Case Digest (G.R. No. 197802)
Facts:
Zuneca Pharmaceutical, Akram Arain and/or Venus Arain, M.D. dba Zuneca Pharmaceutical v. Natrapharm, Inc., G.R. No. 197802, November 11, 2015, the Supreme Court Third Division, Villarama, Jr., J., writing for the Court. The petition under Rule 45 challenged the Court of Appeals’ April 18, 2011 Decision and July 21, 2011 Resolution in CA‑G.R. SP No. 103333 that granted a permanent injunction in favor of respondent Natrapharm, Inc. and against petitioners Zuneca Pharmaceutical (Akram Arain and/or Venus Arain, M.D.).Respondent Natrapharm is an all‑Filipino pharmaceutical company that manufactures and markets citicoline under the registered trademark ZYNAPSE, registered with the Intellectual Property Office (IPO) on September 24, 2007 (10‑year term). Respondent also secured necessary permits from the Bureau of Food and Drugs (BFAD, now FDA) to register, list and sell its product in various forms and dosages.
Petitioners were selling an imported carbamazepine product under the brand name ZYNAPS (not IPO‑registered) since at least 2003 (they allege application with BFAD dated October 2, 2001 and CPR issued April 15, 2003). ZYNAPS is pronounced identically to ZYNAPSE, and respondent alleged overlapping retail presence creating a risk of medicine switching; respondent stressed that carbamazepine has a documented serious side effect (Stevens‑Johnson Syndrome).
On October 30, 2007 respondent sent a cease‑and‑desist demand; petitioners refused, citing prior use and BFAD CPR. Respondent filed a trademark infringement complaint (RA No. 8293, the Intellectual Property Code) on November 29, 2007 with prayer for TRO/preliminary injunction. The Regional Trial Court (RTC), Branch 93, denied the TRO in its December 21, 2007 Order and denied a writ of preliminary injunction in its March 12, 2008 Omnibus Order, reasoning that petitioners’ prior use (and CPR) invoked Section 159 (limitations to registered marks) of the IP Code and therefore respondent’s registration did not automatically prevail.
Respondent sought certiorari with application for TRO/preliminary injunction before the Court of Appeals. The CA initially denied the TRO/preliminary injunction in Resolutions dated June 17 and July 31, 2008. Contrarily, in its April 18, 2011 Decision (penning Associate Justice Elihu A. Ybañez, with Reyes and Perlas‑Bernabe, JJ., concurring), the CA granted certiorari, reversed the RTC’s March 12, 2008 Omnibus Order and permanently enjoined petitioners from using “ZYNAPS” or any confusingly similar mark to “ZYNAPSE”; petitioners’ motion for reconsideration was denied by CA on July 21, 2011.
Meanwhile, the main action proceeded in the RTC which, on December 2, 2011, rendered a decision on the merits in the case for “Injunction, Trademark Infringement, Damages and Destruction,” finding petitioners liable, awarding damages and exemplary damages (P1,000,000 each), attorney’s fees (P200,000) and ordering destruction/disposal of infringing goods and materia...(Pro-only)
Issues:
- Whether the petition is moot and academic in view of the RTC’s December 2, 2011 decision on the merits.
- Whether the Court of Appeals may properly order a permanent injunction in a certiorari proceeding challenging the denial of a preliminary injun...(Pro-only)
Ruling:
- (Pro-only)
Ratio:
- (Pro-only)
Doctrine:
- (Pro-only)