Case Digest (G.R. No. 179127)
Facts:
In-N-Out Burger, Inc. v. Sehwani, Incorporated and/or Benita’s Frites, Inc., G.R. No. 179127, December 24, 2008, Supreme Court Third Division, Chico‑Nazario, J., writing for the Court. Petitioner In‑N‑Out Burger, Inc. (a California corporation) filed trademark and servicemark applications in the Philippines for “IN‑N‑OUT” and related designs on 2 June 1997. It never did business in the Philippines but claimed its marks were internationally well‑known. Respondent Sehwani, Incorporated had an earlier Philippine registration (Certificate No. 56666, issued 17 December 1993) for “IN N OUT” (with a star inside the letter O) and, by license, Benita Frites, Inc. used that mark in the Philippines.On 4 June 2001 petitioner filed before the Bureau of Legal Affairs (BLA) of the Intellectual Property Office (IPO) an administrative complaint for unfair competition and cancellation of respondents’ registration, alleging confusing similarity and that respondents’ use misled consumers. Respondents answered, asserting long prior use (since 1982), the presumption of a valid registration, and that petitioner lacked capacity to sue because it did not operate in the Philippines.
The IPO Director of Legal Affairs (BLA) issued a decision dated 22 December 2003 cancelling Sehwani’s registration but absolving respondents of unfair competition. Motions for reconsideration by both sides were denied (Resolutions dated 28 October 2004 and 25 April 2005). Respondents timely sought administrative appeal to the IPO Director General but their first appeal was dismissed as filed out of time; they then filed a Rule 43 petition with the Court of Appeals (CA-G.R. SP No. 88004). The Court of Appeals denied that petition on 21 October 2005. Respondents elevated the matter to the Supreme Court in G.R. No. 171053; this Court, in a Decision promulgated 15 October 2007, affirmed the dismissal for lateness and the BLA’s cancellation order, making the cancellation final.
Separately, petitioner filed a timely appeal to the IPO Director General on 27 May 2005 from the BLA denial of its partial motion for reconsideration. In a Decision dated 23 December 2005, IPO Director General Adrian Cristobal, Jr. modified the BLA ruling: he found respondents guilty of unfair competition, awarded actual damages (P212,574.28), exemplary damages (P500,000), and attorney’s fees (P500,000), and ordered seizure/disposition of respondents’ offending materials. Respondents then filed a second petition with the Court of Appeals (CA‑G.R. SP No. 92785) challenging the Director General’s modification, principally on the ground that the IPO lacked jurisdiction to decide unfair competition under Section 163 of the Intellectual Property Code. On 18 July 2006 the Court of Appeals reversed the Director General, holding the regular courts—not the IPO—had exclusive jurisdiction over the trademark provisions enumerated in Section 163, and dismissed respondents’ claims insofar as they pertained to those provisions. The Court of Appeals denied petitioner’s motion for reconsideration on 31 July 2007.
Petitioner filed this Rule 45 Petition for Review on Certiorari to challenge the Court of...(Pro-only)
Issues:
- Whether the IPO (the BLA and the IPO Director General) had jurisdiction to hear and decide petitioner’s administrative complaint for unfair competition under the Intellectual Property Code.
- Whether the present Rule 45 petition is formally defective for defects in the Verification and Certification against forum‑shopping.
- Whether respondents are guilty of submitting a patently false Certification of Non‑Forum S...(Pro-only)
Ruling:
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Ratio:
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Doctrine:
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