Wednesday, June 21, 2017

Case Digest: Philip Morris v. Court of Appeals and Fortune Tobacco corporation

G.R. No. 91332 July 16, 1993

PHILIP MORRIS, INC., BENSON & HEDGES (CANADA), INC., AND FABRIQUES OF TABAC REUNIES, S.A.,petitioners 
vs.
THE COURT OF APPEALS AND FORTUNE TOBACCO CORPORATION


Philip Morris v. Court of Appeals and Fortune Tobacco corporation 
[GR 91332. July 16, 1993]


FACTS:

Respondent contends that petitioner was not in danger of sustaining irreparable damage by the usage of the former of the product name “MARK”, same as that of petitioner’s product, since petitioner was not doing business in the Philippines.

RULING:


Court ruled that petitioner, although not doing business in the Philippines, has the legal right to sue for infringement anyone who uses their duly registered mark. Sec 2 of RA 166 provides that foreign corporations and corporations domiciled in a foreign country are not disabled from bringing suit in Philippine courts to protect their rights as holders of trademarks registered in the Philippines. It was further reinforced by the Paris convention which affords foreign signatories to the said treaty the advantages and protections which Philippine law grants to Philippine nationals. There is no legal requirement that the foreign registrant itself manufacture and sell its products here. All the statute requires is the use in trade and commerce in the Philippines. 

The trademark infringement by a local company may, for one thing, affect the volume of importation into the Philippines of cigarettes bearing petitioners' trademarks by independent or third party traders. The Court was led to believe there was a prima facie basis for holding, as the Patent Office had held and as the Court of Appeals did originally hold, that private respondent's "MARK" infringes upon petitioners' registered trademarks in view of the fact that out of all the words in the English language, respondents chose the word "mark" to refer to its cigarettes. 

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