Case Summary (G.R. No. 183063)
Background Facts
Natrapharm, Inc., a Filipino pharmaceutical company, holds the registered trademark "ZYNAPSE," associated with CITICOLINE, a medicine intended for heart and stroke patients, which was granted on September 24, 2007. The trademark is protected for a duration of ten years. The company complied with local regulatory requirements to manufacture and sell its products. Conversely, Zuneca Pharmaceutical has offered a different medication—CARBAMAZEPINE, indicated for epilepsy—branded as "ZYNAPS," which has been sold since 2003 but is not officially registered as a trademark. The similar pronunciations of "ZYNAPSE" and "ZYNAPS" sparked the trademark infringement dispute.
Cease and Desist Demand
Natrapharm's grievance escalated when they issued a cease-and-desist letter to Zuneca on October 30, 2007, demanding cessation of use of the "ZYNAPS" trademark due to the alleged confusion it creates with "ZYNAPSE." The letter highlighted the dangers related to medicine switching, especially concerning the severe side effects associated with CARBAMAZEPINE. Zuneca resisted these claims, asserting prior use and registration of their product with the Bureau of Food and Drugs.
Legal Proceedings Initiated
On November 29, 2007, Natrapharm filed a complaint for trademark infringement, seeking a temporary restraining order (TRO) and/or a writ of preliminary injunction based on the exclusive rights conferred by their registered trademark under the Intellectual Property Code of the Philippines (R.A. No. 8293). Natrapharm's argument emphasized the prima facie validity of its trademark registration and previous jurisprudence concerning trademark rights.
Regional Trial Court’s Initial Rulings
The Regional Trial Court (RTC) issued orders on December 21, 2007, and March 12, 2008, denying Natrapharm's applications for a TRO and a preliminary injunction. The RTC noted that although Natrapharm had a registered trademark, Zuneca’s earlier actual use of "ZYNAPS" as stipulated by Section 159 of the Intellectual Property Code imposed limitations on Natrapharm's rights, suggesting that the unregistered use by Zuneca could preempt the enforcement of the registered mark.
Court of Appeals Review
Challenging the RTC’s decisions, Natrapharm filed a petition for certiorari before the Court of Appeals (CA), which led to a complex back-and-forth of resolutions. Initially, the CA rejected Natrapharm's petitions for TRO and preliminary injunction, citing insufficient grounds. However, that position changed in a ruling issued on April 18, 2011, when the CA granted a permanent injunction in favor of Natrapharm, effectively reversing the RTC's earlier rulings and substantiating Natrapharm's claims of exclusive use rights based on their trademark registration.
Subsequent RTC Decisions
On December 2, 2011, the RTC issued a decision on the merits, holding Zuneca liable for trademark infringement and imposing penalties including monetary damages and a permanent injunction against the use of the "ZYNAPS" mark, effectively confirming the allegations first raised by Natrapharm.
Current Legal Issues
In the subsequent legal proceedings, two main issues emerged: (1) whether the RTC's decision rendered the pending matters moot and academic; and (2) whether the CA had the authority to issue a permanent injunction within the context of a petition for certiorari concerning the d
...continue readingCase Syllabus (G.R. No. 183063)
Case Overview
- Citation: 773 Phil. 60
- Division: Third Division
- G.R. No.: 197802
- Date: November 11, 2015
- Parties:
- Petitioners: Zuneca Pharmaceutical, Akram Arain, and/or Venus Arain, M.D. dba Zuneca Pharmaceutical
- Respondent: Natrapharm, Inc.
Procedural History
- This case arises from a petition for review under Rule 45 of the 1997 Rules of Civil Procedure, as amended.
- The petition challenges the April 18, 2011 Decision and July 21, 2011 Resolution of the Court of Appeals (CA) in CA-G.R. SP No. 103333, which granted a permanent injunction in favor of Natrapharm, Inc. against Zuneca Pharmaceutical.
Facts of the Case
Respondent's Business:
- Natrapharm, Inc. is a Filipino pharmaceutical company manufacturing and selling "CITICOLINE," used for heart and stroke patients.
- The product is marketed under the registered trademark "ZYNAPSE," with trademark registration obtained on September 24, 2007, valid for 10 years.
- Natrapharm holds the necessary permits from the Bureau of Food and Drugs (BFAD) for its product.
Petitioners' Business:
- Petitioners began selling "CARBAMAZEPINE," an anti-convulsant for epilepsy, under the brand name "ZYNAPS" since 2001, although the trademark is not registered.
- "ZYNAPS" is pronounced identically to "ZYNAPSE."
Cease-and-Desist Letter:
- On October 30, 2007, Natrapharm issued a cease-and-desist letter to the petitioners, demanding they stop using "ZYNAPS" due to the confusing similarity with "ZYNAPSE."
Legal Action:
- Following petitioners’