Case Digest (G.R. No. 158589) Core Legal Reasoning Model
Core Legal Reasoning Model
Facts:
In Philip Morris, Inc., Benson & Hedges (Canada), Inc. and Fabriques de Tabac Reunies, S.A. v. Fortune Tobacco Corporation, decided on June 27, 2006 (G.R. No. 158589), the petitioners—foreign corporations owning Philippine-registered trademarks “MARK VII”, “MARK TEN” and “LARK”—filed a Complaint for Infringement of Trademark and Damages (Civil Case No. 47374) before the Regional Trial Court of Pasig City on August 18, 1982. They claimed that respondent Fortune Tobacco Corporation’s use of the mark “MARK” for cigarettes infringed their rights under Republic Act No. 166 (as amended) and the Paris Convention. The trial court first denied a preliminary injunction, then, after a full trial, dismissed the complaint for lack of capacity to sue—petitioners were not licensed to do business locally and failed to prove reciprocity in their home countries—and ruled there was no infringement because petitioners had not shown actual use, secondary meaning or likelihood of confusion. On Januar Case Digest (G.R. No. 158589) Expanded Legal Reasoning Model
Expanded Legal Reasoning Model
Facts:
- Parties and Trademarks
- Petitioners
- Philip Morris, Inc. (U.S. corporation) – registered owner of “MARK VII” (PPO Reg. No. 18723, April 26, 1973).
- Benson & Hedges (Canada), Inc. – registered owner of “MARK TEN” (PPO Reg. No. 11147).
- Fabriques de Tabac Reunies, S.A. (now Philip Morris Products S.A.) – assignee and registered owner of “LARK” (PPO Reg. No. 19053).
- Respondent
- Fortune Tobacco Corporation (Philippine corporation) – manufactures and sells cigarettes under the mark “MARK.”
- Procedural History
- RTC Pasig, Civil Case No. 47374 (filed August 18, 1982)
- Petitioners sued for trademark infringement and damages, alleging respondent’s use of “MARK” caused confusion with their registered marks and invoking the Paris Convention and R.A. 166.
- They sought preliminary and permanent injunctions.
- Respondent denied material allegations, contending “MARK” is a common word and not distinctive.
- RTC denied preliminary injunction (March 28, 1983) and, after trial on merits, dismissed complaint:
- Petitioners lacked capacity (no business license in PH; failed to prove reciprocity).
- Court of Appeals, CA-G.R. CV No. 66619
- Decision (Jan. 21, 2003): reversed RTC on capacity (recognized standing under Sec. 21-A R.A. 166 and Paris Convention) but affirmed dismissal on infringement and damages (marks not well-known; insufficient similarity; no evidence of actual local use or confusion).
- Resolution (May 30, 2003): denied petitioners’ motion for reconsideration.
- Supreme Court
- Petition for review under Rule 45 filed by petitioners, raising:
- Entitlement of Philippine registrants to enforce trademark rights here.
- Whether respondent infringed petitioners’ marks by using “MARK.”
- Respondent filed Comment, urging dismissal for factual issues.
Issues:
- Whether foreign corporations, as Philippine trademark registrants, may enforce trademark rights in Philippine courts without actual local use or business license.
- Whether Fortune Tobacco’s use of the mark “MARK” for cigarettes constitutes trademark infringement of “MARK VII,” “MARK TEN,” or “LARK.”
Ruling:
- (Subscriber-Only)
Ratio:
- (Subscriber-Only)
Doctrine:
- (Subscriber-Only)