Case Digest (G.R. No. 91332)
Facts:
Philip Morris, Inc., Benson & Hedges (Canada), Inc., and Fabriques de Tabac Reunies, S.A. v. Court of Appeals and Fortune Tobacco Corporation, G.R. No. 91332, July 16, 1993, Special Third Division, Melo, J., writing for the Court. The petition challenges the Court of Appeals’ dissolution of a preliminary injunction that had enjoined Fortune Tobacco Corporation from manufacturing and selling cigarettes branded “MARK.”
Petitioners are foreign corporations and registered owners in the Philippines of the trademarks MARK VII, MARK TEN, and LARK (certificates dated April 26, 1973; May 28, 1964; and March 25, 1964, respectively). They sued Fortune in the trial court (Civil Case No. 47374) for trademark infringement under the Trademark Law and sought a writ of preliminary injunction to enjoin Fortune’s manufacture, sale and advertising of “MARK” cigarettes. In their complaint they averred they were not doing business in the Philippines and that the infringement arose from an isolated transaction; they relied on their Philippine registrations and treaty protection under the Paris Convention.
The trial court denied petitioners’ application for a preliminary injunction on March 28, 1983 (Judge Reyes), emphasizing that petitioners admitted they were not doing business in the Philippines, that Fortune’s application for registration of “MARK” was still pending before the Philippine Patent Office, and that the Bureau of Internal Revenue (BIR) had temporarily authorized Fortune to manufacture the brand subject to Patent Office action. The trial court denied reconsideration on April 5, 1984 and, after petitioners filed a second motion (citing certification of abandonment/forfeiture and other developments), Judge Galing again denied issuance of the writ on April 22, 1987 because petitioners had not established actual use of their marks in the Philippines and because Fortune’s application could be refiled.
Petitioners sought relief by filing a petition (initially docketed G.R. No. 78141) which was referred to the Court of Appeals. The Court of Appeals (First Division) set aside the trial court’s order and, by decision dated May 5, 1989, found petitioners had shown a prima facie case and granted a preliminary injunction (subject to bond). Fortune’s motion for reconsideration was denied by the CA, but Fortune later moved to dissolve the CA-issued injunction, offering to post a counterbond and highlighting potential economic injury (loss of jobs, tax revenues). On September 14, 1989 the Court of Appeals granted Fortune’s motion and d...(Pro-only)
Issues:
- Did the Court of Appeals gravely abuse its discretion in requiring petitioners to show actual commercial use of their registered trademarks in the Philippines as a precondition to establish irreparable injury and entitlement to a preliminary injunction?
- Did the Court of Appeals err in dissolving the preliminary injunction pursuant to Section 6, Rule 58 of the Rules of Court by accepting Fortune’s offer to post a counterbond?
- Did the Court of Appeals act inconsistently or in excess of jurisdiction by first finding grave abuse in the trial court for denying the injunction a...(Pro-only)
Ruling:
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Ratio:
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Doctrine:
- (Pro-only)