G.R. No. 196539 - Portillo vs. Rudolf Lietz, Inc.

Petitioners Chester Uyco, Winston Uychiyong, and Cherry C. Uyco-Ong, officers of Wintrade Industrial Sales Corporation (Wintrade), were charged with violation of Section 169.1, in relation with Section 170, of Republic Act No. 8293 (Intellectual Property Code of the Philippines).
Respondent Vicente Lo, together with Philippine Burners Manufacturing Corporation (PBMC), filed the complaint against Wintrade and other parties, including Mario Sy Chua of National Hardware.
The complaint involved the use of disputed marks “HIPOLITO & SEA HORSE & TRIANGULAR DEVICE,” “FAMA,” and other related marks of Casa Hipolito S.A. Portugal appearing on kerosene burners.
These trademarks were allegedly assigned by Gasirel-Industria de Comercio e Componentes para Gass, Lda. (Gasirel), owner of the marks, to Vicente Lo (excluding Europe and America).

Vicente Lo conducted a test buy and purchased kerosene burners from National Hardware bearing the subject marks alongside “Made in Portugal” and “Original Portugal” on the wrappers.
These products were manufactured by Wintrade. Lo asserted that neither he nor Casa Hipolito S.A. Portugal authorized Wintrade’s use of these marks after revocation of prior authority given to Wintrade’s predecessor-in-interest, Wonder Project & Development Corporation (Wonder) through a letter dated May 31, 1993.
Lo claimed that the kerosene burners made by Wintrade caused confusion and deception among the buying public, while genuine burners were only those manufactured by PBMC, his agent.

Petitioners claimed they were officers of Wintrade which owned the disputed trademarks, supported by Intellectual Property Office certificates of registration.
They argued that Gasirel, not Vicente Lo, was the real party in interest. Their authority to use the marks was derived from Casa Hipolito S.A. Portugal through Wonder, the predecessor-in-interest.
They contended PBMC had ceased to exist and that the licensing agreement between Lo and PBMC was invalid for lack of notarization and non-compliance with Section 87 of RA 8293.
Petitioners denied manufacturing the kerosene burners bought at National Hardware and argued that the marks “Made in Portugal” and “Original Portugal” merely described the origin of the design, not the goods.

Mario Sy Chua admitted dealing with Wintrade for 20 years and selling its products, including the kerosene burners bearing “Made in Portugal” markings, but denied knowledge of Wintrade’s loss of authority to use the marks and denied conspiracy.

The Chief State Prosecutor found probable cause to charge the petitioners for false designation of origin under RA 8293 Sections 169.1 and 170, emphasizing the need to protect the public irrespective of Lo’s legal capacity to sue.
The Department of Justice (DOJ) affirmed probable cause, noting petitioners’ admission of using “Made in Portugal” on products made in the Philippines without explicit clarifications.
The Court of Appeals (CA) upheld the DOJ’s resolution, finding no grave abuse of discretion.
The Supreme Court initially denied the petitioners’ petition for lack of reversible error and later denied their motion for reconsideration.

Whether there was probable cause to charge the petitioners with violation of Section 169.1, in relation to Section 170, of RA 8293 for false designation of origin.
Whether the use of the marks “Made in Portugal” and “Original Portugal” on kerosene burners manufactured in the Philippines constitutes a false designation of origin likely to cause confusion.
Whether the petitioners’ defense that these marks refer only to the origin of the design and not the goods negates probable cause for the crime charged.
Whether Vicente Lo had legal standing or capacity to file the complaint as assignee of the trademarks.