Case Digest (G.R. No. 202423)
Facts:
Chester Uyco, Winston Uychiyong and Cherry C. Uyco-Ong, officers of Wintrade Industrial Sales Corporation, filed a motion for reconsideration from this Court's Resolution of September 12, 2012 denying their petition arising from the Court of Appeals' affirmation of the Department of Justice's September 1, 2008 resolution finding probable cause. Vicente Lo had complained that kerosene burners sold by National Hardware and manufactured by Wintrade bore the marks HIPOLITO & SEA HORSE & TRIANGULAR DEVICE, FAMA, and the legends Made in Portugal and Original Portugal, although the products were made in the Philippines and allegedly used without authority after revocation of Wintrade’s license.A preliminary investigation by the Chief State Prosecutor found probable cause to charge the petitioners with false designation of origin under Section 169.1, in relation to Section 170, of RA 8293; the DOJ and the CA affirmed that finding, and the petitioners’ own admissions and the statement
Case Digest (G.R. No. 202423)
Facts:
- Parties and principal respondents
- Chester Uyco, Winston Uychiyong, and Cherry C. Uyco-Ong — petitioners; officers of Wintrade Industrial Sales Corporation (Wintrade).
- Vicente Lo — respondent and complainant in the administrative/criminal proceedings.
- Philippine Burners Manufacturing Corporation (PBMC) — alleged agent and manufacturer of genuine burners per Lo.
- National Hardware and its owner Mario Sy Chua — retail outlet and seller where the test buy occurred.
- Casa Hipolito S.A. Portugal, Gasirel-Industria de Comercio e Componentes para Gass, Lda. (Gasirel), and Wonder Project & Development Corporation (Wonder) — foreign mark owners and Wintrade’s predecessor-in-interest.
- Subject matter and disputed marks
- Disputed marks: HIPOLITO & SEA HORSE & TRIANGULAR DEVICE, FAMA, and related marks, service marks, and trade names of Casa Hipolito S.A. Portugal appearing on kerosene burners.
- Packaging bore the designations "Made in Portugal" and "Original Portugal" alongside the marks.
- Allegations and claimed assignments
- Lo alleged that Gasirel executed a deed of assignment transferring the marks to him for use in all countries except Europe and America.
- Lo alleged he had not authorized Wintrade to use the marks and that Casa Hipolito S.A. Portugal had revoked prior authority previously granted to Wintrade’s predecessor by a letter of cancellation dated May 31, 1993.
- Test buy and manufacturing allegations
- Lo conducted a test buy at National Hardware and purchased kerosene burners bearing the disputed marks and the phrases "Made in Portugal" and "Original Portugal."
- Lo alleged the burners he bought were not genuine and that the real burners were those manufactured by his agent PBMC.
- The petitioners admitted that the burners sold by Wintrade were produced in the Philippines.
- Defenses and counterclaims by petitioners and third parties
- Petitioners asserted Wintrade owned the subject trademarks and submitted certificates of registration from the Intellectual Property Office.
- Petitioners alleged authority derived from Casa Hipolito S.A. Portugal through Wonder and claimed Gasirel, not Lo, was the real party-in-interest.
- Petitioners contended the words "Made in Portugal" and "Original Portugal" were merely descriptive of the origin of the design or the history of manufacture, not of the goods’ country of manufacture.
- Petitioners argued that PBMC had ceased to be a corporation, so the licensing agreement between PBMC and Lo could not be given effect, and alleged the agreement lacked notarization and requirements of Section 87 of RA 8293.
- Mario Sy Chua admitted long-term dealings with Wintrade and stated he was unaware that Wintrade had lost authority to use the marks and would have ceased dealing had he been informed.
- Admissions by petitioners
- Petitioners’ Joint Affidavit admitted prior association with Casa Hip...(Subscriber-Only)
Issues:
- Threshold and procedural issues
- Whether the DOJ and the CA committed grave abuse of discretion in finding probable cause to charge the petitioners under Section 169.1, in relation with Section 170, of RA 8293.
- Whether the State may prosecute notwithstanding any alleged lack of capacity on the part of Lo to sue, and whether Lo’s status as assignee was sufficiently established for purposes of probable cause.
- Substantive trademark and evidentiary issues
- Whether the use of the phrases "Made in Portugal" and "Original Portugal" in connection with the disputed marks constituted a false designation of origin likely to cause confusion or mistake as to the origin of the goods.
- Whether the petitioners’ admissions and the statement of Mario Sy Chua provided a sufficient factual basis for probable cause linking the petitioners to the manufacture, distribution, or sale of the accused burners.
- Whether th...(Subscriber-Only)
Ruling:
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Ratio:
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Doctrine:
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