Case Digest (G.R. No. 179127)
Facts:
In In-N-Out Burger, Inc. v. Sehwani, Inc., petitioner In-N-Out Burger, Inc., a California corporation and signatory to the Paris Convention and TRIPS, sought to register its well-known trademarks “IN-N-OUT” and “IN-N-OUT Burger & Arrow Design” with the Philippine Intellectual Property Office (IPO). Unbeknownst to it, respondent Sehwani, Inc. had already secured registration for “IN N OUT” (with a star-shaped “O”) in 1993 and licensed its use to Benita’s Frites, Inc. In June 2001, petitioner filed an administrative complaint with the IPO’s Bureau of Legal Affairs (BLA) for unfair competition and cancellation of respondents’ mark. In December 2003, the IPO Director of Legal Affairs ordered the cancellation of Sehwani’s registration and enjoined respondents from using both “IN-N-OUT” and “Double-Double” but found no bad faith or unfair competition. Both sides moved for reconsideration and were denied. Respondents then appealed twice to the IPO Director General under Rule 43, the fiCase Digest (G.R. No. 179127)
Facts:
- Parties and Marks
- Petitioner: In-N-Out Burger, Inc., California corporation, signatory to Paris Convention and TRIPS, owner of internationally well-known trademarks “IN-N-OUT,” “IN-N-OUT Burger & Arrow Design,” and “Double-Double”; never operated in the Philippines.
- Respondents: Sehwani, Inc. and Benita’s Frites, Inc., Philippine corporations; Sehwani registered “IN N OUT” (star-inside-O) in 1993 and licensed it to Benita’s.
- Proceedings and Decisions
- June 2001: Petitioner filed before IPO Bureau of Legal Affairs (BLA) an administrative complaint for unfair competition and cancellation of respondents’ registration.
- December 22, 2003: IPO Director of Legal Affairs cancelled Sehwani’s registration, enjoined use of “IN-N-OUT” and “Double-Double.” Motions for reconsideration denied (Oct 2004, Apr 2005).
- October 7, 2004 – December 2004: Respondents’ late appeal to IPO Director General dismissed; Court of Appeals (CA) and later Supreme Court (SC) in G.R. No. 171053 (Oct 15, 2007) affirmed dismissal and upheld cancellation.
- May 27, 2005: Petitioner timely appealed to IPO Director General. December 23, 2005: IPO Director General found respondents guilty of unfair competition; awarded actual damages (P212,574.28), exemplary damages (P500,000), and attorney’s fees (P500,000).
- July 18, 2006: CA in CA-G.R. SP No. 92785 reversed IPO Director General decision on jurisdictional ground that IPO lacks jurisdiction over unfair competition. Motion for reconsideration denied (July 31, 2007). Petitioner filed present SC petition (G.R. No. 179127).
Issues:
- Jurisdiction
- Do the IPO Director of Legal Affairs and the IPO Director General have jurisdiction over administrative complaints involving unfair competition under the Intellectual Property Code?
- How do Sections 10, 7.1(b), and 163 of R.A. 8293 interact regarding administrative versus civil court jurisdiction?
- Procedural Defects
- Are the petition’s verification and certification of non-forum shopping defective to bar relief?
- Did respondents commit forum shopping in CA-G.R. SP No. 92785?
- Unfair Competition Merits
- Did respondents commit unfair competition warranting damages and injunctive relief?
Ruling:
- (Subscriber-Only)
Ratio:
- (Subscriber-Only)
Doctrine:
- (Subscriber-Only)