Case Digest (G.R. No. 140203) Core Legal Reasoning Model
Core Legal Reasoning Model
Facts:
In Philip Morris, Inc., Benson & Hedges (Canada), Inc. and Fabriques de Tabac Reunies, S.A. (all foreign corporations owning Philippine registrations for the cigarette trademarks “MARK VII,” “MARK TEN” and “LARK”) sued Fortune Tobacco Corporation in the Regional Trial Court (RTC) of Pasig (Civil Case No. 47374) on August 18, 1982 for trademark infringement under Section 22 of the Trademark Law. Petitioners, admittedly not doing business in the Philippines, sought a writ of preliminary injunction to restrain Fortune from manufacturing, distributing and advertising cigarettes bearing the confusingly similar mark “MARK.” The RTC denied the motion for injunction in three successive orders (March 28, 1983; April 5, 1984; April 22, 1987) on grounds that petitioners lacked local commercial use and showed no clear irreparable injury, that Fortune’s application for registration of “MARK” remained pending and that the Bureau of Internal Revenue had authorized Fortune to use the mark subje Case Digest (G.R. No. 140203) Expanded Legal Reasoning Model
Expanded Legal Reasoning Model
Facts:
- Petitioners and their trademarks
- Philip Morris, Inc. (U.S.) – registered owner of “MARK VII” (PH Cert. No. 18723, Apr. 26, 1973)
- Benson & Hedges (Canada), Inc. – registered owner of “MARK TEN” (PH Cert. No. 11147, May 28, 1964)
- Fabriques de Tabac Reunies, S.A. – registered owner of “LARK” (PH Cert. No. 10953, Mar. 25, 1964)
- Respondent’s activities and application
- Fortune Tobacco Corp. manufactured and sold cigarettes under the mark “MARK” in the Philippines
- Applied for registration of “MARK” (Serial No. 44008, filed Feb. 13, 1981) – declared confusingly similar and later abandoned; refiled in 1986
- Held temporary BIR authorization (Letter of Acting Commissioner Diaz, Jan. 30, 1979) subject to Patent Office registration
- Procedural history
- Civil Case No. 47374 (Pasig RTC): petitioners sued for infringement and sought preliminary injunction (Aug. 18, 1982)
- RTC denied writ on Mar. 28, 1983 (Judge Reyes) and upon reconsiderations (Apr. 5, 1984; Apr. 22, 1987) citing no local business and pending application
- CA (SP No. 13132) granted injunction May 5, 1989 (found prima facie infringement)
- CA lifted injunction Sept. 14, 1989 upon respondent’s offer to post counterbond; petitioners’ motions thereafter denied
Issues:
- Capacity of foreign corporations not licensed or doing business in the Philippines to sue for trademark infringement and obtain preliminary injunction under Sec. 21-A of the Trademark Law.
- Applicability of the “actual use in commerce in the Philippines” requirement under Sections 2 and 2-A for entitlement to injunctive relief.
- Propriety of the Court of Appeals’ exercise of discretion under Section 6, Rule 58, Revised Rules of Court, in lifting the injunction upon filing of a counterbond.
Ruling:
- (Subscriber-Only)
Ratio:
- (Subscriber-Only)
Doctrine:
- (Subscriber-Only)