Case Summary (G.R. No. 180073)
Facts of the Case
Respondent discovered that since 1996 petitioner marketed a food supplement under the mark PCO-GENOLS, confusingly similar to its registered PYCNOGENOL. Respondent sent a cease-and-desist demand on June 2, 2000. Without notifying respondent, petitioner withdrew PCO-GENOLS from the market and adopted the mark PCO-PLUS on June 19, 2000.
Procedural History
On August 22, 2000, respondent filed a complaint for trademark infringement with prayer for preliminary injunction, damages, and attorney’s fees. Petitioner answered, denying infringement, contesting respondent’s ownership, and alleging prior discontinuance of the mark; it counterclaimed for exemplary damages and attorney’s fees. The RTC ruled for respondent on January 16, 2006, and awarded attorney’s fees. Its denial of petitioner’s motion for reconsideration was embodied in an order dated May 3, 2006. The Court of Appeals affirmed on July 27, 2007, and denied reconsideration on October 15, 2007. Petitioner then sought certiorari relief under Rule 45.
Issues Presented
- Whether petitioner’s use of PCO-GENOLS infringed respondent’s registered trademark PYCNOGENOL.
- Whether the award of attorney’s fees in the amount of ₱50,000.00 was proper.
Applicable Law
For acts until December 31, 1997 – Republic Act No. 166, as amended (Trademark Law).
For acts from January 1, 1998 to June 19, 2000 – Republic Act No. 8293 (Intellectual Property Code).
Trademark infringement under both statutes requires: (a) a registered mark used in commerce, (b) unauthorised use by another, (c) in respect of identical or similar goods, and (d) likelihood of confusion. Attorney’s fees are regulated by Article 2208 of the Civil Code.
Elements of Trademark Infringement
Under R.A. 166 § 22 and R.A. 8293 § 155, petitioner’s use of a colorable imitation of a registered mark in commerce, likely to cause confusion, constitutes infringement irrespective of actual sales. Respondent’s admission of registration with the IPO and petitioner’s admission of prior use of PCO-GENOLS satisfied the first three elements; the dispute focused on likelihood of confusion and consent.
Likelihood of Confusion Tests
Jurisprudence employs:
- The Dominancy Test, which compares dominant features of competing marks and focuses on their aural and visual impressions; and
- The Holistic (Totality) Test, which considers overall packaging, design, and trade dress.
Trial Court’s Decision
The RTC applied the Dominancy Test and found that both marks share the suffix “GENOL,” producing confusingly similar sound effects when pronounced and referring to identical products (food supplements). It held that petitioner’s discontinuance in June 2000 did not negate liability for infringement committed from 1996 to that date. It awarded respondent attorney’s fees of ₱50,000.00 and dismissed petitioner’s counterclaim.
Court of Appeals’ Ruling
The CA affirmed the RTC’s infringement finding, reiterating that PCO-GENOLS is deceptively similar to PYCNOGENOL under the Dominancy Test. It deemed the award of attorney’s fees just and equitable given respondent’s compelled litigation expense.
Supreme Court’s Analysis
The Supreme Court upheld the factual conclusions of the lower courts as final an
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Facts
- Horphag Research Management SA (respondent) is a Swiss corporation and owner of the registered trademark “PYCNOGENOL,” a food supplement distributed in the Philippines by Zuellig Pharma Corporation.
- Prosource International, Inc. (petitioner) began distributing a similar food supplement under the mark “PCO-GENOLS” in 1996.
- On June 2, 2000, respondent sent a demand letter to petitioner to cease use of “PCO-GENOLS” as confusingly similar to “PYCNOGENOL.”
- Without informing respondent, petitioner withdrew “PCO-GENOLS” from the market on June 19, 2000, and replaced it with the mark “PCO-PLUS.”
- On August 22, 2000, respondent filed a complaint for trademark infringement and prayed for a preliminary injunction, damages, and attorney’s fees.
- Petitioner answered, asserting that respondent was not the registered owner of PYCNOGENOL, that the marks were not confusingly similar, and that it had ceased using the mark before suit. Petitioner counterclaimed for exemplary damages and attorney’s fees.
- During pre-trial, both parties admitted key facts regarding corporate organization, registrations with the Intellectual Property Office (IPO) and the Bureau of Food and Drug (BFAD), discontinuance dates, and the demand letter.
Procedural History
- RTC, Branch 167 in Pasig City, rendered Decision dated January 16, 2006, finding infringement from 1996 to June 2000, and awarded respondent attorney’s fees of ₱50,000.00; counterclaim was dismissed and a subsequent motion for reconsideration was denied by order dated May 3, 2006.
- On appeal, the Court of Appeals (CA) Decision dated July 27, 2007 affirmed the RTC’s findings and award; its Resolution dated October 15, 2007 denied petitioner’s motion for reconsideration.
- Petitioner sought review by certiorari under Rule 45 before the Supreme Court, assigning errors on the finding of infringement and on the award of attorney’s fees.
Issues
- Whether petitioner’s use of “PCO-GENOLS” infringed respondent’s registered trademark “PYCNOGENOL.”
- Whether the award of attorney’s fees in favor of respondent in the amount of ₱50,000.00 was proper.
Applicable Law
- Republic Act No. 166, as amended (Trademark Law) governs acts committed until December 31, 1997.
- Republic Act No