gr 115758

7/18/2019 Gr 115758

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1

Republic of the PhilippinesSUPREME COURT

Manila

SECOND DIVISION

G.R. No. 115758 March 19, 2002

ELIDAD C. KO, doing business under the name and style of KEC COSMETICS LA!ORATOR" petitioner!s"ON. COURT O# APPEALS, SUMMER$ILLE GENERAL MERCANDISING a%& COMPAN", and ANG TIAM CA", respondents"

DE LEON, 'R., J.:

#efore us is a petition for re!ie$ on certiorari of the Decision% dated May &' %(() of the Court of *ppeals setting aside and declaringas null and !oid the Orders& dated +ebruary %, %((& and March %( %((& of the Regional -rial Court #ranch (, of .ue/on Citygranting the issuance of a $rit of preliminary in0unction"

-he facts of the case are as follo$s1

On December &, %((% petitioner Elidad C" 2ho filed a complaint for in0unction and damages $ith a prayer for the issuance of a $rit ofpreliminary in0unction doc3eted as Ci!il Case No" .4(%4%,(&5 against the respondents Summer!ille 6eneral Merchandising andCompany 7Summer!ille for bre!ity8 and *ng -iam Chay"

-he petitioner9s complaint alleges that petitioner doing business under the name and style of 2EC Cosmetics :aboratory is theregistered o$ner of the copyrights Chin Chun Su and Oval Facial Cream Container/Case as sho$n by Certificates of CopyrightRegistration No" ,4%);< and No" ,4)5=<> that she also has patent rights onChin Chun Su & Device and Chin Chun Su for medicatedcream after purchasing the same from .uintin Cheng the registered o$ner thereof in the Supplemental Register of the PhilippinePatent Office on +ebruary = %(<, under Registration Certificate No" ';&(> that respondent Summer!ille ad!ertised and sold petitioner9scream products under the brand name Chin Chun Su in similar containers that petitioner uses thereby misleading the public andresulting in the decline in the petitioner9s business sales and income> and that the respondents should be en0oined from allegedlyinfringing on the copyrights and patents of the petitioner"

-he respondents on the other hand alleged as their defense that Summer!ille is the e?clusi!e and authori/ed importer re4pac3er anddistributor of Chin Chun Su products manufactured by Shun @i +actory of -ai$an> that the said -ai$anese manufacturing companyauthori/ed Summer!ille to register its trade name Chin Chun Su Medicated Cream $ith the Philippine Patent Office and otherappropriate go!ernmental agencies> that 2EC Cosmetics :aboratory of the petitioner obtained the copyrights through misrepresentationand falsification> and that the authority of .uintin Cheng assignee of the patent registration certificate to distribute and mar3et ChinChun Su products in the Philippines had already been terminated by the said -ai$anese Manufacturing Company"

*fter due hearing on the application for preliminary in0unction the trial court granted the same in an Order dated +ebruary %, %((& thedispositi!e portion of $hich reads1

*CCORDIN6:@ the application of plaintiff Elidad C" 2ho doing business under the style of 2EC Cosmetic :aboratory forpreliminary in0unction is hereby granted" ConseAuentially plaintiff is reAuired to file $ith the Court a bond e?ecuted todefendants in the amount of fi!e hundred thousand pesos 7P;,,,,,",,8 to the effect that plaintiff $ill pay to defendants alldamages $hich defendants may sustain by reason of the in0unction if the Court should finally decide that plaintiff is not entitled

thereto"

SO ORDERED")

-he respondents mo!ed for reconsideration but their motion for reconsideration $as denied by the trial court in an Order dated March%( %((&"'

On *pril &' %((& the respondents filed a petition for certiorari $ith the Court of *ppeals doc3eted as C*46"R" SP No" &=<,) prayingfor the nullification of the said $rit of preliminary in0unction issued by the trial court" *fter the respondents filed their reply and almost amonth after petitioner submitted her comment or on *ugust %' %((& the latter mo!ed to dismiss the petition for !iolation of SupremeCourt Circular No" &<4(% a circular prohibiting forum shopping" *ccording to the petitioner the respondents did not state the doc3etnumber of the ci!il case in the caption of their petition and more significantly they did not include therein a certificate of non4forumshopping" -he respondents opposed the petition and submitted to the appellate court a certificate of non4forum shopping for theirpetition"

On May &' %(() the appellate court rendered a Decision in C*46"R" SP No" &=<,) ruling in fa!or of the respondents the dispositi!eportion of $hich reads1

BERE+ORE the petition is hereby gi!en due course and the orders of respondent court dated +ebruary %, %((& andMarch %( %((& granting the $rit of preliminary in0unction and denying petitioners9 motion for reconsideration are hereby setaside and declared null and !oid" Respondent court is directed to forth$ith proceed $ith the trial of Ci!il Case No" .4(%4%,(&5and resol!e the issue raised by the parties on the merits"

SO ORDERED";

7/18/2019 Gr 115758


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In granting the petition the appellate court ruled that1

-he registration of the trademar3 or brandname Chin Chun Su by 2EC $ith the supplemental register of the #ureau ofPatents -rademar3s and -echnology -ransfer cannot be eAuated $ith registration in the principal register $hich is dulyprotected by the -rademar3 :a$"1âwphi1.nêt

??? ??? ???

*s ratiocinated in :a Chemise :acoste S"S" !s" +ernande/ %&( SCR* )=) )()1

Registration in the Supplemental Register therefore ser!es as notice that the registrant is using or has appropriatedthe trademar3" #y the !ery fact that the trademar3 cannot as yet be on guard and there are certain defects someobstacles $hich the use must still o!ercome before he can claim legal o$nership of the mar3 or as3 the courts to!indicate his claims of an e?clusi!e right to the use of the same" It $ould be decepti!e for a party $ith nothing morethan a registration in the Supplemental Register to posture before courts of 0ustice as if the registration is in thePrincipal Register"

-he reliance of the pri!ate respondent on the last sentence of the Patent office action on application Serial No" ),(;'that 9registrants is presumed to be the o$ner of the mar3 until after the registration is declared cancelled9 is thereforemisplaced and grounded on sha3y foundation" -he supposed presumption not only runs counter to the preceptembodied in Rule %&' of the Re!ised Rules of Practice before the Philippine Patent Office in -rademar3 Cases but

considering all the facts !entilated before us in the four interrelated petitions in!ol!ing the petitioner and therespondent it is de!oid of factual basis" *s e!en in cases $here presumption and precept may factually bereconciled $e ha!e held that the presumption is rebuttable not conclusi!e 7People !" :im oa 6"R" No" :4%,5%&May ), %(;< nreported8" One may be declared an unfair competitor e!en if his competing trademar3 is registered7Par3e Da!is F Co" !" 2iu +oo F Co" et al" 5, Phil (&<> :a @ebana Co" !" chua Seco F Co" %' Phil ;)'8"5

-he petitioner filed a motion for reconsideration" -his she follo$ed $ith se!eral motions to declare respondents in contempt of court forpublishing ad!ertisements notifying the public of the promulgation of the assailed decision of the appellate court and stating thatgenuine Chin Chun Su products could be obtained only from Summer!ille 6eneral Merchandising and Co"

In the meantime the trial court $ent on to hear petitioner9s complaint for final in0unction and damages" On October && %(() the trialcourt rendered a Decision= barring the petitioner from using the trademar3 Chin Chun Su and upholding the right of the respondents touse the same but recogni/ing the copyright of the petitioner o!er the o!al shaped container of her beauty cream" -he trial court did nota$ard damages and costs to any of the parties but to their respecti!e counsels $ere a$arded Se!enty4+i!e -housand Pesos

7P=;,,,",,8 each as attorney9s fees" -he petitioner duly appealed the said decision to the Court of *ppeals"

On Gune ) %((' the Court of *ppeals promulgated a Resolution< denying the petitioner9s motions for reconsideration and for contemptof court in C*46"R" SP No" &=<,)"

ence this petition anchored on the follo$ing assignment of errors1

I

RESPONDEN- ONOR*#:E COR- O+ *PPE*:S COMMI--ED 6R*VE *#SE O+ DISCRE-ION *MON-IN6 -O:*C2 O+ GRISDIC-ION IN +*I:IN6 -O R:E ON PE-I-IONER9S MO-ION -O DISMISS"

II

RESPONDEN- ONOR*#:E COR- O+ *PPE*:S COMMI--ED 6R*VE *#SE O+ DISCRE-ION *MON-IN6 -O:*C2 O+ GRISDIC-ION IN RE+SIN6 -O PROMP-:@ RESO:VE PE-I-IONER9S MO-ION +OR RECONSIDER*-ION"

III

IN DE:*@IN6 -E RESO:-ION O+ PE-I-IONER9S MO-ION +OR RECONSIDER*-ION -E ONOR*#:E COR- O+ *PPE*:S DENIED PE-I-IONER9S RI6- -O SEE2 -IME:@ *PPE::*-E RE:IE+ *ND VIO:*-ED PE-I-IONER9S RI6--O DE PROCESS"

IV

RESPONDEN- ONOR*#:E COR- O+ *PPE*:S COMMI--ED 6R*VE *#SE O+ DISCRE-ION *MON-IN6 -O

:*C2 O+ GRISDIC-ION IN +*I:IN6 -O CI-E -E PRIV*-E RESPONDEN-S IN CON-EMP-"

(

-he petitioner faults the appellate court for not dismissing the petition on the ground of !iolation of Supreme Court Circular No" &<4(%" *lso the petitioner contends that the appellate court !iolated Section 5 Rule ( of the Re!ised Internal Rules of the Court of *ppeals$hen it failed to rule on her motion for reconsideration $ithin ninety 7(,8 days from the time it is submitted for resolution" -he appellatecourt ruled only after the lapse of three hundred fifty4four 7);'8 days or on Gune ) %(('" In delaying the resolution thereof theappellate court denied the petitioner9s right to see3 the timely appellate relief" +inally petitioner describes as arbitrary the denial of hermotions for contempt of court against the respondents"

Be rule in fa!or of the respondents"

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Pursuant to Section % Rule ;< of the Re!ised Rules of Ci!il Procedure one of the grounds for the issuance of a $rit of preliminaryin0unction is a proof that the applicant is entitled to the relief demanded and the $hole or part of such relief consists in restraining thecommission or continuance of the act or acts complained of either for a limited period or perpetually" -hus a preliminary in0unctionorder may be granted only $hen the application for the issuance of the same sho$s facts entitling the applicant to the reliefdemanded"%, -his is the reason $hy $e ha!e ruled that it must be sho$n that the in!asion of the right sought to be protected is materialand substantial that the right of complainant is clear and unmista3able and that there is an urgent and paramount necessity for the$rit to pre!ent serious damage"%%

In the case at bar the petitioner applied for the issuance of a preliminary in0uncti!e order on the ground that she is entitled to the use ofthe trademar3 on Chin Chun Su and its container based on her copyright and patent o!er the same" Be first find it appropriate to ruleon $hether the copyright and patent o!er the name and container of a beauty cream product $ould entitle the registrant to the use ando$nership o!er the same to the e?clusion of others"

-rademar3 copyright and patents are different intellectual property rights that cannot be interchanged $ith one another" * trademar3 isany !isible sign capable of distinguishing the goods 7trademar38 or ser!ices 7ser!ice mar38 of an enterprise and shall include a stampedor mar3ed container of goods"%& In relation thereto a trade name means the name or designation identifying or distinguishing anenterprise"%) Mean$hile the scope of a copyright is confined to literary and artistic $or3s $hich are original intellectual creations in theliterary and artistic domain protected from the moment of their creation"%' Patentable in!entions on the other hand refer to anytechnical solution of a problem in any field of human acti!ity $hich is ne$ in!ol!es an in!enti!e step and is industrially applicable"%;

Petitioner has no right to support her claim for the e?clusi!e use of the sub0ect trade name and its container" -he name and container of a beauty cream product are proper sub0ects of a trademar3 inasmuch as the same falls sAuarely $ithin its definition" In order to be

entitled to e?clusi!ely use the same in the sale of the beauty cream product the user must sufficiently pro!e that she registered or usedit before anybody else did" -he petitioner9s copyright and patent registration of the name and container $ould not guarantee her theright to the e?clusi!e use of the same for the reason that they are not appropriate sub0ects of the said intellectual rights" ConseAuentlya preliminary in0unction order cannot be issued for the reason that the petitioner has not pro!en that she has a clear right o!er the saidname and container to the e?clusion of others not ha!ing pro!en that she has registered a trademar3 thereto or used the same beforeanyone did"

Be cannot li3e$ise o!erloo3 the decision of the trial court in the case for final in0unction and damages" -he dispositi!e portion of saiddecision held that the petitioner does not ha!e trademar3 rights on the name and container of the beauty cream product" -he saiddecision on the merits of the trial court rendered the issuance of the $rit of a preliminary in0unction moot and academic not$ithstandingthe fact that the same has been appealed in the Court of *ppeals" -his is supported by our ruling in La Vista Association, Inc. v.Court of Appeals%5 to $it1

Considering that preliminar in!unction is a provisional remed which ma "e granted at an time a#ter the commencement o#

the action and "e#ore !udgment when it is esta"lished that the plainti## is entitled to the relie# demanded and onl when hiscomplaint shows #acts entitling such relie#s $$$ and it appearing that the trial court had alread granted the issuance o# a #inalin!unction in #avor o# petitioner in its decision rendered a#ter trial on the merits $$$ the Court resolved to Dismiss the instant

petition having "een rendered moot and academic. %n in!unction issued " the trial court a#ter it has alread made a clear pronouncement as to the plainti##s right thereto' that is' a#ter the same issue has "een decided on the merits' the trial courthaving appreciated the evidence presented' is proper' notwithstanding the #act that the decision rendered is not et #inal ???"#eing an ancillary remedy the proceedings for preliminary in0unction cannot stand separately or proceed independently of thedecision rendered on the merit of the main case for in0unction" -he merit of the main case ha!ing been already determined infa!or of the applicant the preliminary determination of its non4e?istence ceases to ha!e any force and effect" 7italics supplied8

(a )ista categorically pronounced that the issuance of a final in0unction renders any Auestion on the preliminary in0uncti!e order mootand academic despite the fact that the decision granting a final in0unction is pending appeal" Con!ersely a decision denying theapplicant4plaintiff9s right to a final in0unction although appealed renders moot and academic any ob0ection to the prior dissolution of a$rit of preliminary in0unction"

-he petitioner argues that the appellate court erred in not dismissing the petition for certiorari for non4compliance $ith the rule on forumshopping" Be disagree" +irst the petitioner improperly raised the technical ob0ection of non4compliance $ith Supreme Court CircularNo" &<4(% by filing a motion to dismiss the petition for certiorari filed in the appellate court" -his is prohibited by Section 5 Rule 55 ofthe Re!ised Rules of Ci!il Procedure $hich pro!ides that 7I8n petitions for certiorari before the Supreme Court and the Court of

*ppeals the pro!isions of Section & Rule ;5 shall be obser!ed" #efore gi!ing due course thereto the court may reAuire therespondents to file their comment to and not a motion to dismiss the petition ??? 7italics supplied8" Secondly the issue $as raised onemonth after petitioner had filed her ans$erHcomment and after pri!ate respondent had replied thereto" nder Section % Rule %5 of theRe!ised Rules of Ci!il Procedure a motion to dismiss shall be filed $ithin the time for but before filing the ans$er to the complaint orpleading asserting a claim" She therefore could no longer submit a motion to dismiss nor raise defenses and ob0ections not included inthe ans$erHcomment she had earlier tendered" -hirdly substantial 0ustice and eAuity reAuire this Court not to re!i!e a dissol!ed $rit ofin0unction in fa!or of a party $ithout any legal right thereto merely on a technical infirmity" -he granting of an in0uncti!e $rit based on atechnical ground rather than compliance $ith the reAuisites for the issuance of the same is contrary to the primary ob0ecti!e of legalprocedure $hich is to ser!e as a means to dispense 0ustice to the deser!ing party"

-he petitioner li3e$ise contends that the appellate court unduly delayed the resolution of her motion for reconsideration" #ut $e findthat petitioner contributed to this delay $hen she filed successi!e contentious motions in the same proceeding the last of $hich $as onOctober &= %(() necessitating counter4manifestations from pri!ate respondents $ith the last one being filed on No!ember ( %(()"Nonetheless it is $ell4settled that non4obser!ance of the period for deciding cases or their incidents does not render such 0udgmentsineffecti!e or !oid"%= Bith respect to the purported damages she suffered due to the alleged delay in resol!ing her motion forreconsideration $e find that the said issue has li3e$ise been rendered moot and academic by our ruling that she has no right o!er thetrademar3 and conseAuently to the issuance of a $rit of preliminary in0unction"1âwphi1.nêt

+inally $e rule that the Court of *ppeals correctly denied the petitioner9s se!eral motions for contempt of court" -here is nothingcontemptuous about the ad!ertisements complained of $hich as regards the proceedings in C*46"R" SP No" &=<,) merely announcedin plain and straightfor$ard language the promulgation of the assailed Decision of the appellate court" Moreo!er pursuant to Section 'of Rule )( of the Re!ised Rules of Ci!il Procedure the said decision nullifying the in0uncti!e $rit $as immediately e?ecutory"

7/18/2019 Gr 115758


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BERE+ORE the petition is DENIED" -he Decision and Resolution of the Court of *ppeals dated May &' %(() and Gune ) %(('respecti!ely are hereby A##IRMED" Bith costs against the petitioner"

SO ORDERED"

*ellosillo' Mendo+a' ,uisum"ing' and *uena' --.' concur"

#oo(%o()

% Penned by *ssociate Gustice Ricardo P" 6al!e/ and concurred in by *ssociate Gustices Manuel M" errera and *saali S"Isnani Ninth Di!ision> Rollo pp" )54',"

& Penned by Gudge *braham P" Vera> C* Rollo pp" %&4%<"

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5 Rollo pp" )<4)("

= Rollo pp" %( &'%"

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%, Section ' Rule ;< Re!ised Rules of Ci!il Procedure"

%% Sy !" Court of *ppeals )%) SCR* )&< 7%(((8"

%& Section %&%"% Republic *ct No" <&()"

%) Section %&%") Republic *ct" No" <&()"

%' Section %=& Republic *ct No" <&()"

%; Section &% Republic *ct No" <&()"

%5 &=< SCR* '(< ;,5 Auoting Solid omes Inc" !" :* Vista 6"R" No" =%%;, dated *pril &, %(<< 7unpublished8"

%= De Roma !" Court of *ppeals %;& SCR* &,; &,( 7%(<=8"

gr 115758

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