Case Digest (G.R. No. 158589)
Facts:
Philip Morris, Inc., Benson & Hedges (Canada), Inc., and Fabriques de Tabac Reunies, S.A. v. Fortune Tobacco Corporation, G.R. No. 158589, June 27, 2006, the Supreme Court Second Division, Garcia, J., writing for the Court.Petitioners — Philip Morris, Inc., Benson & Hedges (Canada), Inc., and Fabriques de Tabac Reunies, S.A. — are foreign corporations that held Philippine trademark registrations for "MARK VII", "MARK TEN", and "LARK", respectively. Respondent Fortune Tobacco Corporation manufactured and sold cigarettes bearing the mark "MARK". Petitioners filed a Complaint for Infringement of Trademark and Damages on August 18, 1982 in the Regional Trial Court (RTC) of Pasig City, Branch 166 (Civil Case No. 47374), alleging confusing similarity and claiming relief under the Paris Convention and Sections of R.A. No. 166 (the Trademark Law).
During the RTC proceedings petitioners sought preliminary injunction (denied by an order referenced in the record), and after trial the RTC rendered judgment on November 3, 1999 dismissing petitioners’ complaint. The RTC found petitioners failed to prove reciprocity to satisfy Section 21‑A of R.A. No. 166 and noted petitioners’ admissions suggesting they were not properly licensed to do business in the Philippines; it also found no likelihood of confusion or secondary meaning and therefore no infringement, and awarded no damages.
Petitioners appealed to the Court of Appeals (CA-G.R. CV No. 66619). The Court of Appeals in its Decision dated January 21, 2003 held that petitioners had the capacity to sue in the Philippines but nonetheless affirmed the RTC’s judgment dismissing the infringement claim because the marks were not well‑known locally, the similarities were insufficient to cause confusion, and damages were unwarranted. The CA denied petitioners’ motion for reconsider...(Subscriber-Only)
Issues:
- Are the petitioners, as foreign registrants of trademarks, entitled to enforce trademark rights in the Philippines (standing/reciprocity and the effect of Philippine registration)?
- Did respondent Fortune Tobacco Corporation commit trademark infringement by its use of the mark "MARK" for cigarettes, renderin...(Subscriber-Only)
Ruling:
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Ratio:
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Doctrine:
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