PAULA RECARO, DOING BUSINESS UNDER THE NAME AND STYLE, “BIG FIVE PRODUCTS”, AND THING ONG, PLAINTIFFS AND APPELLEES, VS. NESTOR EMBISAN, DOING BUSINESS UNDER THE NAME AND STYLE …

In her complaint, filed on April 4, 1958, Paula Recaro, hereafter referred to
as plaintiff, alleged that she is doing business under the registered name and
style of “Big Five Products”; that she is the assignee and owner of the
trade-mark “BIG FIVE 5” which is duly registered with the Philippine Patent
Office as per Registry No. 3281 dated April 29, 1952; that, since May 22, 1952,
she had been using and affixing said trade-mark on the printed labels (a
facsimile of which is appended to the complaint) of her products, namely in
vegetable lard repacked for sale on retail, with which she is identified in the
mind of the public; that defendant Nestor Embisan, doing business under the name
and style “Nel-Coff Products”, is, likewise, engaged in the repacking of
vegetable lard, on which he uses printed labels bearing the trade-mark “Big
Three” (a facsimile of which is, likewise, appended to the complaint) which is
not registered with said Patent Office and is but a reproduction, counterfeit
copy or colorable imitation of plaintiff’s aforementioned registered trade-mark,
to such an extent as is likely to cause confusion or mistake or to deceive
purchasers or others as to the source or origin of such repacked products, in
gross and unauthorized infringement of plaintiff’s certificate of registration;
that, by giving the wrapping of his products the general appearance of the goods
sold by plaintiff, the defendant has influenced purchasers to believe that his
goods are those of the plaintiff and has deceived the public and defrauded the
plaintiff of her legitimate trade and is, therefore, engaged in unfair
competition; that, despite notice given to him, the defendant has refused and
continued to refuse to cease and desist from his aforementioned infringement of
patent and unfair competition; that, as a consequence, plaintiff had been
“compelled to engage the services of counsel in the amount of P1,500”; that
there is no other plain, speedy and adequate remedy in the ordinary course of
law; and that the comission and continuance of the acts complained of would work
irreparable prejudice and injury to the plaintiff. She, accordingly, prayed that
defendant be permanently and perpetually enjoined from using on his products
wrappings containing the printed label “Big Three”, and such devices and words
as to constitute infringement of patent and unfair competition, as well as
sentenced to pay her P1,500 as attorney’s fees. Thing Ong has joined her as
plaintiff, he being her husband.

Upon being summoned, defendant filed an answer stating that he has no
knowledge or information sufficient to form a belief as to the truth of
plaintiff’s allegations concerning her personal circumstances, her alleged
ownership of the “Big Five Products”, and of the trade-mark “Big Five 5”, as
well as of the registration and use thereof by plaintiff. Moreover, defendant
alleged that he had been doing business under the name and style “Nel-Coff
Products”, which had been duly registered with the Bureau of Commerce; that he
“has been using for sometime already on his products printed labels bearing the
trade-mark ‘Nel’s Big 3 Lard’, which cannot be considered a reproduction or
counterfeit copy, much less a colorable imitation of plaintiff’s alleged
trade-mark; that, in adopting said trade-mark (“Nel’s Big 3 Lard”), he had never
intended to cause any confusion or mistake or to deceive purchasers and the
public in general, as to the source or origin of the products concerned; and
that, upon receipt of plaintiff’s notice and to show his good faith, as well as
to avoid any future misunderstanding, he “took immediate steps to substitute, as
he has actually substituted, his trade-mark ‘Nel’s Big 3 Lard’ with that of
‘Marca 3 Lard’ of which fact, the plaintiff was notified. Defendant, likewise,
set up a counterclaim for P5,000, as moral damages, and P3,000, as exemplary or
punitive damages, for the mental shock and moral anxiety he has allegedly
suffered on account of this “false and unfounded suit”, apart from P2,000 as
attorney’s fees and expenses of litigation, to “vindicate his good name and
reputation”.

Soon, thereafter, plaintiff filed a “petition for summary judgment and
dismissal of the complaint”, upon the ground that defendant’s answer was such as
to raise no genuine issue as to any of the material allegations of the
complaint; that, as to its allegations which were denied by defendant for lack
of knowledge or information sufficient to form a belief, plaintiff annexed to
the petition her affidavit of merit, as well as a copy of the deed of assignment
in her favor of the right, title and interest in and to the trade-mark “Big Five
5” and of the certificate of registration thereof with the Philippine Patent
Office; that defendant’s allegation to the effect that he had taken steps to
substitute his present trade-mark “Nel’s Big 3 Lard” with another reading “Marca
3 Lard” to obviate any misunderstanding, implied an admission of the
infringement of plaintiff’s rights; that the only issue thus left for
determination is whether plaintiff’s registered trade-mark “Big Five 5” has been
infringed by defendant’s unregistered trade-mark “Nel’s Big 3 Lard”; that this
issue may be resolved by examining the labels annexed to the complaint; that a
comparison of such labels will show that this suit is not false and unfounded;
and that defendant’s counterclaim states, therefore, no cause of action.

After due hearing, the lower court held that said petition was well founded
and rendered judgment “enjoining the defendant permanently and perpetually from
using wrappings on his products containing the printed labels ‘Big Three’ and
such devices and words as to constitute infringement of patent and unfair
competition; ordering the defendant to pay the plaintiff the sum of P100 for
attorney’s fees; and ordering the dismissal of the counterclaim, without
pronouncement as to costs”.

A reconsideration of said decision having been denied, defendant interposed
the present appeal, which was certified to us by the Court of Appeals, only
issues of law being raised in defendant’s brief, namely, that the trial court
erred: (1) “In rendering summary judgment considering that there are material
issues of fact clearly presented for trial and in issuing a permanent
injunction”; (2) “in denying defendant-appellant’s motion for reconsideration”;
and (3) “in awarding appellee P100 for attorney’s fees and in denying
appellant’s counterclaim for damages”.

We find no merit in the appeal. The affidavit and other documents attached to
plaintiff’s petition for summary judgment show that the trade-mark “Big Five 5”
was duly registered with the Philippine Patent Office since April 29, 1952, for
use in packing or wrapping of Class 47, vegetable lard; that by virtue of an
instrument, dated June 1, 1954, Sy Lin, the original owner of said trade-mark,
had sold, assigned and transferred his right, title and interest thereto and to
the registration thereof, together with the goodwill of the business in
connection therewith, to plaintiff herein; and that said deed of sale,
assignment and transfer in favor of plaintiff had been duly annotated and
registered with the Philippine Patent Office, and acknowledged by the same. Upon
the other hand, defendant has admitted that he is engaged in the repacking of
vegetable lard and that he has been using thereon “for sometime” printed labels
bearing the trade-mark “Nel’s Big 3 Lard”. What is more, defendant does not
claim that the latter is registered. Lastly, a comparison thereof with
plaintiff’s label readily shows such a resemblance in the general features of
both as is likely to deceive the ordinary purchaser, exercising ordinary care,
and induce him to believe that the goods bearing such labels are products of one
and the same enterprise, particularly plaintiff herein, she having been,
evidently, in the business of repacking vegetable lard before defendant
herein.

Hence, there is no genuine issue about the fact that the use of the
trade-mark “Nel’s Big 3” on vegetable lard repacked by the defendant constitutes
an infringement upon plaintiff’s registered trade-mark “Big Five 5”, which is
similarly used on repacked vegetable lard, and the lower court did not err in
granting, by summary judgment, the injunction prayed for by the plaintiff, in
dismissing defendant’s counterclaim, and in refusing to reconsider said
judgment.

Defendant insists, however, that, he having alleged, in his answer, that he
has taken steps to substitute and has actually substituted his trade-mark “Nel’s
Big 3 Lard” with that of “Marca 3 Lard”, the question raised in plaintiff’s
complaint has become moot, and, consequently, the lower court should not have
granted the relief therein prayed for. This contention is untenable. Firstly, it
is based upon an allegation, which has not been established, not even supported
by affidavit. Secondly, the affidavit annexed to plaintiff’s petition for
summary judgment shows that said “Marca 3 Lard” label is still a colorable
imitation of plaintiff’s trade-mark. Thirdly, plaintiff seeks and is entitled to
a permanent injunction, in the absence of which defendant might resume the use
of his former trade-mark “Nel’s Big 3”.

The attorney’s fees awarded to the plaintiff is nominal in nature, the amount
thereof (P100.00) being small and insignificant. Defendant’s objection thereto
is, therefore, unsubstantial. Besides, the services of counsel for the
plaintiff, as set forth in the record, more than justify said award, apart from
the fact that a hearing for the reception of evidence thereon would have only
entitled the plaintiff to a bigger award.

Wherefore, the decision appealed from is hereby affirmed, with the costs of
both instances against defendant-appellant, Nestor Embisan. It is so
ordered.

Bengzon, C.J., Bautista Angelo, Labrador, Barrera, Paredes,
Dizon, De Leon, and Natividad, JJ., concur.