Case Summary (G.R. No. L-1896)
Petitioner and Respondent
Petitioner: Cagayan Valley Enterprises, Inc., represented by its President, Rogelio Q. Lim
Respondents: The Honorable Court of Appeals; La Tondena, Inc.
Key Dates
• 1953 – Original registration of bottles by LTI under RA 623
• December 4, 1974 – Renewal of registration
• November 10, 1981 – LTI filed Civil Case No. 2668 for injunction and damages
• December 5, 1986 – Court of Appeals decision in favor of LTI
• May 5, 1987 – Court of Appeals denied petition for reconsideration
• November 8, 1989 – Supreme Court decision
Applicable Law
• 1973 Constitution (in force at time of decision)
• Republic Act No. 623, as amended by RA 5700 (container registration and protection)
• Republic Act No. 166, as amended (trademarks)
• Civil Code (Article 20 on civil liability)
• Rules of Court on injunctions and contempt
Procedural History
LTI secured a temporary restraining order (TRO) on November 16, 1981, and a preliminary injunction (December 18, 1981). Trial court dismissed LTI’s cause of action, denied contempt, and granted damages to Cagayan. On appeal, the Court of Appeals set aside that judgment, made the injunction permanent, enjoined Cagayan from using the registered bottles, and awarded nominal, exemplary damages, attorney’s fees, and costs. Cagayan’s motion for reconsideration was denied, leading to this petition.
Issues
- Whether bottles lacking “property of” wording or “Reg. Phil. Pat. Off.” notice comply with RA 623 and RA 166.
- Whether hard liquor containers fall within “other lawful beverages.”
- Whether omission of a deposit requirement or invoice remarks affects protection.
- Whether good-faith use and prior admission bind Cagayan.
- Whether civil contempt proceedings violated double jeopardy.
- Proper measure of damages and fees absent proof of bad faith.
Registration Requirements under RA 623
RA 623 requires registration of containers stamped or marked with the manufacturer’s name, principal’s name, product name, or other ownership marks, supported by two photographs. No requirement exists for the phrase “property of” or illustrative labels. Both sets of LTI’s bottles bore the required names, satisfying the statute.
Scope of Protected Containers
The statute’s coverage extends to all “other lawful beverages” in bottles or similar containers. Hard liquor is a lawful beverage; nothing in the law limits protection to soft drinks. The Patent Office’s executive construction registering LTI’s gin bottles for “Ginebra San Miguel” reinforces this interpretation.
Notice and Marking Requirements
RA 166 § 21’s requirement to mark goods “Reg. Phil. Pat. Off.” affects only recovery of statutory damages for trademark infringement, not the right to injunctive relief under RA 623. Civil Code Article 20 permits indemnification for wilful or negligent damage and complements statutory remedies.
Civil and Criminal Remedies
Unauthorized use of registered containers under RA 623 § 2 carries criminal penalties; civil relief (injunction, damages, fees) lies under Civil Code Article 20 and RA 166 § 23. The Court of Appeals properly granted permanent injunction, nominal and exemplary damages, attorney’s fees, and costs without requiring proof o
...continue readingCase Syllabus (G.R. No. L-1896)
Facts
- In 1953, La Tondena, Inc. (LTI) registered with the Philippine Patent Office, under Republic Act No. 623 (as amended by R.A. 5700), its 350 cc white flint bottles used for “Ginebra San Miguel.”
- The registration was renewed on December 4, 1974.
- On November 10, 1981, LTI filed Civil Case No. 2668 in the CFI of Isabela seeking injunction and damages against Cagayan Valley Enterprises, Inc. (Cagayan), for using the registered bottles to sell its “Sonny Boy” liquor without consent.
- LTI also secured, on November 16, 1981, a temporary restraining order enjoining Cagayan from using the marked bottles.
Procedural History
- Cagayan answered, denying infringement and raising defenses including non-compliance with R.A. 166’s marking requirement and the contention that hard liquor bottles were not covered by R.A. 623.
- The trial court issued a writ of preliminary injunction on December 18, 1981, upon LTI’s bond deposit.
- After a prolonged trial—including five contempt motions by LTI—the trial court dismissed LTI’s complaint, found no contempt by Cagayan, and awarded damages to Cagayan.
- LTI appealed to the Court of Appeals.
- On December 5, 1986, the CA reversed the trial court, made the injunction permanent, enjoined Cagayan from using the bottles, and awarded P15,000 nominal damages, P50,000 exemplary damages, P10,000 attorney’s fees, and costs.
- Cagayan’s motion for reconsideration was denied on May 5, 1987.
- LTI filed a petition for review on certiorari before the Supreme Court.
Issues
- Whether R.A. 623 (as amended) protects bottles of hard liquor as “other lawful beverages.”
- Whether omission of the words “property of” or “Reg. Phil. Pat. Off.” on the bottles affects their registered status or LTI’s right to injun