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CHESTER UYCO v. VICENTE LO

FACTS:

The disputed marks in this case are the "HIPOLITO & SEA HORSE & TRIANGULAR DEVICE," "FAMA," and other related marks, service marks, and trade names of Casa Hipolito S.A. Portugal appearing in kerosene burners. Respondent Vicente Lo and Philippine Burners Manufacturing Corporation (PBMC) filed a complaint against the officers of Wintrade Industrial Sales Corporation (Wintrade), including petitioners Chester Uyco, Winston Uychiyong, and Cherry Uyco-Ong, and of National Hardware, including Mario Sy Chua, for violation of Section 169.1, in relation to Section 170, of RA 8293.

Lo claimed that Gasirel, the owner of the disputed marks, executed a deed of assignment transferring these marks to Lo, to be used in all countries except Europe and America. Lo purchased from National Hardware kerosene burners with the subject marks and designations "Made in Portugal" and "Original Portugal" in the wrappers, which were manufactured by Wintrade. Lo claimed that he had not authorized Wintrade to use these marks, and that Casa Hipolito S.A. Portugal had already revoked the authority given to Wintrade's predecessor-in-interest, Wonder Project & Development Corporation.

The kerosene burners manufactured by Wintrade have caused confusion, mistake, and deception on the part of the buying public. The petitioners argued that they derived their authority to use the marks from Casa Hipolito S.A. Portugal through Wonder, their predecessor-in-interest. They also argued that the marks "Made in Portugal" and "Original Portugal" are merely descriptive.

Chua, on the other hand, admitted that he had sold Wintrade's products but was not aware of its loss of authority. After the preliminary investigation, the Chief State Prosecutor found probable cause to indict the petitioners for violation of Section 169.1, in relation to Section 170, of RA 8293. The DOJ later issued a resolution affirming the finding of probable cause.

ISSUES:

  1. Whether there is probable cause to charge the petitioners with false designation of origin in violation of Section 169.1, in relation to Section 170, of RA 8293.

  2. Whether the licensing agreement between PBMC and Lo is valid and enforceable.

RULING:

  1. The Court of Appeals and the Department of Justice found probable cause to charge the petitioners with false designation of origin. They affirmed that the kerosene burners manufactured by Wintrade, using the disputed marks, have caused confusion, mistake, and deception on the part of the buying public. The State can prosecute the petitioners to prevent damage and prejudice to the public.

  2. The Court did not discuss the ruling on the validity and enforceability of the licensing agreement between PBMC and Lo in this partial digest.

PRINCIPLES:

  • Section 169.1, in relation to Section 170, of RA 8293 punishes any person who uses in commerce any false designation of origin which is likely to cause confusion or mistake as to the origin of the product.

  • The law seeks to protect the public, thus the State can prosecute even if the aggrieved party does not have the legal capacity to sue.

  • Probable cause is present if there is a reasonable ground to believe that a crime has been committed and the accused is probably guilty thereof, based on the facts and circumstances presented during the preliminary investigation.