Case Digest (G.R. No. 180073) Core Legal Reasoning Model
Core Legal Reasoning Model
Facts:
In Prosource International, Inc. vs. Horphag Research Management SA (G.R. No. 180073, November 25, 2009), Horphag Research Management SA, a Swiss corporation and registered owner of the trademark PYCNOGENOL (Registration No. 62413 with the Bureau of Patents, Trademarks and Technology Transfer), discovered that Prosource International, Inc., a Philippine corporation with principal address at No. 7 Annapolis Street, Greenhills, San Juan, Metro Manila, had been distributing a food supplement under the mark PCO-GENOLS since 1996. Following a demand letter dated June 2, 2000, Prosource withdrew PCO-GENOLS products from the market and adopted PCO-PLUS on June 19, 2000. On August 22, 2000, Horphag filed a Complaint for trademark infringement with prayer for preliminary injunction, damages, and attorney’s fees before the Regional Trial Court (Branch 167, Pasig City), alleging that PCO-GENOLS was confusingly similar to PYCNOGENOL. Prosource answered that Horphag was not the registered ow Case Digest (G.R. No. 180073) Expanded Legal Reasoning Model
Expanded Legal Reasoning Model
Facts:
- Parties and Marks
- Petitioner: Prosource International, Inc., a Philippine corporation distributing food supplements.
- Respondent: Horphag Research Management SA, a Swiss corporation and registered owner of the trademark PYCNOGENOL.
- Chronology of Events
- Since 1996, petitioner marketed a food supplement under the mark PCO-GENOLS.
- June 2, 2000: Respondent sent a demand letter to petitioner to cease use of PCO-GENOLS.
- June 19, 2000: Without notifying respondent, petitioner withdrew PCO-GENOLS from the market and adopted the mark PCO-PLUS.
- August 22, 2000: Respondent filed a Complaint for infringement of trademark (PYCNOGENOL), seeking a preliminary injunction, damages, and attorney’s fees.
- Petitioner answered, denying infringement, challenging respondent’s standing, and filing a counterclaim for exemplary damages and attorney’s fees.
- Procedural History
- Pre-trial admissions:
- Respondent’s mark PYCNOGENOL registered with IPO but not with BFAD.
- Petitioner’s PCO-GENOLS registered with BFAD but not IPO.
- Petitioner ceased use of PCO-GENOLS as of June 19, 2000.
- RTC Decision (Jan. 16, 2006): Found confusing similarity between PYCNOGENOL and PCO-GENOLS under the Dominancy Test; held petitioner liable for infringement from 1996 to June 2000; awarded attorney’s fees of ₱50,000; denied petitioner’s counterclaim.
- CA Decision (July 27, 2007) and Resolution (Oct. 15, 2007): Affirmed the RTC’s findings and award of attorney’s fees.
- Petition for review on certiorari under Rule 45 filed by petitioner before the Supreme Court.
Issues:
- Trademark Infringement
- Whether PCO-GENOLS is confusingly similar to PYCNOGENOL, constituting trademark infringement.
- Attorney’s Fees
- Whether the award of attorney’s fees (₱50,000) in favor of respondent is proper.
Ruling:
- (Subscriber-Only)
Ratio:
- (Subscriber-Only)
Doctrine:
- (Subscriber-Only)