Case Summary (G.R. No. 202423)
Factual Background and Trademark Dispute
Vicente Lo, alleging assignee rights from Gasirel-Industria de Comercio e Componentes para Gass, Lda. through Casa Hipolito S.A. Portugal, filed charges against petitioners—officers of Wintrade—and others for violation of false designation of origin under Sections 169.1 and 170 of RA 8293. Lo contended that Casa Hipolito S.A. Portugal revoked authority previously given to Wintrade's predecessor-in-interest, Wonder Project & Development Corporation (Wonder), to use the marks. Lo purchased kerosene burners bearing the disputed marks with "Made in Portugal" and "Original Portugal" labels from National Hardware, but the products were manufactured by Wintrade and unapproved by Casa Hipolito or Lo.
Arguments and Denials by Petitioners and Other Parties
Petitioners asserted ownership of the trademarks, supported by registrations with the Intellectual Property Office, and claimed Gasirel—not Lo—was the real party-in-interest. They maintained their authority stemmed from Casa Hipolito through Wonder and challenged the validity of Lo’s licensing claim, noting PBMC ceased to exist and the relevant licensing agreement was defective under Section 87 of RA 8293. Additionally, petitioners argued that the labels "Made in Portugal" and "Original Portugal" were merely descriptive of the origin of design or manufacture history, not the origin of the goods, which were made in the Philippines. Mario Sy Chua, representing National Hardware, admitted to dealing with Wintrade for years but declared unawareness of any authority revocation.
Findings of Probable Cause by State Prosecutor, DOJ, and Court of Appeals
The Chief State Prosecutor found probable cause to indict petitioners for false designation of origin, emphasizing the law’s objective to protect the public against deception regardless of Lo's legal capacity to sue. The Department of Justice affirmed this finding, crediting Lo’s assertion as assignee and underscoring petitioners’ admission of using "Made in Portugal" labels on products made in the Philippines, which could mislead consumers. The DOJ held that petitioners’ explanations were better addressed during trial. The Court of Appeals affirmed both the DOJ’s resolution and the existence of probable cause, rejecting claims of grave abuse of discretion.
Petitioners' Motion for Reconsideration and Court’s Ruling
Petitioners reiterated arguments that the products bearing the marks were not manufactured or connected to them and that the labels referred solely to design origin. The Supreme Court, however, stressed that petitioners' own admissions in a joint affidavit acknowledged Wintrade’s use of the disputed marks on locally manufactured kerosene burners while knowing about the prior authorization revocation. The affidavit concretely described Wintrade’s production choices and use of such labels, negating any hypothetical defense.
Evidence and Impact of Petitioners’ Admissions
Mario Sy Chua confirmed decades of transactions with Wintrade involving products labeled "Made in Portugal." He testified he was never informed of any revocation of authority or notices affecting his dealings. Thus, evidence shows that petitioners knowingly used misleading foreign-orig
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Background and Procedural History
- Petitioners Chester Uyco, Winston Uychiyong, and Cherry C. Uyco-Ong filed a motion for reconsideration against the Court’s September 12, 2012 Resolution affirming decisions by the Court of Appeals (CA) and the Department of Justice (DOJ).
- The case arises from accusations against the petitioners for false designation of origin, violating Sections 169.1 and 170 of Republic Act No. 8293 (Intellectual Property Code of the Philippines).
- The case involves disputed marks “HIPOLITO & SEA HORSE & TRIANGULAR DEVICE”, “FAMA”, and other related marks owned originally by Casa Hipolito S.A. Portugal appearing on kerosene burners.
- Respondent Vicente Lo and Philippine Burners Manufacturing Corporation (PBMC) filed a complaint against Wintrade Industrial Sales Corporation officers (petitioners) and National Hardware’s officer Mario Sy Chua.
- The CA affirmed DOJ’s finding of probable cause to charge petitioners, upholding probable cause to prosecute under the trademark law provisions.
Facts and Substance of the Dispute
- Vicente Lo claimed that Gasirel, original owner of marks, assigned the trademarks to him for use outside Europe and America.
- Lo conducted a test purchase at National Hardware of kerosene burners marked “Made in Portugal” and “Original Portugal”, manufactured by Wintrade.
- Lo alleged neither he nor the original owner, Casa Hipolito S.A. Portugal, had authorized Wintrade to use the marks.
- Wintrade’s prior authority from predecessor Wonder Project & Development Corporation had been cancelled by Casa Hipolito as early as 1993.
- Lo maintained the products sold by Wintrade caused confusion and deception, as the authentic burners were those manufactured by PBMC under Lo’s agency.
- Petitioners, as Wintrade officers, claimed ownership of marks and authority through Casa Hipolito via their predecessor, Wonder.
- They denied authorizing or manufacturing the products bearing the test buy marks and argued the “Made in Portugal” phrases merely described origin of the design, not the product origin.
- Chua, National Hardware’s owner, admitted longtime dealings with Wintrade and lack of knowledge about revocation of Wintrade’s license to use the marks.
- The DOJ and CA found sufficient basis for probable cause, focusing on the public’s potential confusion and petitioners’ admissions.
Legal Issues
- Whether probable cause existed to charge respondents with false designation of origin under Sections 169.1 and 170 of RA 8293.
- The application of Section 169.1 prohibiting use of any false designation likely to cause confusion or deception regarding the origin of goods or services.
- Whether the usage of “Made in Portugal” and “Original Portugal” labels by petitioners on products made in the Philippines was misleading or deceptive.
- The legal effect of the cancellation of authorization by Cas