Case Summary (G.R. No. 116347)
Key Dates
- December 20, 1991: Complaint for injunction and damages filed with prayer for writ of preliminary injunction
- February 10 & March 19, 1992: RTC issues and maintains preliminary injunction upon bond of ₱500,000
- April 24, 1992: Respondents file certiorari petition before Court of Appeals
- May 24, 1993: CA sets aside preliminary injunction orders as null and void
- October 22, 1993: RTC renders decision on merits, denying petitioner trademark rights but upholding her copyright in container design
- June 3, 1994: CA denies petitioner’s motions for reconsideration and contempt
- March 19, 2002: Supreme Court promulgates its decision
Applicable Law
- 1987 Philippine Constitution
- Rule 58, Revised Rules of Civil Procedure (preliminary injunction)
- Rule 66 § 6 and Rule 56 § 2, Revised Rules (motions to dismiss and pleadings)
- Supreme Court Circular No. 28-91 (anti-forum shopping)
- Republic Act No. 8293 (Intellectual Property Code): definitions of trademarks (§ 121.1), trade names (§ 121.3), copyrights (§ 172), patents (§ 21)
Preliminary Injunction Proceedings
Petitioner claimed registered copyrights in the “Chin Chun Su” mark and container (Certificates Nos. 0-1358, 0-3678) and patent rights in the formula (Cert. No. 4529). She alleged respondents’ advertising and sale of identical products under the same mark and similar containers caused public confusion and business losses. The RTC granted her application for a writ of preliminary injunction, conditioned on a ₱500,000 bond.
Court of Appeals Ruling on Injunction
Respondents challenged the writ by petition for certiorari, asserting that petitioner’s supplemental-register registration did not confer full trademark protection and that her complaint constituted forum shopping. The CA agreed that supplemental-register status does not equate to principal-register rights, found no clear trademark entitlement, and voided the RTC’s injunction orders, directing the RTC to proceed to trial on the merits.
Trial Court Decision on Final Injunction
After trial, the RTC held that petitioner lacked trademark rights in the “Chin Chun Su” name and container but recognized her copyright in the container’s design. It permanently enjoined petitioner from using the mark, upheld respondents’ rights to the mark, declined to award damages or costs, and granted each party’s counsel ₱75,000 in attorney’s fees.
Procedural Contentions Before the Supreme Court
Petitioner alleged—(i) the CA abused discretion by refusing to dismiss the certiorari petition for forum shopping; (ii) denial of due process by delaying resolution of her motion for reconsideration beyond the 90-day period prescribed by CA Internal Rules; and (iii) improper refusal to cite respondents for contempt over post-decision advertisements.
Supreme Court on Intellectual Property Rights
The Court emphasized that trademarks, copyrights, and patents protect distinct categories:
- Trademarks: visible signs distinguishing goods or services, including packaging
- Copyrights: original literary and artistic works
- Patents: technical inventions solving a problem with novelty, inventive step, and industrial application
Petitioner’s copyright and patent registrations did not grant exclusive trademark rights. She failed to prove prior trademark registration or use against respondents. Consequently, she had no clear right to warrant preliminary injunctive relief.
Mootness of Preliminary Injunction
Invoking La Vista Ass’n, Inc. v. CA, the Court held that once a final injunction decision on the merits is rendered, any issues regarding preliminary injunction become moot and academic, even if that decision is on appeal.
Forum Shopping and Procedural Defects
The Court rejected petitioner’s forum
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Facts of the Case
- On December 20, 1991, Elidad C. Kho (petitioner), trading as KEC Cosmetics Laboratory, filed Civil Case No. Q-91-10926 in the RTC of Quezon City for injunction and damages, praying for a writ of preliminary injunction.
- Petitioner alleged that she owned:
- Copyrights in the trademarks “Chin Chun Su” and the “Oval Facial Cream Container/Case” (Cert. No. 0-1358 and No. 0-3678).
- Patent rights on “Chin Chun Su & Device” and “Chin Chun Su for medicated cream” acquired from Quintin Cheng (Reg. No. 4529, Feb. 7, 1980).
- She claimed respondents Summerville General Merchandising and Ang Tiam Chay infringed her rights by advertising and selling similar‐branded cream products and containers, causing decline in her sales.
- Respondents countered that Summerville was the exclusive, authorized importer, repacker and distributor of Taiwan‐made Chin Chun Su products; that the Taiwanese manufacturer had authorized its Philippine trade registration; and that petitioner’s copyright and patent registrations were obtained via misrepresentation.
Procedural History
- RTC Branch 90 granted petitioner’s motion for preliminary injunction on February 10, 1992, requiring a ₱500,000 bond.
- Motion for reconsideration by respondents was denied on March 19, 1992.
- On April 24, 1992, respondents filed CA-G.R. SP No. 27803 for certiorari seeking nullification of the injunction, omitting the case docket number and initially lacking a certificate of non-forum shopping.
- Petitioner moved to dismiss the certiorari petition for alleged forum-shopping violations; respondents later supplied their certificate of non-forum shopping.
- On May 24, 1993, the Court of Appeals granted the certiorari petition, set aside both RTC orders, and directed the trial court to proceed to trial on the merits.
- Petitioner’s motions for reconsideration and contempt of court were denied by the CA on June 3, 1994.