 957, would form part of the sales warranties of petitioner. Respondent relied on the brochure in its decision to purchase a unit. Since the former failed to deliver certain items stated therein, then there was a clear violation of its warranties and representations. The brochure says that [t]he particulars stated x x x as well as the details and visuals shown x x x are intended to give a general idea of the project to be undertaken, and as such, are not to be relied [upon] as statements or representations of fact. This general disclaimer should apply only to the general concept of the project that petitioner aptly characterizes thus: x x x [D]estined to reflect condominium living at its very best and its design x x x will make the project the only one of its kind in the Philippines. This disclaimer, however, should not apply to the features and the amenities that the brochure promised to provide each condominium unit. Petitioner was thus in breach when it failed to deliver a closed-circuit TV monitor through which residents from their apartments can see their guests x x x. Damages for Delay in Delivery It is undisputed that petitioner sent respondent a Contract to Sell declaring that the construction would be finished on or before December 31, 1981. The former delivered the condominium unit only in June 1982; thus, the latter claims that there was a delay in the delivery. Because of this pay damages income for the lease contract. such award. delay, the trial court ordered petitioner to of P136,608.75 representing unearned period that respondent had to suspend a We find a dearth of evidence to support To recover actual damages, the amount of loss must not only be capable of proof, but also be proven with a reasonable degree of certainty. The lone evidence for this award was the self-serving testimony of respondents witness that a lease contract had indeed been intended to commence in January 1982, instead of the actual implementation on June 18, 1982. Without any other evidence, we fail to see how the amount of loss was proven with a reasonable degree of certainty. Condominium Defects The rule is that a partys case must be established through a preponderance of evidence. By such term of evidence is meant simply evidence that is of greater weight, or is more convincing than that which is offered in opposition to it. Respondent was able to establish through its witness testimony that the condominium unit suffered from defects. This testimony was confirmed by an inspection report noted and signed by petitioners representative, as well as by a commissioners report prepared after an ocular inspection by the clerk of court acting as a commissioner. Furthermore, this conclusion is supported by the circumstances that occurred during the lease period, as evidenced by the complaint and the update letters of respondents lessee. balcony; (4) pay P40,000.00 as reimbursement for completion work done by respondent; (5) pay P27,321.75 per month for a period of twenty-one months for the alleged unearned income during the period when the condominium unit remained vacant. Petitioner, however, is ORDERED to pay P51,000 as temperate damages for the termination of the lease contract because of the defects in the condominium unit. All other awards are AFFIRMED. Petitioners contention that the claim arising from the alleged defects has already prescribed must fail for being raised for the first time only on appeal. Well-settled is the rule that issues not raised below cannot be resolved on review in higher courts. Makati Commercial Estate Association, Inc. (formerly Ayala Commercial Estate Association), the respondent, is an association of all real estate owners and long-term lessees of parcels of land located in the Makati Commercial Area. Pursuant to its Articles of Incorporation, the members are assessed association dues annually, subject to penalty and interest in case of default. Petitioner, South Pachem Development, Inc. purchased from Ayala Corp two adjoining lots. The deed of restrictions which was duly annotated in the titles of the property and annexed to the two deeds provides that: “The owner of this lot or his successor-in-interest is required to be and is automatically a member of the Makati Commercial Estate Association, Inc. or any other Association which may be formed or to which the area may be affiliated got the purpose, and must abide by the rules and regulations laid down by the association in the interest of security, maintenance, beautification and the general welfare of the area. The association will also provide for and collect assessments which will constitute a lien on the property xxxx” We agree, however, that the lower courts erred in finding that there was a defect in a portion of the balcony, which respondent alleges to be a walkway x x x [that] is not sufficient for passage. Petitioner was able to prove, however, that the specifications thereof conformed to the building plan. Unearned Lease Income Respondent entered into a lease contract with Advanced Micro Device on May 18, 1982, for the period June 18, 1982 to June 17, 1983, with option to renew. The lease -which was for an agreed monthly rental of P17,000 -- was renewed for a period ending May 1, 1985, when Advanced Micro Device vacated the unit. On the basis of these facts, the trial court ordered petitioner to pay damages by way of unrealized income for twenty-one months or from May 1, 1985, until January 1987 -- when respondent decided to move into the condominium unit, which was unoccupied by then. Despite the defects of the condominium unit, a lessee stayed there for almost three years. The damages claimed by respondent is based on the rent that it might have earned, had Advanced Micro Device chosen to stay and renew the lease. Such claim is highly speculative, considering that respondent failed to adduce evidence that the unit had been offered for lease to others, but that there were no takers because of the defects therein. Speculative damages are too remote to be included in an accurate estimate thereof. Absent any credible proof of the amount of actual damage sustained, the Court cannot rely on speculations as to its existence and amount. We recognize, however, that respondent suffered damages when its lessee vacated the condominium unit on May 1, 1985, because of the defects therein. Respondents are thus entitled to temperate damages. Under the circumstances, the amount equivalent to three monthly rentals of P17,000 -- or a total of P51,000 -- would be reasonable. WHEREFORE, this Petition is PARTLY GRANTED, and the assailed Decision and Resolution of the Court of Appeals MODIFIED, as follows: Hereby DELETED is the requirement on the part of petitioner to (1) deliver storage facilities on the ground floor; (2) pay P136,608.75 for unearned income for the five-month period that the lease contract was allegedly suspended; (3) correct the alleged passageway in the SOUTH PACHEM V. CA G.R. No. 126260, December 16, 2004 Facts: The petitioner stopped paying its association dues including the interest and penalty to private respondent. It questioned the legality of the deed of restrictions for being contrary to morals, public policy, good customs, and the Constitution, as it constituted a perpetual burden on the property and the purchaser would be deprived of the use of the property without due process of law. Issue: W/N the deed restrictions is a valid limitation on petitioner’s right of ownership. Held: Yes. The provision in the deed restrictions which required a purchaser of a parcel of land located in the Makati area to pay association fees is a valid stipulation. A case in point is Bel Air Village Association, Inc. v. Dionisiowhere the village association filed a complaint for collection of the association dues and also claimed for penalty and other charges. The Court affirmed the rule that an annotation to the effect that the lot owner becomes an automatic member of the village association and must abide by such rules and regulations laid down by said association was a valid restraint on ones ownership over the property as the same was for the interest of the sanitation, security and the general welfare of the community. FLORENCIO EUGENIO, doing business under the name E& S Delta Village, petitioner,vs. EXECUTIVE SECRETARY FRANKLIN M. DRILON, HOUSING AND LAND USE. REGULATORY BOARD (HLURB) AND PROSPERO PALMIANO, respondents. Facts: Did the failure to develop a subdivision constitute legal justification for the non-payment of amortizations by a buyer on installment under land purchase agreements entered into prior to the enactment of P.D. 957, The Subdivision and Condominium Buyers Protective Decree? On May 10, 1972, private respondent purchased on installment basis from petitioner and his coowner/ developer Fermin Salazar, two lots in the E & S Delta Village in Quezon City. He,together with the Delta Village Homeowners Association, Inc filed complaints for nondevelopment of the village..filed with the Office of Appeals, Adjudication and Legal Affairs (OAALA) of the Human Settlements Regulatory Commission (HSRC)) against petitioner and spouses Rodolfo and Adelina Relevo Private respondent suspended his payments because of petitioners failure to develop the village and prayed for the annulment of the sale to the Relevo spouses and for reconveyance of the lot to him. OAALA rendered a decision upholding the right of petitioner to cancel the contract with private respondent and dismissed private respondents complaint. Commission Proper of the HSRC reversed the OAALA and, applying P.D. 957, ordered petitioner to complete the subdivision development and to reinstate private respondents purchase contract over one lot,. The respondent Executive Secretary, on appeal, affirmed the decision of the HSRC Issue: Whether or not the Executive Secretary abused its discretion in giving a retroactive effect to PD 957. NO Ruling: No. Respondent Executive Secretary did not act with grave abuse of discretion and P.D. 957 is to given retroactive effect so as to cover even those contracts executed prior to its enactment in 1976. P.D. 957 did not expressly provided for retroactivity in its entirety, but suchcan be plainly inferred from the unmistakable intent of the law. “The intent of the statute is thelaw.” P.D. 957 is to be given retroactive effect so as to cover even those contracts executed prior to its enactment in 1976. P.D. 957 was enacted with no other end in view than to provide a protective mantle over helpless citizens who may fall prey to the manipulations and machinations of unscrupulous subdivision and condominium sellers, and such intent is nowhere expressed more clearly than in its preamble, pertinent portions of which read as follows: Adding force to the arguments for the retroactivity of P.D. 957 as a whole are certain of its provisions, viz., Sections 20, 21 and 23 thereof, which by their very terms have retroactive effect and will impact upon even those contracts and transactions entered into prior to P.D. 957s enactment: Sec. 20. Time of Completion. - Every owner or developer shall construct and provide the facilities, improvements, infrastructures and other forms of development, including water supply and lighting facilities, which are offered and indicated in the approved subdivision or condominium plans, brochures, prospectus, printed matters, letters or in any form of advertisement, within one year from the date of the issuance of the license for the subdivision or condominium project or such other period of time as may be fixed by the Authority. Sec. 21. Sales Prior to Decree. - In cases of subdivision lots or condominium units sold or disposed of prior to the effectivity of this Decree, it shall be incumbent upon the owner or developer of the subdivision or condominium project to complete compliance with his or its obligations as provided in the preceding section within two years from the date of this Decree unless otherwise extended by the Authority or unless an adequate performance bond is filed in accordance with Section 6 hereof. Failure of the owner or developer to comply with the obligations under this and the preceding provisions shall constitute a violation punishable under Sections 38 and 39 of this Decree. Sec. 23. Non-Forfeiture of Payments. - No installment payment made by a buyer in a subdivision or condominium project for the lot or unit he contracted to buy shall be forfeited in favor of the owner or developer when the buyer, after due notice to the owner or developer, desists from further payment due to the failure of the owner or developer to develop the subdivision or condominium project according to the approved plans and within the time limit for complying with the same. Such buyer may, at his option, be reimbursed the total amount paid including amortization interests but excluding delinquency interests, with interest thereon at the legal rate. (italics supplied) In any event, as pointed out by respondent HLURB and seconded by the Solicitor General, the defaults in amortization payments incurred by private respondent had been effectively condoned by the petitioner, by reason of the latters tolerance of the defaults for a long period of time. PADCOM V ORTIGAS FACTS: Petitioner PADCOM owns and manages the Padilla Office Condominium Building (PADCOM Building) in Pasig City. The land on which the building stands was originally acquired by Tierra Development Corporation (TDC) under a Deed of Sale dated 4 September 1974. Subsequently, the said lot, together with improvements thereon, was conveyed by TDC in favor of PADCOM in a Deed of Transfer dated 25 February 1975. In 1982, respondent Ortigas was organized to advance the interests and promote the general welfare of the real estate owners and long-term lessees of lots in the Ortigas Center. It sought the collection of membership dues in the amount of (P2,724.40) per month from PADCOM. The corporate books showed that PADCOM owed the Association P639,961.47, representing membership dues, interests and penalty charges from April 1983 to June 1993. The letters exchanged between the parties through the years showed repeated demands for payment, requests for extensions of payment, and even a settlement scheme proposed by PADCOM in September 1990. In view of PADCOMs failure and refusal to pay its arrears in monthly dues, including interests and penalties thereon, the Association filed a complaint for collection of sum of money before the RTC. In its answer, PADCOM contended that it is a non-stock, non-profit association and no automatic membership was apparently contemplated in the Associations By-laws. And since it was not a member of the Association, it was not liable for membership dues, interests and penalties. During the trial, the Association presented its accountant as lone witness while PADCOM, on the other hand, did not present its evidence. RTC dismissed the complaint however CA reversed and set aside RTC’s decision in favour to the Association. The CA justified its ruling by declaring that PADCOM automatically became a member of the Association when the land was sold to TDC. The intent to pass the obligation to prospective transferees was evident from the annotation of the same clause at the back of the Transfer Certificate of Title covering the lot. ISSUE: WON PADCOM is compelled to join the association pursuant to the provision on automatic membership appearing as a condition in the Deed of Sale. RULING: Yes. Article 1311 of the Civil Code provides that contracts take effect between the parties, their assigns and heirs. Since PADCOM is the successor-in-interest of TDC, it follows that the stipulation on automatic membership with the Association is also binding on the former. The By-laws of the Association requires application for membership and acceptance thereof by the Board of Directors. Section 2 of the By-laws which reads: Section 2. Regular Members. Upon acceptance by the Board of Directors of Ortigas Center Association, Inc., all real estate owners, or long-term lessees of lots within the boundaries of the Association as defined in the Articles of Incorporation become regular members, provided, however that the long-term lessees of a lot or lots in said area shall be considered as the regular members in lieu of the owners of the same. Likewise, regular membership in the Association automatically ceases upon the cessation of a member to be an owner or long-term lessee of real estate in the area. A lessee shall be considered a long-term lessee if his lease is in writing and for a period of two (2) years or more. Membership of a long-term lessee in the Association shall be co-terminus with his legal possession (or his lease) of the lot/s in the area. Upon the lessees cessation of membership in the Association, the owner shall automatically succeed the lessee as member thereat. Hence, as a lot owner, PADCOM is a regular member of the Association. No application for membership is necessary. As resident and lot owner in the Ortigas area, PADCOM was definitely benefited by the Associations acts and activities to promote the interests and welfare of those who acquire property therein or benefit from the acts or activities of the Association. Having ruled that PADCOM is a member of the Association, it is obligated to pay its dues incidental thereto. Article 1159 of the Civil Code mandates: Art. 1159. Obligations arising from contracts have the force of law between the contracting parties and should be complied with in good faith. LACOSTE V FERNANDEZ Facts: La chemise Lacoste is a French corporation and the actual owner of the trademarks “Lacoste,” “Chemise Lacoste,” “Crocodile Device” and a composite mark consisting of the word “Lacoste” and a representation of a crocodile/alligator, used on clothing's and other goods sold in many parts of the world and which has been marketed in the Philippines (notably by Rustans) since 1964. In 1975 and 1977, Hemandas Q. Co. was issued certificate of registration for the trademark “Chemise Lacoste and Crocodile Device "both in the supplemental and Principal Registry. In 1980, La Chemise Lacoste SA filed for the registration of the “Crocodile device” and “Lacoste”. Games and Garments (Gobindram Hemandas, assignee of Hemandas Q. Co.) opposed the registration of “Lacoste.” In 1983, La Chemise Lacoste filed with the NBI a lettercomplaint alleging acts of unfair competition committed by Hemandas and requesting the agency’s assistance for investigation and prosection. A search warrant was issued by the trial court. Various goods and articles were seized upon the execution of the warrants. Hemandas filed a motion to quash the search warrants alleging that the trademark used by him was different from petitioner's trademark and that pending the resolution of IPC No. 1658 before the Patent Office, any criminal or civil action on the same subject matter and between the same parties would be premature. The petitioner filed its opposition to the motion arguing that the motion to quash was fatally defective as it cited no valid ground for the quashal of the search warrants and that the grounds alleged in the motion were absolutely without merit. The State Prosecutor likewise filed his opposition on the grounds that the goods seized were instrument of a crime and necessary for the resolution of the case on preliminary investigation and that the release of the said goods would be fatal to the case of the People should prosecution follow in court, which the court granted. The search warrants were recalled, and the goods ordered to be returned. La Chemise Lacoste filed a petition for certiorari. The defendant argued that the petitioner has no capacity to sue being a foreign corporation not doing business in the Philippines. Issue: Whether or Not the La Chemise Lacoste has capacity to sue Ruling: Yes “As early as 1927, this Court was, and it still is, of the view that a foreign corporation not doing business in the Philippines needs no license to sue before Philippine courts for infringement of trademark and unfair competition. Thus, in Western Equipment and Supply Co. v. Reyes (51 Phil. 115), this Court held that a foreign corporation which has never done any business in the Philippines and which is unlicensed and unregistered to do business here, but is widely and favorably known in the Philippines through the use therein of its products bearing its corporate and trade name, has a legal right to maintain an action in the Philippines to restrain the residents and inhabitants thereof from organizing a corporation therein bearing the same name as the foreign corporation, when it appears that they have personal knowledge of the existence of such a foreign corporation, and it is apparent that the purpose of the proposed domestic corporation is to deal and trade in the same goods as those of the foreign corporation. We further held: ". . . That company is not here seeking to enforce any legal or control rights arising from, or growing out of, any business which it has transacted in the Philippine Islands. The sole purpose of the action: "'Is to protect its reputation, its corporate name, its goodwill, whenever that reputation, corporate name or goodwill have, through the natural development of its trade, established themselves. And it contends that its rights to the use of its corporate and trade name: "'Is a property right, a right in rem, which it may assert and protect against all the world, in any of the courts of the world — even in jurisdictions where it does not transact business — just the same as it may protect its tangible property, real or personal, against trespass, or conversion. Citing Sec. 10, Nims on Unfair Competition and Trade Marks and cases cited; secs. 21-22, Hopkins on Trade Marks, Trade Names and Unfair Competition and cases cited.' That point is sustained by the authorities, and is well stated in Hanover Star Mining Co. v. Allen and Wheeler Co. (208 Fed., 513), in which the syllabus says: "'Since it is the trade and not the mark that is to be protected, a trade-mark acknowledges no territorial boundaries of municipalities or states or nations, but extends to every market where the trader's goods have become known and identified by the use of the mark.'" Our recognizing the capacity of the petitioner to sue is not by any means novel or precedent setting. Our jurisprudence is replete with cases illustrating instances when foreign corporations not doing business in the Philippines may nonetheless sue in our courts.” TAIWAN KOLIN CORPORATION, LTD., V. KOLIN ELECTRONICS CO., INC., G.R. No. 209843, March 25, 2015 Facts: Taiwan Kolin filed with the Intellectual Property Office (IPO), then Bureau of Patents, Trademarks, and Technology Transfer, a trademark application for the use of “KOLIN” on a combination of goods particularly: television sets, cassette recorder, camcorders and other audio/video electronic equipment. Said goods allegedly fall under Classes 9 of the Nice Classification (NCL). Kolin Electronics Co., Inc. (Kolin Electronics) opposed the application. As argued, the mark Taiwan Kolin seeks to register is identical, if not confusingly similar, with its “KOLIN” mark registered on November 23, 2003, covering the following products under Class 9 of the NCL: automatic voltage regulator, converter, recharger, stereo booster, AC-DC regulated power supply, step-down transformer, and PA amplified AC-DC. In answer, Taiwan Kolin argued that it should be accorded the benefits of priority right of a foreign-registered mark under Secs. 3 and 131.1 of the Intellectual Property Code of the Philippines since it has already registered the “KOLIN” mark in Taipei, Taiwan on December 1, 1988. Being parties to the Paris Convention for the Protection of Industrial Property (Paris Convention) and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS, benefits should be accorded to Taiwan Kolin for the well-known mark. The BLA-IPO denied Taiwan Kolin’s application and held that a mark cannot be registered if it is identical with a registered mark belonging to a different proprietor in respect of the same or closely-related goods. The IPO Director General reversed the prior decision. In so ruling, the IPO Director General ratiocinated that product classification alone cannot serve as the decisive factor in the resolution of whether or not the goods are related and that emphasis should be on the similarity of the products involved and not on the arbitrary classification or general description of their properties or characteristics. As held, the mere fact that one person has adopted and used a particular trademark for his goods does not prevent the adoption and use of the same trademark by others on articles of a different description. Issue: Whether or not the products of the parties involved are closely-related goods? Ruling: No. Identical marks may be registered for products from the same classification. Mere uniformity in categorization, by itself, does not automatically preclude the registration of what appears to be an identical mark. Verily, whether or not the products covered by the trademark sought to be registered by Taiwan Kolin and those covered by the prior issued certificate of registration in favor of Kolin Electronics fall under the same categories in the NCL is not the sole and decisive factor in determining a possible violation of Kolin Electronics’ intellectual property right should petitioner’s application be granted. It is hornbook doctrine that emphasis should be on the similarity of the products involved and not on the arbitrary classification or general description of their properties or characteristics. The mere fact that one person has adopted and used a trademark on his goods would not, without more, prevent the adoption and use of the same trademark by others on unrelated articles of a different kind. The Court held that the goods should be tested against several factors before arriving at a sound conclusion on the question of relatedness. Among these are: (a) the business (and its location) to which the goods belong; (b) the class of product to which the goods belong; (c) the product’s quality, quantity, or size, including the nature of the package, wrapper or container; (d) the nature and cost of the articles; (e) the descriptive properties, physical attributes or essential characteristics with reference to their form, composition, texture or quality; (f) the purpose of the goods; (g) whether the article is bought for immediate consumption, that is, day-to-day household items; (h) the fields of manufacture; (i) the conditions under which the article is usually purchased; and (j) the channels of trade through which the goods flow, how they are distributed, marketed, displayed and sold. As mentioned, the classification of the products under the NCL is merely part and parcel of the factors to be considered in ascertaining whether the goods are related. It is not sufficient to state that the goods involved herein are electronic products under Class 9 in order to establish relatedness between the goods, for this only accounts for one of many considerations enumerated. It cannot be stressed enough that the products involved in the case at bar are, generally speaking, various kinds of electronic products. These are not ordinary consumable household items. Accordingly, the casual buyer is predisposed to be more cautious and discriminating in his purchase. Confusion and deception, then, is less likely. Expensive and valuable items are normally bought only after deliberate, comparative and analytical investigation. But mass products, low priced articles in wide use, and matters of everyday purchase requiring frequent replacement are bought by the casual consumer without great care. While both competing marks refer to the word “KOLIN” written in upper case letters and in bold font, the Court at once notes the distinct visual and aural differences between them: Kolin Electronics’ mark is italicized and colored black while that of Taiwan Kolin is white in pantone red color background. The differing features between the two, though they may appear minimal, are sufficient to distinguish one brand from the other. The “ordinary purchaser” was defined as one “accustomed to buy, and therefore to some extent familiar with, the goods in question. The test of fraudulent simulation is to be found in the likelihood of the deception of some persons in some measure acquainted with an established design and desirous of purchasing the commodity with which that design has been associated. The test is not found in the deception, or the possibility of deception, of the person who knows nothing about the design which has been counterfeited, and who must be indifferent between that and the other. The simulation, in order to be objectionable, must be such as appears likely to mislead the ordinary intelligent buyer who has a need to supply and is familiar with the article that he seeks to purchase.” All told, the Court is convinced that Taiwan Kolin’s trademark registration not only covers unrelated good, but is also incapable of deceiving the ordinary intelligent buyer. The ordinary purchaser must be thought of as having, and credited with, at least a modicum of intelligence to be able to see the differences between the two trademarks in question. CHESTER UYCO, WINSTON UYCHIYONG AND CHERRY UYCO-ONG V VICENTE LO G.R. No. 202423, January 28, 2013 Facts: Petitioners in this case are the officers of Wintrade Industrial Sales Corp (WINTRADE), seller of kerosene burners in the Philippines. Vicente Lo, on the other hand, claims to be the asssignee of the disputed marks "HIPOLITO & SEA HORSE & TRIANGULAR DEVICE," "FAMA," and other related marks, service marks and trade names “Casa Hipolito S.A. Portugal”, to be used in kerosene burners as well. Lo further alleged that the ultimate owner of said marks is the Portuguese Company GASIREL and that the latter executed a deed of assignment in favor of Lo to use the marks in all countries except Europe and America. Lo subsequently authorized his agent Philippine Burners Manufacturing Corporation (PBMC) to manufacture burners with the aforementioned marks and trade name “Casa Hipolito S.A. Portugal”. During a test buy, Lo was able to purchase a burner with marked "Made in Portugal" and "Original Portugal". He noted that such burners were manufactured by WINTRADE. As such, Lo filed a complaint on the ground that the kerosene burners sold by WINTRADE have caused confusion, mistake and deception on the part of the buying public as to the origin of goods. WINTRADE and its officers contend that the marks "Made in Portugal" and "Original Portugal" refer to “origin of the design” and not “origin of the goods” and that they have certificates of registration with the IPO for use of marks, derived their authority to use from WONDER, their predecessor-ininterest and that PBMC’s licensing agreement with Lo is ineffective for being unnotarized, among others. Issue: Whether or not WINTRADE and its officers are liable for violation of the law on trademarks, tradenames and false designation of origin? Ruling:: Yes. WINTRADE and its officers are liable for violation of the law on trademarks and tradenames and for false designation of origin. They 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 another. More importantly, they used the marks without any authority from the owner notwithstanding that their products are, in reality, produced in the Philippines, not in Portugal. Hence, probable cause exists to charge the petitioners with false designation of origin. 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. The Supreme Court emphasized that 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 “origin” of products. MEDICAL PLAZA MAKATI CONDOMINIUM CORPORATION (MPMCC) VS. ROBERT CULLEN November 11, 2013 G.R. No. 181416 Topic: Condominium Facts: Petitioner MPMCC is a condominium corporation duly organized and existing under Philippine laws, charged with the management of Medical Plaza Makati. Cullen purchased from Meridien Land Holding Inc (MLHI) condominium unit no. 1201 of Medical Plaza Makati. Later, a Condominium Certificate Title was issued in his name. Being a registered owner of a unit in Medical Plaza Makati, he is therefore deemed a stockholder/member of the condominium corporation. On September 19, 2002, MPMCC demanded from Cullen payment of unpaid association dues and assessments amounting to ₱145K. MPMCC claimed that the said obligation was a carry-over from MLHI. As a consequence, Cullen was prevented from exercising his right to vote and be voted during the 2002 election of MPMCC Board of Directors. However, when Cullen clarified with MLHI the claims of MPMCC, MLHI claimed that the same had already been settled with MPMCC as early as 1998. Cullen demanded an explanation from MPMCC why he was considered a delinquent payer, but MPMCCC was not able to make any explanation. Cullen then filed a Complaint for Damages against MPMCC and MLHI. RTC dismissed the case of Cullen, ruling that action for damages falls within the exclusive jurisdiction of Housing and Land Use Regulatory Board (HLURB) as the issues raised are intra-corporate between the petitionercorporation and the respondent-member. The CA reversed and set aside the RC Decision and remanded the case to the RTC for further proceedings. Issue: Whether or not the RTC has jurisdiction over the case. (NO) Held: NO. The case at bar involves intra-corporate controversy. An intra-corporate controversy is one which pertains to any of the following relationships: a Between the corporation and the public b Between the corporation and the State c Between the corporation and its members d Among its members There are 2 tests to determine whether the dispute constitutes an intra-corporate controversy: (a) The relationship test; (b) The nature of the controversy test. Under the relationship test, the existence of any of the above relations makes a case intra-corporate; while under the nature of the controversy test, the controversy must not only be rooted in the existence of an intra-corporate relationship, but must as well pertain to the enforcement of the parties’ rights and obligations under the Corporation Code and the internal rules of the corporation. The nature of Cullen’s action, although titles as one for damages, shows that it principally dwells on the propriety of assessment made by MPMCC against Cullen as well as the validity of MPMCC’s act in prohibiting Cullen from participating in the election of the its Board of Directors. Thus, the nature of the action is clearly relates to intracorporate dispute. Who has the jurisdiction over the case at bar? Answer: RTC, not as a regular court, but RTC sitting as a Special Commercial Court. Contrary to RTC’s contention, it is not the HLURB who has the jurisdiction over the case at bar. Although RA 9904 or the Magna Carta for Homeowners and Homeowners’ Associations empowers the HLURB to hear and decide inter-association controversies concerning homeowners’ associations. The same is not applicable to the case at bar, as it involves a conflict between a condominium unit owner and a condominium corporation. RA 4726 or the Condominium Act was enacted to specifically govern a condominium, therefore, RA 9904 may not be applied to this case as it is not the legislative intent to extend its coverage to condominiums. Under the law, the RTC sitting as Special Commercial Court has jurisdiction over the controversies arising out of intracorporate relations. Therefore the CA erred when it remanded the case to the RTC since the same is not a Special Commercial Court who has jurisdiction over the issue at hand. Wherefore, petition granted and the case is remanded to the RTC for re-raffle purposes among the designated special commercial courts. WEST TOWER v FIRST PHILIPPINE INDUSTRIAL CORP. FACTS: Respondent FPIC operates two pipelines since 1969, the White Oil Pipeline (WOPL) System (covers a 117kilometer stretch from Batangas to the Pandacan Terminal in Manila and transports diesel, gasoline, jet fuel and kerosene) and Black Oil Pipeline (BOPL)system (105 kilometers and transports bunker fuel from Batangas to a depot in Sucat, Parañaque. These systems transport nearly 60% of the petroleum requirements of Metro Manila and parts of the provinces ofBulacan, Laguna, and Rizal. On May 2010, a leakage was suspected by the residents of West Tower Condominium(West Tower) when they started to smell gas. They reported the incident to the Police Department of Makati and called the Bureau of Fire Protection. The two pipelines were supposedly designed to provide more than double the standard safety allowance against leakage, which is buried deeper than the standard 0.9 meters of the US, the pipelines are buried 1.5 meters. FPIC initially disowned any leak from its oil pipeline. Thus, the residents of West Tower shouldered the expenses of hauling the waste water from its basement, which eventually required the setting up of a treatment plant in the area to separate fuel from the waste water. On November 15, 2010, West Tower Condominium Corporation (West Tower Corp.) interposed the present Petition for the Issuance of a Writ of Kalikasan on behalf of the residents of West Tower and in representation of the surrounding communities in Barangay Bangkal, Makati City. West Tower Corp. also alleged that it is joined by the civil society and several people's organizations, nongovernmental organizations and public interest groups who have expressed their intent to join the suit because of the magnitude of the environmental issues involved. Petitioners argued that FPIC's omission or failure to timely replace its pipelines and to observe extraordinary diligence caused the petroleum spill in the City of Makati. Thus, for petitioners, the continued use of the now 4 7-year old pipeline would not only be a hazard or a threat to the lives, health, and property of those who live or sojourn in all the municipalities in which the pipeline is laid, but would also affect the rights of the generations yet unborn to live in a balanced and "healthful ecology,"(Sec. 16, Art. II of the 1987 Constitution). On November 19, 2010, the Court issued the Writ of Kalikasan with a Temporary Environmental Protection Order (TEPO) requiring respondents FPIC and the Boards of Directors to file their respective verified returns. The TEPO enjoined FPIC to: (a) cease and desist from operating the WOPL until further orders; (b) check the structural integrity of the whole span of the 11 7-kilometer WOPL while implementing sufficient measures to prevent and avert any untoward incident that may result from any leak of the pipeline; and (c) make a report thereon within 60 days from receipt thereof. ISSUES: 1 WON West Tower has the legal capacity to represent. 2 WON the directors and officers of respondents FPIC and FGC may be held liable under the environmental protection order. 3 WON a Permanent Environmental Protection Order should be issued to direct the respondents to perform or to desist from performing acts in order to protect, preserve, and rehabilitate the affected environment. RULING: 1 Yes. It confirms the CA that petitioners who are affected residents of West Tower and Barangay Bangkal have the requisite concern to be real parties-in-interest to pursue the instant petition. They represent the common interest of its unit owners and residents, and has the legal standing to file and pursue the instant petition. 2 Hence, the Court will not rule on the alleged liability on the part of the FPIC officials which can, however, be properly resolved in the civil and criminal cases now pending against them. The CA found FPIC and their Directors and Officers not liable under the TEPO and the individual directors and officers of FPIC and FGC are not liable in their individual capacities. The Court will refrain from ruling on the finding of the CA that the individual directors and officers of FPIC are not liable due to the explicit rule in the Rules of Procedure for Environmental cases that in a petition for a writ of kalikasan. As duly noted by the CA, the civil case and criminal complaint filed by petitioners against respondents are the proper proceedings to ventilate and determine the individual liability of respondents, if any, on their exercise of corporate 3 powers and the management of FPIC relative to the dire environmental impact of the dumping of petroleum products stemming from the leak in the WOPL in Barangay Bangkal, Makati City. Petitioners' persistent plea is for the conversion of the November 19, 2010 TEPO into a Permanent Environmental Protection Order (PEPO). For its part, respondent FPIC asserts that regular testing, as well as the measures that are already in place, will sufficiently address any concern of oil leaks from the WOPL. With respect to leak detection, FPIC claims that it has in place the following systems: (a) regular cleaning scraper runs, which are done quarterly; (b) pipeline integrity gauge (PIG) tests/Intelligent PIG ( c)pressure monitoring valves; and ( d) 24-hour patrols. Additionally, FPIC asserted that it also undertook the following: (a) monitoring of wells and borehole testing/vapor tests; (b) leak tightness test, also known as segment pressure test; ( c) pressure-controlled test; ( d) inspection and reinforcement of patches; (e) inspection and reinforcement of dents; and (f)Pandacan segment replacement. The CA, however, observed that all of these tests and measures are inconclusive and insufficient for purposes of leak detection and pipeline integrity maintenance. The Court found this recommendation of the appellate court proper. It required FPIC to obtain the adverted DOE certification. It was deemed proper to require said certification from the DOE considering that the core issue of this case requires the specialized knowledge and special expertise of the DOE. After a perusal of the recommendations of the DOE and the submissions of the parties, the Court adopts the activities and measures prescribed in the DOE to be complied with by FPIC as conditions for the resumption of the commercial operations of the WOPL. The DOE should, therefore, proceed with the implementation of the tests proposed in the said August 5, 2014 letter. Thereafter, if it is satisfied that the results warrant the immediate reopening of the WOPL, the DOE shall issue an order allowing FPIC to resume the operation of the WOPL. On the other hand, should the probe result in a finding that the pipeline is no longer safe for continued use and that its condition is irremediable, or that it already exceeded its serviceable life, among others, the closure of the WOPL may be ordered. SILVERIO V CA FACTS: The instant controversy stemmed from the settlement of estate of the deceased Beatriz Silverio. After her death, her surviving spouse, Ricardo Silverio, Sr., filed an intestate proceeding for the settlement of her estate. The case was docketed as SP. PROC. NO. M-2629 entitled In Re: Estate of the Late Beatriz D. Silverio, Ricardo C. Silverio, Sr. v. Ricardo S. Silverio Jr., et al. pending before the Regional Trial Court (RTC) of Makati City, Branch 57 (RTC). On November 16, 2004, during the pendency of the case, Ricardo Silverio, Jr. filed a petition to remove Ricardo C. Silverio, Sr. as the administrator of the subject estate. On November 22, 2004, Edmundo S. Silverio also filed a comment/opposition for the removal of Ricardo C. Silverio, Sr. as administrator of the estate and for the appointment of a new administrator. On January 3, 2005, the RTC issued an Order granting the petition and removing Ricardo Silverio, Sr. as administrator of the estate, while appointing Ricardo Silverio, Jr. as the new administrator. On January 26, 2005, Nelia S. Silverio-Dee filed a Motion for Reconsideration of the Order dated January 3, 2005, as well as all other related orders. On February 4, 2005, Ricardo Silverio Jr. filed an Urgent Motion for an Order Prohibiting Any Person to Occupy/Stay/Use Real Estate Properties Involved in the Intestate Estate of the Late Beatriz Silverio, Without Authority from this Honorable Court. Then, on May 31, 2005, the RTC issued an Omnibus Order affirming its Order dated January 3, 2005 and denying private respondents motion for reconsideration. In the Omnibus Order, the RTC also authorized Ricardo Silverio, Jr. to, upon receipt of the order, immediately exercise his duties as administrator of the subject estate. The Omnibus Order also directed Nelia S. Silverio-Dee to vacate the property at No. 3, Intsia, Forbes Park, Makati City within fifteen (15) days from receipt of the order. On June 16, 2005, private respondent filed a Motion for Reconsideration dated June 15, 2005 of the Omnibus Order. This was later denied by the RTC in an Order dated December 12, 2005, which was received by private respondent on December 22, 2005. Notably, the RTC in its Order dated December 12, 2005 also recalled its previous order granting Ricardo Silverio, Jr. with letters of administration over the intestate estate of Beatriz Silverio and reinstating Ricardo Silverio, Sr. as the administrator. From the Order dated December 12, 2005, Ricardo Silverio, Jr. filed a motion for reconsideration which was denied by the RTC in an Order dated October 31, 2006. In the same order, the RTC also allowed the sale of various properties of the intestate estate of the late Beatriz Silverio to partially settle estate taxes, penalties, interests and other charges due thereon. Among the properties authorized to be sold was the one located at No. 3 Intsia Road, Forbes Park, Makati City. Meanwhile, on January 6, 2006, Nelia Silverio-Dee filed a Notice of Appeal dated January 5, 2006 from the Order dated December 12, 2005 while the Record on Appeal dated January 20, 2006 was filed on January 23, 2006. Thereafter, on October 23, 2006, Ricardo Silverio, Jr. filed a Motion to Dismiss Appeal and for Issuance of a Writ of Execution against the appeal of Nelia Silverio-Dee on the ground that the Record on Appeal was filed ten (10) days beyond the reglementary period pursuant to Section 3, Rule 41 of the Rules of Court. Thus, on April 2, 2007, the RTC issued an Order denying the appeal on the ground that it was not perfected within the reglementary period. The RTC further issued a writ of execution for the enforcement of the Order dated May 31, 2005 against private respondent to vacate the premises of the property located at No. 3, Intsia, Forbes Park, Makati City. The writ of execution was later issued on April 17, 2007 and a Notice to Vacate was issued on April 19, 2007 ordering private respondent to leave the premises of the subject property within ten (10) days. Consequently, private respondent filed a Petition for Certiorari and Prohibition (With Prayer for TRO and Writ of Preliminary Injunction) dated May 2, 2007 with the CA. On May 4, 2007, the CA issued the assailed Resolution granting the prayer for the issuance of a TRO. In issuing the TRO, the CA ruled that the Notice of Appeal was filed within the reglementary period provided by the Rules of Court applying the fresh rule period enunciated by this Court in Neypes v. Court of Appeals as reiterated in Sumaway v. Union Bank. ISSUE: WON CA erred in granting TRO and affirming that there was a perfected appeal? RULING: Yes. SC reversed CA. The May 31, 2005 Order of the RTC is an Interlocutory Order, Not Subject to an Appeal. Verily, the appeal taken by the movant Nelia Silverio-Dee from the Order of this Court dated December 12, 2005 denying the Motion for Reconsideration is misplaced as no appeal may be taken from the order denying the motion for reconsideration (see Section 1, Rule 41 of the 1997 Rules of Civil Procedure in relation to Section 1(f), Rule 109 of the Rules of Court). Furthermore, assuming that what said movant had appealed is the final Order dated May 31, 2005, still, the appeal cannot be given due course as the Record on Appeal had been filed beyond the thirty-day period to appeal (see Section 3 Rule 41 of the Rules of Court). A writ of execution issued must be enforced against Nelia Silverio-Dee requiring her to vacate the premises at No. 3 Intsia, Forbes Park, Makati City. For the property at Intsia, Forbes Park cannot be occupied or appropriated by, nor distributed to Nelia S. Silverio-Dee, since no distribution shall be allowed until the payment of the obligations mentioned in the aforestated Rule is made. In fact, the said property may still be sold to pay the taxes and/or other obligations owned by the estate, which will be difficult to do if she is allowed to stay in the property. Moreover, the alleged authority given by SILVERIO, SR. for Nelia S. Silverio-Dee to occupy the property dated May 4, 2004, assuming it is not even antedated as alleged by SILVERIO, JR., is null and void since the possession of estate property can only be given to a purported heir by virtue of an Order from this Court (see Sec. 1 Rule 90, supra; and Sec. 2 Rule 84, Revised Rules of Court). In fact, the Executor or Administrator shall have the right to the possession and management of the real as well as the personal estate of the deceased only when it is necessary for the payment of the debts and expenses of administration (See Sec. 3 Rule 84, Revised Rules of Court). With this in mind, it is without an iota of doubt that the possession by Nelia S. Silverio-Dee of the property in question has absolutely no legal basis considering that her occupancy cannot pay the debts and expenses of administration, not to mention the fact that it will also disturb the right of the new Administrator to possess and manage the property for the purpose of settling the estates legitimate obligations. In the belated Memorandum of Nelia Silverio-Dee, she enclosed a statement of the expenses she incurred pertaining to the house renovation covering the period from May 26, 2004 to February 28, 2005 in the total amount of Php12,434,749.55, which supports this Courts conclusion that she is already the final distributee of the property. Repairs of such magnitude require notice, hearing of the parties and approval of the Court under the Rules. Without following this process, the acts of Nelia Silverio-Dee are absolutely without legal sanction. In the instant case, Nelia Silverio-Dee appealed the May 31, 2005 Order of the RTC on the ground that it ordered her to vacate the premises of the property located at No. 3 Intsia Road, Forbes Park, Makati City. On that aspect the order is not a final determination of the case or of the issue of distribution of the shares of the heirs in the estate or their rights therein. It must be borne in mind that until the estate is partitioned, each heir only has an inchoate right to the properties of the estate, such that no heir may lay claim on a particular property. In Alejandrino v. Court of Appeals, we succinctly ruled: Art. 1078 of the Civil Code provides that where there are two or more heirs, the whole estate of the decedent is, before partition, owned in common by such heirs, subject to the payment of the debts of the deceased. Under a coownership, the ownership of an undivided thing or right belongs to different persons. Each co-owner of property which is held pro indiviso exercises his rights over the whole property and may use and enjoy the same with no other limitation than that he shall not injure the interests of his co-owners. The underlying rationale is that until a division is made, the respective share of each cannot be determined and every co-owner exercises, together with his co-participants, joint ownership over the pro indiviso property, in addition to his use and enjoyment of the same. Although the right of an heir over the property of the decedent is inchoate as long as the estate has not been fully settled and partitioned, the law allows a co-owner to exercise rights of ownership over such inchoate right. Thus, the Civil Code provides: Art. 493. Each co-owner shall have the full ownership of his part and of the fruits and benefits pertaining thereto, and he may therefore alienate, assign or mortgage it, and even substitute another person in its enjoyment, except when personal rights are involved. But the effect of the alienation or the mortgage, with respect to the co-owners, shall be limited to the portion which may be allotted to him in the division upon the termination of the coownership. (Emphasis supplied.) Verily, once an action for the settlement of an estate is filed with the court, the properties included therein are under the control of the intestate court. And not even the administrator may take possession of any property that is part of the estate without the prior authority of the Court. In the instant case, the purported authority of Nelia Silverio-Dee, which she allegedly secured from Ricardo Silverio, Sr., was never approved by the probate court. She, therefore, never had any real interest in the specific property located at No. 3 Intsia Road, Forbes Park, Makati City. As such, the May 31, 2005 Order of the RTC must be considered as interlocutory and, therefore, not subject to an appeal. Thus, private respondent employed the wrong mode of appeal by filing a Notice of Appeal with the RTC. Hence, for employing the improper mode of appeal, the case should have been dismissed. The implication of such improper appeal is that the notice of appeal did not toll the reglementary period for the filing of a petition for certiorari under Rule 65, the proper remedy in the instant case. This means that private respondent has now lost her remedy of appeal from the May 31, 2005 Order of the RTC. An interlocutory order, as opposed to a final order, was defined in gTan v. Republic: A final order is one that disposes of the subject matter in its entirety or terminates a particular proceeding or action, leaving nothing else to be done but to enforce by execution what has been determined by the court, while an interlocutory order is one which does not dispose of the case completely but leaves something to be decided upon. (Emphasis supplied.)