Case Digest (G.R. No. 213365-66)
Facts:
In Asia Pacific Resources International Holdings, Ltd. v. Paperone, Inc., decided on December 2, 2019 (G.R. Nos. 213365-66), the petitioner, a foreign corporation engaged in the production, marketing, and sale of pulp and premium wood-free paper, alleged ownership of the well-known trademark PAPER ONE registered under Certificate No. 4-1999-01957 on September 5, 2003. In 2011, it filed a complaint with the Intellectual Property Office (IPO) against the respondent, Paperone, Inc., a domestic paper-conversion company organized on March 30, 2001, for using “PAPERONE” in its corporate name without consent, claiming bad faith “to ride on” petitioner’s goodwill, causing public confusion. The Bureau of Legal Affairs (BLA) Director of the IPO ruled respondent liable for unfair competition, ordering it to cease and desist and pay temperate damages of ₱300,000, exemplary damages of ₱200,000, and attorney’s fees of ₱100,000 (later increased to ₱300,000 by the IPO Director General). On appeCase Digest (G.R. No. 213365-66)
Facts:
- Parties
- Asia Pacific Resources International Holdings, Ltd. (APRIL) – a foreign corporation engaged in the production, marketing, and sale of pulp and premium wood-free paper; owner and user of the well-known trademark “PAPER ONE.”
- Paperone, Inc. – a domestic corporation organized on March 30, 2001; engaged in paper conversion (table napkins, notebooks, writing pads); adopted “Paper One, Inc.” as corporate name and later streamlined to “Paperone, Inc.”
- Trademark and Corporate Name Adoption
- Petitioner’s use and registration
- Licensed National Paper Products & Printing Corporation (NAPPCO) in 1998 to import and distribute its paper under label “PaperOne.”
- Filed trademark application on March 22, 1999; Certificate of Registration No. 4-1999-01957 issued (2003).
- Respondent’s name registration
- Registered corporate name “Paper One, Inc.” with the Securities and Exchange Commission on March 31, 2001.
- Registered business name with the Department of Trade and Industry thereafter; claimed no use of “Paperone” mark on its products.
- Proceedings Below
- IPO Bureau of Legal Affairs Decision (Nov. 10, 2011)
- Held respondent liable for unfair competition under Sec. 168 of the Intellectual Property Code.
- Ordered respondent to cease use of “PAPERONE,” and to pay P300,000 temperate damages, P200,000 exemplary damages, and P100,000 attorney’s fees.
- IPO Director General Resolution (July 9, 2014)
- Affirmed BLA decision; increased attorney’s fees award to P300,000.
- Court of Appeals Decision (Nov. 28, 2013)
- Reversed IPO rulings; found no confusing similarity or intent to deceive; dismissed petitioner’s claim.
- Petition for Review on Certiorari filed with the Supreme Court under Rule 45 (G.R. Nos. 213365-66).
Issues:
- Whether respondent is liable for unfair competition under Section 168 of the Intellectual Property Code.
- Whether petitioner is entitled to actual damages for unfair competition.
Ruling:
- (Subscriber-Only)
Ratio:
- (Subscriber-Only)
Doctrine:
- (Subscriber-Only)