Pages 1 2 Rule 43 Legal Forms

8/18/2019 Pages 1 2 Rule 43 Legal Forms

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CA-G.R. SP NO. !"!#ECISION

nited "tates of :meria. Petitioners ntel Tehnolo$Philippines, n. and ntel ;anufaturin$, n., othsusidiaries of ntel Corporation %olletivel alledpetitioners&, are domesti orporations dul or$ani5ed underexistin$ laws.

. Petitioners are suin$ under "etion 1< of the CorporationCode in relation to "etions 13, 147 and 1)= of thentelletual Propert Code, as well as under :rtiles )is and)septies of the Paris Convention for the Protetion of ndustrial Propert and :rtile 1) of the :$reement on TradeRelated :spets of ntelletual Propert Ri$hts to whih thePhilippines and the nited "tates of :meria are parties.

3. Petitioners have the apait to maintain this suit. The

ountr of whih petitioner ntel Corporation is national anddomiiled, treat, onvention or law $rants similarprivile$e to orporate or >uristi persons in the Philippines.

4. Petitioner ntel Corporation was inorporated in the "tate of 6elaware, nited "tates of :meria under that name on;arh 1, 19


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). Presentl, petitioner ntel has more than ft%=(&susidiaries, andAor aBliates around the world all usin$ thetradename and orporate name ntel.

n the Philippines, its susidiaries, ntel Tehnolo$Philippines, n. and ntel Philippine ;anufaturin$, n.operate and maintain two massive fatories in CaviteProvine and ;anila and a sales oBe in ;a!ati, allemploin$ approximatel six thousand %),(((& ilipinos andare urrentl the ountr?s lar$est Philippine exporters.

Thousand %), (((& ilipinos and are urrentl the

ountr?s lar$est Philippine exporters.

7. Petitioner ntel?s aBliates and susidiaries,

inludin$ ntel Tehnolo$ Philippine n. and ntel Philippines

;anufaturin$, n. en$a$ed in desi$nin$, manufaturin$,

distriutin$ miroproessors and inte$rated iruits and

other omputer- related eletroni produts all use the

tradename and orporate name 'T#/ to denote the

usiness relationship amon$ various aBliates andsusidiaries and to si$nif that the $oods and produts

earin$ that mar! all ome from these assoiated

ompanies.


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Re$. 'o. 0 )=1(1

ssued 0 2ul 3(, 1997

Doods 0 Class 9

Trademar!0 'T#/ '"6#

Re$. 'o. 0 )=(34

ssued 0 2ul 3(, 1997

Doods 0 Class 9

xxx

9. Respondent 'T#/ Communiation Tradin$

Corporation is a domesti orporation or$ani5ed under

existin$ laws with address at Room 4=1, Repuli

"upermar!et Eld$., "anta Cru5, ;anila, where it ma e

served with summons and other proesses. t was onlinorporated on 2ul, 19, 199) under Re$. 'o. :197


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usiness with the evident purpose of ridin$ upon petitioners?

reputation and the popularit of petitioners? trademar!,

tradename, and orporate name 'T#/.

11. Respondent?s use of 'T#/ as part of its

orporate name, usiness name, tradename, or servie mar!

is li!el to mislead teh puli into elievin$ that its usiness

is aBliated with, liensed or under the sponsorship of

petitioners, to the latter?s dama$e and pre>udie. xxx

Petitioner then led its Answer with Grounds to Dismiss,

Counterclaim, and pposition to Preliminary Injunction

denin$ all the material alle$ations in the omplaint. t

averred that althou$h it was inorporated in 199), it was

atuall or$ani5ed in 19untion hearin$s ould

proeed, the "#C transferred the ase to the Re$ional Trial

Court of ;a!ati Cit pursuant to Repuli :t 'o. 9799,

otherwise !nown as the "eurities Re$ulation Code. Eoth

parties then led their Pre- Trial Eriefs.

6urin$ the pre- trial onferene, the parties a$reed that

there is no issue of fat raised in the pleadin$s and the sole

issue to e resolved is whether respondents herein have a

valid ause of ation to prohiit petitioner from usin$ the

word 'T#/ in its orporate name ntel Communiation


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Tradin$ Corporation. The trial ourt noted the manifestation

of the parties that the are in the proess of ne$otiatin$ for

an amiale settlement of the ase and $ave them a period

of up to 2une 3(, ((1 to sumit the Compromise:$reement.

Considerin$ that the parties were unale to enter into a

settlement a$reement, respondents led a ;otion for

2ud$ment on the Pleadin$s andAor ;otion for "ummar

2ud$ment with the trial ourt on 2ul 3, ((1.

n 2une =, ((, instead of resolvin$ respondents?

motion, the trial ourt issued an rder diretin$ the removalof the ase from its do!et of ative ases and the return of

the same to the "#C on the $round that the dispute etween

the parties does not fall under an of the ate$ories

mentioned in "etion = of the Presidential 6eree '. 9(-:

therefore, authorit to resolve the dispute is with the "#C.

Pursuant to said rder, the ler! of ourt transmitted

the reords of the ase to the "#C. the respondents led

efore it two %& r$ent Reiterative ;otions to Resolve thease on the ;erits.

n ;a 13, ((3, the "#C rendered the assailed

Resolution ratioinatin$ thus0

*6ue to the fat that the ntel name was re$istered

as trademar! in 1997 or eond the orporate

re$istration dates of Petitioners and Respondent, we

defer to ma!e an pronounements on the sameeause it does not estalish an prior ri$ht.

Relevant however is the fat that one of the

Petitioners. ntel ;anufaturin$, n., was re$istered in

1974. The rux then is whether or not the term ntel

was alread appropriated in 974, there preludin$

the respondent from re$isterin$ it on a later date. To

answer the rst Guestion, we must onsider the nature

of the term ntel.

:rtile 1< of the Corporation Code states that0

"e. 1


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Commission if the proposed name is idential or

deeptivel or onfusin$l similar to that of an existin$

orporation or to an other name alread proteted

law or is patentl deeptive, onfusin$ or ontrar toexistin$ laws. Hhen a han$e in the orporate name is

approved, the Commission shall issue an amended

ertiate of inorporation under the amended name.

To interpret the fore$oin$ setion of the Corporation

Code we must loo! into the D6#/'#" ' TI# :PPR8:/

TI# CRPR:T# :'6 P:RT'#R"I ':;#" si$ned then"#C Chairman :n$el /. /im>oo on "eptemer 7, 1997

eause this was the existin$ rule durin$ the time the

instant petition was led.

Para$raph C of the Duidelines states that0

The name should not e similar to one alread used

another orporation or partnership. f the name ontains a

word similar to a word alread used as part of the rm nameor stle of a re$istered ompan, the proposed name must

ontain two other words diJerent from the name of the

ompan alread re$istered.

n the instant ase there appears to e a two word

diJerene etween Petitioners and Respondent, there

>ustifin$ the approval of Respondent?s orporate name

durin$ the appliation period.

Iowever, $iven the fat that the trademar! ntel has

een !nown as the predominant mirohip in the earl

nineties to the present, where pratiall ma>orit of all

omputers whether randed or merel lones ontained it

miroproessor, we elieve that the word ntel was alread

ri$htfull appropriated the Petitioners the time the

Respondent re$istered its orporate name.

:rtile )is of the Paris Convention where thePhilippines is a si$nator states that0

K%1& the ountries of the nion underta!e, either

administrativel if their le$islation so permits, or at the

reGuest of an interested part, to refuse or to anel the


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re$istration and prohiit the use of a trademar! whih

onstitutes a reprodution, imitation or translation, liale to

reate onfusion, of a mar! onsidered ompetent

authorit of the ountr of re$istration or use to e well!nown in that ountr as ein$ alread the mar! of a person

entitled to the enets of the present Convention and used

for idential or similar $oods. These provisions shall also

appl when the essential part of the mar! onstitutes a

reprodution of an suh well-!nown mar! or an imitation

liale to reate onfusion therewith.L

urthermore, :rtile < of the same Convention states that0

: trade name shall e proteted in all ountries of the

nion without the oli$ation of lin$ or re$istration, whether

it forms part of the trademar!.

n short, even if the Respondent had re$istered its

orporate name one ear earlier than Petitioners?

re$istration of its trademar! here in the Philippines, the mere

fat that ntel predominantl invaded all of the personal

omputers in the Philippines durin$ that time with its pre-pentium 4


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the reGuest of an interested part, to refuse or to

anel the re$istration and prohiit the use of a

trade mar! whih onstitutes a reprodution,

imitation or translation, liale to reate onfusion,of a mar! onsidered ompetent authorit of

the ountr of re$istration or use to e well !nown

in that ountr as ein$ alread that mar! of a

person entitled to the enets of the present

Convention and used for idential or similar $oods.

These provisions shall appl when the essential

part of the mar! onstitutes e reprodution of an

suh well-!nown mar! or an imitation liale toreate onfusion therewith.?

urthermore :rtile < of the same Convention sates

that0

K: trade name shall e proteted in all

ountries of the nion without the oli$ation of

llin$ or re$istration, whether it forms part of the

trademar!.?n short, even if Respondent had re$istered its

orporate name one ear earlier than Petitioners?

re$istration of its trademar! here in the Philippines, the mere

fat that ntel predominantl invaded all of the personal

omputers in the Philippines durin$ that time with its pre-

Pentium 4


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rand of omputer mirohips there havin$ superior ri$hts

to the said name.

Hherefore, premises onsidered, the petition is deemed

meritorious. The Respondent is here direted to :;#'6 its

orporate name 6#/#T'D the word 'T#/.+

Petitioner then moved for the reonsideration of the

aforeGuoted resolution ut it was suseGuentl denied

"#C in its rder dated "eptemer 3, ((3.

Iene, petitioner led this petition on the followin$

$rounds0

*

:PP#/:'T H:" 6#'#6 PPRT'TM T PR#"#'T T"

PT#'T 6##'"#

:PP#/:'T?" TR:6#;:RN R#DT#R#6 :I#:6 :PP#//##"?

TR:6#;:RN"

' ";/:RTM ' TR:6#':;# R TR:6#;:RN

8

:PP#/:'T " #'TT/#6 T 6:;:D#".+

The petition is ereft of merit.

The and a$ain, it has een held that the ri$ht to appeal

is not a natural ri$ht or part of due proess, ut merel a

statutor privile$e and ma e exerised onl in the manner

and in aordane with the provisions of the law. The part

who see!s to avail of the same must ompl with the

reGuirements of the rules, failin$ in whih the ri$ht to appealis lost.

The ase of Air !rance Philippines "s. #eachon, et. al. is

instructi"e, thus we Guote0


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*Proedural rules settin$ the period for perfetin$

an appeal or lin$ an appellate petition are $enerall

inviolale. t is dotrinall entrenhed that appeal is not a

onstitutional ri$ht ut a mere statutor privile$e. Iene,parties who see! to avail of the privile$e must ompl with

the statutes or rules allowin$ it. The reGuirements for

perfetin$ an appeal within re$lementar period speied in

the law must, as a rule, e stritl followed. "uh

reGuirements are onsidered indispensale interditions

a$ainst needless delas, and are neessar for the orderl

dishar$e of the >udiial usiness. or sure, the perfetion of

an appeal in the manner and within the period set law isnot onl mandator, ut >urisditional as well. ailure to

perfet an appeal renders the appealed form nal and

exeutor.

The Court ma desi$n to veer awa from the

$eneral rule onl it, in its assessment, the appeal on its fat

appears asolutel meritorious. ndeed, the Court has, in a

numer of instanes, relaxed proedural rules in order to

serve and ahieve sustantial >ustie. n the irumstanesotainin$ in this, however, the oasion does not warrant the

desired relaxation. xxx+

"etion 3-=, Rule of the ((( Revised Rules of

Proedure of the "eurities and #xhan$e Commission

provides0

*"#CT' 3-=. Prohiited Pleadin$s. - The followin$

pleadin$s, motions, or petitions shall not e allowed in theases overed these Rules0

a. ;otion to dismiss the omplaintL. ;otion for a ill of partiularsL. ;otion for new trial, or for onsideration of

>ud$ement or order, or for reopenin$ of

trialLd. Petition for relief from >ud$mentL

e. ;otion for extension of time to lepleadin$s, aBdavits or an other paperL

f. ;otion to delare the defendant in defaultL$. ;otion for Postponement and other

motions of similar intentL and


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h. ;otion for leave to amend pleadin$s.+

%#mphasis supplied&

"etion 4, Rule 43 of the 1997 Rules of Civil Proedurewhih $overns appeals from the "#C to this Court, providesthat0

*"#C. 4. Period of appeal.- The appeal shall eta!en within fteen %1=& das from notie of the award,

>ud$ment, nal order or resolution, or from the date of its last puliation if puliation is reGuired law for

its eJetivit, or of the denial of petitioner?s motion fornew trial or reonsideration dul led in aordanewith the $overnin$ law of the ourt or a$en a Guo.nl one motion for reonsideration shall e allowed. *

Eased on the fore$oin$, sine the Rules of Proedure of the "eurities and #xhan$e Commission expliitl prohiitsthe lin$ of a motion for reonsideration of its deision, thepetitioner has fteen %1=& das from notie of the "#C

Resolution within whih to timel le this petition for review.Iowever, the petitioner in this ase instead of diretl lin$a petition for review upon reeipt of the assailed "#CResolution whih was on ;a 9, ((3, led a ;otion forReonsideration of the said resolution. Eein$ a prohiitedpleadin$, the lin$ thereof did not toll the runnin$ of thepresriptive period to le this petition for review. Iene,when petitioner led its $otion for %&tension of 'ime to !ilePetition for (e"iew on 'ovemer 19, ((3 and this petition

for review on 6eemer 3, ((3, the "#C Resolution hadalread eome nal and exeutor, the fteen-dare$lementar period to le a petition for review havin$alread lapsed. This is in aord with the pronounement of the "upreme Court in the ase of #and )an* of thePhilippines "s Ascot +oldings and %uities, Inc. et.al., "i-

/nder "etion < %3&, Rule 1 of the nterim Rules of Proedure Dovernin$ ntra-Corporate Controversies nderR.:. 'o. ud$ment or order, or for re-openin$ of trial are prohiitedpleadin$s in said ase. Iene, the lin$ petitioner of amotion for reonsideration efore the trial ourt did not tollthe re$lementar period to appeal the >ud$ment via apetition for review under Rule 43 of the 1997 Rules of Civil


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Proedure, as amended. :s a onseGuene, the C: has nomore >urisdition to entertain the petition for review whih/and Ean! intended to le efore it, muh less to $rant themotion for extension of time for the lin$ thereof.

The prohiited motion for reonsideration led thepetitioner with the trial ourt did not suspend the period toappeal the RTC?s K2ud$ment? of ;ath 1=, (().ConseGuentl, that K2ud$ment? eame nal and exeutor1=-das thereafter. Hhen petitioner led a motion forextension to le a petition for review in the C: on 2ul =,((), or one hundred twent four %14& das after it

reeived the RTC K>ud$ment?, there was no more period toextend. Diven these undeniale fats, the C: annot efaulted for denin$ petitioner?s motion for extension. Thereis no ause, muh less $rave ause, of disretion to spea! of.

Petitioner insists, however, that the C: ommitted$rave ause of disretion in denin$ its motion for extensioneause the prohiited pleadin$ it led in the trial ourt wasstill suBient to suspend the runnin$ of the re$lementar

period to appeal Kin the interest of su0stantial justice.1 nfortunatel, there is a sarit of law or >urisprudene tosupport petitioner?s novel theor. t is ovious that aprohiited pleadin$ annot toll the runnin$ of the period toappeal sine suh pleadin$ annot e $iven an le$al eJetpreisel eause of its ein$ prohiited.

n "eastian and Cardenas v. ;orales, et al., we held0

nder Rule 1, "etion ) of the 1997 Rules of CivilProedure, lieral onstrution of the Rules is the ontrollin$priniple to eJet sustantial >ustie. This, liti$ations should,as muh as possile, e deided on their merits and not ontehnialities. This does not mean, however, that proeduralrules are to e i$nored or disdained at will to suit theonveniene of a part. Proedural law has its own rationalein the orderl administration of >ustie, namel, to ensure the

eJetive enforement of sustantive ri$hts providin$ for asstem that oviates aritrariness, aprie, despotism, orwhimsiall in the settlement of disputes. Iene, it is amista!e to suppose that sustantive law and proedural laware ontraditor to eah other, or as often su$$ested, thatenforement of proedural rules should never e permitted if


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it would result in pre>udie to the sustantive ri$hts of theliti$ants.

OIene, rules of proedure must e faithfull followedexept onl when for persuasive reasons, the ma erelaxed to relieve a liti$ant for an in>ustie notommensurate with his failure to ompl with the presriedproedureO

Proedural rules settin$ the period for perfetin$ anappeal or lin$ an appellate petition are $enerall inviolale.t is dotrinall entrenhed that appeal is not a onstitutional

ri$ht ut a mere statutor privile$e. Iene, parties who see!to avail of the privile$e must ompl with the statutes orrules allowin$ it. The reGuirements for perfetin$ an appealwithin the re$lementar period speied in the law must, asa rule, e stritl followed. "uh reGuirements are onsideredindispensale interditions a$ainst needless delas, and areneessar for the orderl dishar$e of the >udiial usiness.or sure, the perfetion of an appeal in the manner andwithin the period set law is not onl mandator, ut

>urisditional as well. ailure to perfet an appeal renders the >ud$ment appealed from, nal and exeutor.

He must stress that the are invoation of Kthe interestof sustantial >ustie? is not a ma$i wand that willautomatiall ompel this Court to suspend proedural rules.Proedural rules are not to e elittled or dismissed simpleause their nonoservane ma have resulted in pre>udieto a part?s sustantial ri$hts. /i!e all rules, the are

reGuired to e followed exept onl for the most persuasiveof reasons when the ma e relaxed to relieve a liti$ant of an in>ustie not ommensurate with the de$ree of histhou$htfulness is not omplin$ with the proedurepresried. The Court reiterated that rules of proedure,espeiall those presriin$ the time within whih ertainats must e done, have often een held as asolutelindispensale to the prevention of needless delas and tothe orderl and speed dishar$e of usiness. ndeed, in no

unertain terms, the Court held that the said rules ma erelaxed onl in Kexeptionall meritorious ases.? This ase isnot one of those.+


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:t this point, He ould ver well dismiss outri$ht thisinstant petition and need not disuss the issues raised thepetitioner. 'onetheless, in an eJort to write 2nis to theontrovers, He shall disuss the sustantive issues of thepetition.

The petitioner ontends that it was denied of opportunit to present its potent evidene efore the "#Csine there was no mention of an notie of or atual hearin$therein.

CA-G.R.SP NO. !"!#ECISION

He are not persuaded.

The ase of #iguid "s. Judge Camano, Jr . ( is inisive, thus0

*xxx t must e rememered that theessene of due proess does not neessaril

reGuire a hearin$, ut simpl a reasonaleopportunit or ri$ht to e heard or, as appliedto administrative proeedin$s, an opportunitto explain one?s side.

6ue proess is an administrative ontextdoes not reGuire trial-tpe proeedin$s similarto those in the ourts of >ustie. : formal trial-tpe hearin$ is not at all times and in allinstanes essential to due proess. Hhat is

simpl reGuired is that the part onerned is$iven due notie and is aJorded anopportunit or ri$ht to e heard. t is enou$hthat the parties are $iven a fair andreasonale opportunit to explain theirrespetive sides of the ontrovers and topresent evidene on whih a fair deision ane made. KTo e heard? does not onl meanveral ar$uments in ourtL one ma also e

heard throu$h pleadin$s. Hhere opportunit toe heard, either throu$h oral ar$uments orthrou$h pleadin$s, is aorded, there is nodenial of proedural due proess.


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The standard of due proess that must emet in administrative triunals allows a ertainde$ree of latitude as lon$ as fairness is noti$nored. n other words, it is not le$allo>etionale for ein$ violative of dueproess for an administrative a$en toresolve a ase ased solel on position papers,aBdavits or doumentar evidene sumitted the parties as aBdavits or witnesses mata!e the plae of their diret testimon.Considerin$ that omplaint was aJorded andopportunit to e heard throu$h her pleadin$s,her ri$ht to due proess was not impaired.+

"etion 1-4, Rule of the ((( Revised Rules of Proedure of the "eurities and #xhan$e Commission provides for thesummar nature of "#C proeedin$s, thus0

*"#CT' 1-4, 'ature of Proeedin$s.- "u>et to the reGuirements of due proess, proeedin$s efore theCommission shall e summar in nature not

neessaril adherin$ to or followin$ thetehnial rules of evidene otainin$ in there$ular ourts.

------------------------------( :A;A 'o. RT2-99-1=(9, :u$ust


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He do not a$ree.

n 5hangri6la International +otel $anagement, #td., et.

al. "s. De"elopers Group of Companies, Inc., 1 it was held

that0

*xxx The two onepts of orporate name

or usiness name and trademar! or servie

mar!, are not mutuall exlusive. t is

ommon, indeed li!el, that the name of a

orporation or usiness is also a trade name,

trademar!, or servie mar!. xxx+

n the ase at ar, it is undisputed that *'T#/+ is not

onl as re$istered trademar! of respondents ut it is also a

part of its orporate name.

"etion 1< of the Corporation Code provides that0

*Sec. /. Corporate name. - 'o

orporate name ma e allowed the

"eurities and #xhan$e Commission if the

proposed name is idential or deeptivel or

onfusin$l similar to that of an existin$

orporation or to an other name alread

proteted law or is patentl deeptive,

onfusin$ or ontrar to existin$ laws. Hhen a

han$e in the orporate name is approved, theCommission shall issue an amended ertiate

of inorporation under the amended name.+

n /eum of the Philippines, n. vs. Court of :ppeals,

et. al. the "upreme Court explained the poli ehind the

aforestated prohiition, thus0

*the poli underlin$ the prohiition in "etion 1<

a$ainst the re$istration of a orporate name whih is

*idential or


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1 D.R. 'o. 1=993


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* To interpret the fore$oin$ setionof the Corporation Code we must loo!into the G8ID%#IN%5 IN '+% APP(7A#! '+% C(P(A'% AND PA('N%(5+IPNA$%5 si$ned then "#C Chairman:n$el /. /im>oo on "eptemer 7, 1977eause this was the existin$ ruledurin$ the time the instant petition wasled.

Para$raph of the aforementionedGuidelines states that0

KThe name should not e similar to

one alread used another orporationor partnership. f the name ontains aword similar to a word alread used aspart of the rm name or stle of a

re$istered ompan, the proposedname must ontain two other words,diJerent from the name of theompan alread re$isteredL

n the instant ase there appears toe a two word diJerene etween thePetitioners and Respondent,there >ustifin$ the approval of Respondent?s orporate name durin$the appliation period.

Considerin$ however that as previousl mentioned, theword *'T#/+ is also a trademar! of respondents, He rule andso hold that respondents have the prior ri$ht to use the

same and not the petitioner. This is in view of the fat that'T#/ is a well-!nown mar! internationall and also in thePhilippines proteted :rtile )is of the Paris Conventionto whih our ountr is a si$nator whih provides that0

*:rtile )is

The ountries of the nionunderta!e, either administrativel of their le$islation so permits, or at the

reGuest of an interested part, to refuseor to anel the re$istration and toprohiit the use of a trademar!

whih onstitutes a reprodution,imitation or translation, liale to reateonfusion, of a mar! onsidered theompetent authorit of the ountr of


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re$istration or use to e well-!nown in that ountr as ein$ alreadthe mar! of a person entitled to theenets of the present Convention andused for idential or similar $oods.

These provisions shall also applwhen the essential part of the mar!onstitutes a reprodution of an suhwell-!nown mar! or an imitation liale toreate onfusion therewith.

xxx xxx xxx

:rtile < thereof provides further that0

*:rtile <

: tradename shall e proteted inall ountries of the nion without theoli$ation of lin$ or re$istrationwhether or not it form part of thetrademar!.+

n the ase of 5ehwani Incorporated and4or

)enita1s!rites, Inc. "s. In6N6ut )urger, Inc. The "upremeCourt held that0

*:rtile )is whih $overnsthe protetion of well-!nowntrademar!s, is a self-exeutin$ provisionand does not reGuire le$islativeenatment to $ive it eJet in thememer ountr, t ma e applieddiretl the triunals and oBials of

eah memer ountr the merepuliation or prolamation of theConvention, after its ratiationaordin$ to the puli law of eah stateand the order for its exeution. Theessential reGuirement under this :rtileis that the trademar! to e protetedmust e Kwell-!nown? in the ountrwhere protetion is sou$ht. The power

to determine whether a trademar! iswell-!nown lies in the Kompetentauthorit of the ountr of re$istrationor use.? The ompetent authorit woulde either the re$isterin$ authorit if ithas the power to deide this, or the


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ourts of the ountr in Guestion if theissue omes efore a ourt.

The Guestion of whether or not

respondent?s trademar!s are onsideredKwell-!nown? is fatual in nature,involvin$ as it does the appreiation of evidene addued efore the E/:-P.

The settled rule is that fatual ndin$sof Guasi->udiial a$enies, li!e the P,are $enerall aorded not onl respet,ut, at times, even nalit if suhndin$s are supported sustantial

evidene.+Eased on the fore$oin$, we $ive due respet to the

fatual ndin$s of the "#C that indeed 'T#/ is a well-!nownmar! even efore it was re$istered as trademar! in ourountr and efore the petitioner appropriated the same,havin$ predominantl invaded all of the personal omputersin the Philippines durin$ the earl nineties to the presentwith its pre-Pentium 4


23/27

The ase of Philips #xport E. 8. vs. Court of :ppeals is

inisive, we Guote0

*The seond reGuisite no less exists

in this ase. n determinin$ the

existene of onfusin$ similarit in

orporate names, the test is whether the

similarit is suh as to mislead a person

usin$ ordinar are and disrimination.

n so doin$, the Court must loo! to the

reord as well as the names themselves.

xx Hhile the orporate names of

Petitioners and respondent are not

idential, a readin$ of Petitioners and

respondents are not idential, a readin$

of Petitioner?s orporate names, to wit0

KPI/P" #PRT E.8., PI/P"

#/#CTRC:/ /:;P", 'C. and PI/P"

'6"TR:/ 6#8#/P;#'T 'C.,

inevital leads one to onlude that

KPI/P"? is, indeed the dominant wordin that all the ompanies aBliated or

assoiated with the prinipal

orporation, P#E8, are !nown in the

Philippines and aroad as the PI/P"

Droup of Companies.

Respondents maintain, however thatPetitioners did not present an iota of proof of

atual onfusion or deeption or showed an

li!elihood of onfusion. t is settled, however,

that proof of atual onfusion need not e

shown. t suBes that onfusion is proal

or li!el to our xxx.+

n the same vein, a readin$ of respondent?s orporate

names, to wit0 'T#/ CRPR:T', 'T#/ T#CI'/DM

Philippines, and 'T#/ Philippines ;:':CTR'D, 'C.

leads one to onlude that *'T#/+ is the dominant word

therein. The use of 'T#/ in the orporate name of the


24/27

petitioner would li!el mislead a person usin$ ordinar are

and disrimination that the $oods emanatin$ from the latter

are owned the former inasmuh as respondent?s

tradename andAor trademar! 'T#/ is well-!nown not onl inthe Philippines ut internationall as well.

n Converse Ruer Corporation vs. niversal Ruer

Produts, n. it was held that0

*:nother fator wh respondent?s

appliation should e denied is the

onfusion$ similarit etween its trademar!

K'8#R":/ C'8#R"# :'6 6#8C#? andpetitioner?s orporate name andAor it

trademar!s KCICN T:M/R? and K:// "T:R

6#8C#? whih ould onfuse the purhasin$

pui to the pre>udie of petitioner.

xx xxx xxx

The similarit in the $eneral appearaneof respondent?s trademar! and that of

petitioner would evidentl reate a li!elihood

of onfusion amon$ the purhasin$ puli.

$ut e0en assu1in2 a32uen4o) that the

t3a4e1a35 sou2ht to be 3e2iste3e4 b6

3espon4ent is 4istincti0el6 4issi1ila3

f3o1 those of the petitione3) the

li5elihoo4 of confusion 7oul4 stillsubsists) not on the pu3chase38s

pe3ception of the 2oo4s but on the

o3i2ins the3eof. $6 app3op3iatin2 the

7o34 9CON(ERSE8. Respon4ent8s

p3o4ucts a3e li5el6 to be 1ista5en as

ha0in2 been p3o4uce4 b6 petitione3.

9The 3is5 of 4a1a2e is not li1ite4 to a

possible confusion of 2oo4s but alsoinclu4es confusion of 3eputation if the

public coul4 3easonabl6 assu1e that the

2oo4s of the pa3ties o3i2inate4 f3o1 the

sa1e sou3ce.?+


25/27

The same holds true in the ase at ar. #ven assumin$

that the orporate names of oth parties are dissimilar,

appropriatin$ the wor! *'T#/+ petitioner?s produts will

li!el to e pereived the onsumers as havin$ eenprodued the respondents to e.

:s to the alle$ation of petitioner that no onfusion will

arise in the mar!et onsiderin$ that the ontendin$

ompanies are en$a$ed in diJerent usinesses, we nd

redene in the rulin$ of the "#C with re$ard thereto whih

state that0 *n para$raph 11 to 13 of the ;R, respondent

ar$ues that there is no similarit etween the parties, no

infrin$ement, no deeption and no mar!et onfusion.

Contrar to Respondent?s assertion that there is no similarit

etween mirohips and omputer produts to the repair of

telephones, interom and alarm sstems , this Commission

nds that in a modern world of inte$rated eletroni

produts where a phone is a amera, whih in turn is

ontrolled mirohips, it is ever hard to distin$uish the

diJerene.+

urthermore, assumin$ ar$uendo that the two

usinesses are not similar, in ;6onald?s Corporation vs.

/.C. Ei$ ;a! Eur$er n., the "upreme Court enuniated the

followin$ priniple, vi50

*xxx The re$istered trademar! owner ma

use his mar! on the same or similar produts, in

diJerent se$ments of the mar!et, and at diJerent

prie levels dependin$ on variations of theproduts for spei se$ments of the mar!et. The

Court has reo$ni5ed that the re$istered

trademar! owner en>os protetion in produt and

mar!et areas that are the normal potential

expansion of the usiness. Thus, the Court has

delared0

;odern law reo$ni5ed that the

protetion to whih the owner of

trademar! is entitled is not limited to

$uardin$ his $ood s or usiness from

atual mar!et ompetition with idential

or similar produts of the parties, ut


26/27

extends to all ases in whih the use

a >unior appropriator of a trademar! or

trade-name is li5el6 to lea4 to a

confusion of sou3ce) as 7he3ep3ospecti0e pu3chase3s 7oul4 be

1islea4 into thin5in2 that the

co1plainin2 pa3t6 has e:ten4e4 his

business into the ;el4 xxx or is in an

wa connected with the acti"ities of the

infringer, or when it forestalls the

normal potential e&pansion of his

0usiness &&&9 :%mphasis supplied.;

Considerin$ that respondents are en$a$ed in theusiness of manufature and sale of omputer produts, itnot hi$hl unli!el that it an also in the future, deide toventure into the telephone industr. Iene, the use of therespondent of 'T#/ in its telephone repair, interom andalarm sstem usiness will forestall the normal potentialexpansion of the usiness of respondents.

Conversel, it it li!ewise not unli!el that the petitionerwill eventuall en$a$e in the usiness involvin$ omputerswhih is the line of usiness of respondents. n its :rtile of norporation, the petitioner?s Primar Purpose is as follows0

*To en$a$e in the sale, installation,repair and maintenane of telephone units,alarm-li$ht-F-sound, interom and other

ommuniation produts and servies. /ateron, to import or produe and export thesame.+

Diven respondent?s aforeGuoted primar purpose,nothin$ ould prevent it from dealin$ in the same line of usiness of the respondents. Therefore, it is inument uponthe "#C, in !eepin$ with its dut to protet the $oodwill andestalished reputation of the respondents, to diret thepetitioner to amend its orporate name deletin$ the word'T#/ therein.

HI#R#R#, the instant petition is here 6";""#6for la! of merit.

" R6#R#6.


27/27

RAMON M. $ATO) *R.

:ssoiate 2ustie

H# C'CR0

REME#IOS SALA&AR 'ERNAN#OAssociate *ustice

ROSALIN#A ASUNCION-(ICENTEAssociate *ustice

C # R T C : T '

Pursuant to :rtile 8, "etion 13 of the Constitution, itis here ertied that the onlusion in the aove deisionwere reahed in onsultation efore the ase was assi$nedto the writer of the opinion of the Court.

R#;#6" :. ":/:Q:R-#R':'6 :ssoiate 2ustie

Chairman, ifth 6ivision

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