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.
