Case Digest (G.R. No. 248021)
Facts:
Prosel Pharmaceuticals & Distributors, Inc. v. Tynor Drug House, Inc., G.R. No. 248021, September 30, 2020, the Supreme Court Third Division, Carandang, J., writing for the Court. Petitioner Prosel Pharmaceuticals & Distributors, Inc. manufactured and marketed an over‑the‑counter children’s growth supplement under the brand name CEEGEEFER; respondent Tynor Drug House, Inc. marketed a competing product under the registered composite mark CHERIFER + Logo. Petitioner traced CEEGEEFER to an improvement of an earlier product, Selvon‑C, and explained that the name was phonetically derived from the product’s Chlorella Growth Factor (CGF) ingredient; petitioner also received BFAD (now FDA) product registrations for its drug formulations. Respondent asserted prior use of CHERIFER since 1993, obtained a copyright deposit of its packaging in 2002, and secured a trademark registration (No. 4‑2002‑004546) for the CHERIFER + Logo in 2004.In 2007 respondent sent a demand letter directing petitioner to stop distributing CEEGEEFER and to recall products whose packaging allegedly imitated CHERIFER’s trade box. Petitioner replied denying confusing similarity but agreed to withdraw promotional materials bearing resemblance and to submit a redesigned trade box to BFAD. When petitioner failed to effect an immediate recall respondent sued in the Regional Trial Court (RTC) for trademark and copyright infringement, unfair competition, and damages, and applied for injunctive relief; a writ of preliminary injunction was issued on February 21, 2008.
The RTC (Branch 256, Muntinlupa City) in a Decision dated December 23, 2013 dismissed respondent’s complaint and lifted the writ of preliminary injunction, finding no confusing similarity (applying idem sonans and Asia Brewery’s holistic considerations) and no substantial copyright infringement; the RTC awarded petitioner the preliminary injunction bond as nominal damages. Respondent appealed to the Court of Appeals (CA) under Rule 41.
The CA, in a Decision dated January 29, 2018 (and Resolution denying reconsideration dated June 21, 2019), reversed the RTC: it found CEEGEEFER to be a colorable imitation of CHERIFER + Logo, held petitioner liable for trademark infringement, enjoined petitioner from using the CEEGEEFER mark and the CHERIFER + Logo, awarded respondent P500,000.00 as nominal damages and P100,000.00 as attorney’s fees, but found no copyright infringement and denied exemplary damages. Petitioner’s motion ...(Pro-only)
Issues:
- Should the petition be dismissed for defective Verification and Certification against Forum Shopping?
- Did petitioner’s use of the CEEGEEFER name and packaging constitute a colorable imitation of respondent’s CHERIFER + Logo, giving rise to trademark infringement (likelihood of confusion) and warranting injunctive relief?
- Were the CA’s awards of nominal damages and attorney’s fees proper and...(Pro-only)
Ruling:
- (Pro-only)
Ratio:
- (Pro-only)
Doctrine:
- (Pro-only)