Case Digest (G.R. No. 154342) Core Legal Reasoning Model
Core Legal Reasoning Model
Facts:
In Mighty Corporation and La Campana Fábrica de Tabaco, Inc. v. E. & J. Gallo Winery and The Andresons Group, Inc. (G.R. No. 154342, July 14, 2004), respondents E. & J. Gallo Winery (“Gallo Winery”), a California-based wine producer, held Philippine registration for the GALLO and ERNEST & JULIO GALLO wine trademarks since 1971 and 1990, respectively, and appointed Andresons as exclusive importer and distributor in the Philippines from 1991. Petitioners Mighty Corporation and La Campana, through their predecessor Tobacco Industries, began using GALLO as a cigarette trademark in 1973, obtained BIR approvals in the 1970s and 1980s, and licensed Mighty to manufacture and sell GALLO-branded cigarettes. Respondents first encountered GALLO cigarettes in a Davao supermarket in late 1992 and sent a demand letter that proved ineffective. On March 12, 1993, respondents filed suit in the Makati RTC for trademark infringement and unfair competition under the Paris Convention and R.A. 166, se Case Digest (G.R. No. 154342) Expanded Legal Reasoning Model
Expanded Legal Reasoning Model
Facts:
- Parties and Background
- Respondents
- E. & J. Gallo Winery (Gallo Winery): California-based wine and brandy producer, owning the GALLO and ERNEST & JULIO GALLO trademarks; exclusive importer/distributor in the Philippines since 1991 is The Andresons Group, Inc. (Andresons).
- Petitioners
- Mighty Corporation and La Campana Fábrica de Tabaco, Inc.: Philippine manufacturers of GALLO-branded cigarettes since 1973, with BIR approvals and assignments from Tobacco Industries of the Philippines.
- Trademark Registrations and Commercial Use
- GALLO wine trademark registered in the Philippines on November 16, 1971 (renewed in 1991); actual sales in U.S. military facilities circa 1974, broader Philippine market by 1979; invoices from 1981 and 1996.
- Petitioners’ GALLO cigarette trademark use approved by BIR in 1973 and 1976; attempted registration in 1974; trademark assignment to La Campana in 1984; La Campana’s registration application in July 1985; Mighty Corporation’s licensed use approved in 1988 and 1989; continuous sales since 1973.
- Procedural History
- Complaint (March 12, 1993): Respondents sued petitioners in Makati RTC for trademark infringement (RA 166, Paris Convention) and unfair competition, seeking damages and injunction.
- RTC on Preliminary Injunction (April 21, 1993): Denied respondents’ motion for preliminary injunction, finding no related goods or irreparable injury; motion for reconsideration denied (August 19, 1993).
- CA and SC on Injunction (February 20, 1995): CA dismissed respondents’ petition on injunction; SC denied review.
- Trial on Merits and Appeals
- RTC decision (November 26, 1998; modified June 24, 1999): Found infringement and unfair competition; awarded damages (10% of PHP 199,290,000), exemplary damages, attorney’s fees.
- CA decision (November 15, 2001) and resolution (July 11, 2002): Affirmed RTC judgment; denied motion for reconsideration.
- SC Rule 45 Petition: Mighty and La Campana petitioned for certiorari, challenging applicability of IP Code, finding of goods’ relatedness, channels of trade, and liability.
Issues:
- Applicability of Law
- Whether Republic Act 8293 (IP Code) applies retrospectively to acts committed before its effectivity (January 1, 1998) instead of the Paris Convention and RA 166.
- Trademark Infringement and Unfair Competition Elements
- Whether GALLO cigarettes and GALLO wines are identical, similar or related goods.
- Whether both goods pass through the same channels of trade.
- Whether petitioners’ use of GALLO mark constitutes infringement (likelihood of confusion) or unfair competition.
- Whether petitioners acted in bad faith or capitalized on respondents’ goodwill.
Ruling:
- (Subscriber-Only)
Ratio:
- (Subscriber-Only)
Doctrine:
- (Subscriber-Only)