[G.R. No. 130360. August 15, 2001.

] Philippines of the Pagoda and Lungkow vermicelli and was solely authorized to
use said trademark. He added that Ong merely copied the two-dragon design from
WILSON ONG CHING KIAN CHUAN, Petitioner, v. HON. COURT OF APPEALS Ceroilfood Shandong which had the Certificates of Registration issued by different
and LORENZO TAN, Respondents. countries. He concluded that Ong’s Certificate of Copyright Registration was not
valid for lack of originality.
DECISION
On September 30, 1993, Ong countered Tan’s opposition to the issuance of the
QUISUMBING, J.: writ of preliminary injunction.

This petition for review 1 seeks to annul the decision 2 dated August 27, 1997 of On October 13, 1993, the court issued the writ in Ong’s favor upon his filing of a
the Court of Appeals which set aside the resolutions 3 dated October 13 and P100,000.00 bond. 5
December 15, 1993 as well as the order dated March 1, 1994 of the Regional Trial
Court of Quezon City, Branch 94. 4 Tan filed a motion to dissolve the writ of preliminary injunction, but the trial court
denied it on December 15, 1993. 6 The motion for reconsideration was also denied
Petitioner Wilson Ong Ching Kian Chuan ("Ong"), imports vermicelli from China on March 1, 1994.
National Cereals Oils and Foodstuffs Import and Export Corporation, based in
Beijing, China, under the firm name C.K.C. Trading. He repacks it in cellophane Tan elevated the case to the Court of Appeals via a special civil action for certiorari
wrappers with a design of two-dragons and the TOWER trademark on the with a prayer for the issuance of a TRO and/or writ of preliminary injunction. Ong
uppermost portion. Ong acquired a Certificate of Copyright Registration from the filed an opposition to Tan’s prayer for an issuance of TRO and/or writ of
National Library on June 9, 1993 on the said design.chanrob1es virtua1 1aw preliminary injunction on the ground that the trial court did not commit a grave
1ibrary abuse of discretion in issuing the writ in his favor.

Ong discovered that private respondent Lorenzo Tan repacked his vermicelli he After oral argument, the Court of Appeals rendered a decision on August 8, 1994,
imports from the same company but based in Qingdao, China in a "nearly" setting aside the trial court’s order. It decreed:
identical wrapper. On September 16, 1993, Ong filed against Tan a verified
complaint for infringement of copyright with damages and prayer for temporary WHEREFORE, the petition is GIVEN DUE COURSE, and GRANTED. The order
restraining order or writ of preliminary injunction with the Regional Trial Court in dated October 13, 1993 and related orders, as well as the writ of preliminary
Quezon City. Ong alleged that he was the holder of a Certificate of Copyright injunction issued by the respondent court, are SET ASIDE as issued with grave
Registration over the cellophane wrapper with the two-dragon design, and that Tan abuse of discretion. No costs.
used an identical wrapper in his business. In his prayer for a preliminary injunction
in addition to damages, he asked that Tan be restrained from using the wrapper. SO ORDERED. 7
He said he would post a bond to guarantee the payment of damages resulting from
the issuance of the writ of preliminary injunction. Ong filed a motion for reconsideration and on January 3, 1995, the Court of
Appeals modified its August 8, 1994 order as follows:
The trial court issued a temporary restraining order on the same date the complaint
was filed. Tan filed an opposition to Ong’s application for a writ of preliminary WHEREFORE the phrase "the order dated October 13, 1993 and related orders,
injunction with counter-application for the issuance of a similar writ against Ong. as well as the writ of preliminary injunction issued by the respondent court, are
Tan alleged that Ong was not entitled to an injunction. According to Tan, Ong did SET ASIDE as issued with grave abuse of discretion" is hereby deleted in our
not have a clear right over the use of the trademark Pagoda and Lungkow resolution dated 08 August 1994. In all other respects, said resolution must be
vermicelli as these were registered in the name of CHINA NATIONAL CEREALS maintained.chanrob1es virtua1 1aw 1ibrary
OIL AND FOODSTUFFS IMPORT AND EXPORT CORPORATION, SHANDONG
CEREALS AND OILS BRANCH (hereafter Ceroilfood Shandong), based in However, let a writ of preliminary injunction be issued enjoining the herein
Qingdao, China. Further, Tan averred that he was the "exclusive distributor in the respondents and any and all persons acting for and in their behalf from enforcing
and/or implementing the Writ of Preliminary Injunction issued on October 15, 1993 II. . . . BY ‘INTERFERING’ WITH THE JUDICIAL DISCRETION OF THE TRIAL
pursuant to the Resolution dated October 13, 1993 of the PUBLIC RESPONDENT COURT.
in Civil Case No. Q-93-17628 entitled "WILSON ONG CHING KIAN CHUAN, ETC.
v. LORENZO TAN, ETC." upon petitioner’s filing of a bond of P200,000.00. A. RESPONDENT COURT OF APPEALS’ INTERFERENCE WITH THE
DISCRETION OF TRIAL COURT CONSTITUTES GRAVE ABUSE OF
The Branch Clerk of Court of the RTC, Branch 94, Quezon City is directed to DISCRETION.
elevate the records of Civil Case No. 293-17128 within TEN (10) DAYS from
notice. III. . . . BY ISSUING A WRIT OF PRELIMINARY INJUNCTION IN FAVOR OF THE
PRIVATE RESPONDENT AND DISREGARDING THE WRIT OF PRELIMINARY
The parties are given THIRTY (30) DAYS from notice to file their memorandum or INJUNCTION ISSUED BY THE TRIAL COURT WHOM (SIC), UNDER THE
any pertinent manifestation on the matter, after which the case shall be considered JANUARY 13, 1995 RESOLUTION OF RESPONDENT COURT OF APPEALS,
submitted for decision. WAS JUDICIALLY HELD NOT TO HAVE COMMITTED ANY GRAVE ABUSE OF
DISCRETION IN THE ISSUANCE OF THE OCTOBER 13, 1993 AND ‘RELATED
SO ORDERED. 8 ORDERS’.

Pursuant to the Court of Appeals’ resolution on January 16, 1996, the parties A. ISSUANCE OF WRIT OF PRELIMINARY INJUNCTION ADDRESSED TO THE
submitted their memoranda. On August 27, 1997, the appellate court promulgated SOUND DISCRETION OF THE TRIAL COURT.chanrob1es virtua1 1aw 1ibrary
its decision, decreeing as follows:
IV. . . . WHEN IT MADE ITS OWN FINDINGS AND CONCLUSIONS, PRE-
WHEREFORE, the resolutions dated October 13, 1993 and December 15, 1993 as EMPTING THE TRIAL COURT AND PRE-JUDGING THE CASE, THUS LEAVING
well as the order dated March 1, 1994 — all in Civil Case No. Q-93-17628 are THE TRIAL COURT WITH NOTHING TO RULE UPON.
hereby SET ASIDE and our injunction heretofore issued made permanent.
A. COURT OF APPEALS PREJUDGED THE CASE REMANDED TO THE TRIAL
IT IS SO ORDERED. 9 COURT

On October 17, 1997, Ong filed the instant petition for review, claiming that the The issues for our determination are: Was the issuance of the writ of preliminary
Court of Appeals committed grave and serious errors tantamount to acting with injunction proper? Was there grave abuse of discretion committed by the Court of
grave abuse of discretion and/or acting without or in excess of its jurisdiction: Appeals when it set aside the order of the trial court, then issued a judgment
touching on the merits?
I. . . . WHEN IT ISSUED A PERMANENT PRELIMINARY INJUNCTION IN FAVOR
OF THE PRIVATE RESPONDENT WHEN THE LATTER’S RIGHT TO SUCH A Petitioner avers that the CA erred in issuing a preliminary injunction in private
RELIEF IS NOT CLEAR, DOUBTFUL AND HAS NO LEGAL OR FACTUAL respondent’s favor. He says, firstly, that he is more entitled to it. He states that as
BASIS. holder of the Certificate of Copyright Registration of the twin-dragon design, he has
the protection of P.D. No. 49. 10 Said law allows an injunction in case of
A. CERTIFICATE OF COPYRIGHT REGISTRATION JUSTIFY ISSUANCE OF infringement. Petitioner asserts that private respondent has no registered copyright
WRIT OF PRELIMINARY INJUNCTION UNDER P.D. NO. 49. and merely relies on the trademark of his principal abroad, which insofar as
Philippine laws is concerned, cannot prevail over the petitioner’s copyright.
B. ISSUANCE OF PRELIMINARY INJUNCTION MUST BE BASED ON CLEAR
AND UNMISTAKABLE RIGHT WHICH PETITIONER HAD AND WHICH RIGHT Private respondent, for his part, avers that petitioner has no "clear right" over the
WAS INVADED BY THE PRIVATE RESPONDENT. use of the copyrighted wrapper since the PAGODA trademark and label were first
adopted and used and have been duly registered by Ceroilfood Shandong not only
C. COURT OF APPEALS’ DECISION OF AUGUST 8, 1994 AND ITS in China but in nearly 20 countries and regions worldwide. Petitioner was not the
RESOLUTION OF JANUARY 3, 1995 RESULTS IN CONFUSION. original creator of the label, but merely copied the design of Ceroilfood Shandong.
Private respondent presented copies of the certificates of copyright registration in to prevent serious damage. 18 From the above discussion, we find that petitioner’s
the name of Ceroilfood Shandong issued by at least twenty countries and regions right has not been clearly and unmistakably demonstrated. That right is what is in
worldwide which although unauthenticated are, according to him, sufficient to dispute and has yet to be determined. In Developers Group of Companies, Inc. v.
provide a sampling of the evidence needed in the determination of the grant of Court of Appeals, 219 SCRA 715, 722-723 (1993), we held that in the absence of
preliminary injunction. 11 Private respondent alleges, that the trademark PAGODA proof of a legal right and the injury sustained by the plaintiff, an order of the trial
BRAND was registered in China on October 31, 1979 12 while the trademark court granting the issuance of an injunctive writ will be set aside, for having been
LUNGKOW VERMICELLI WITH TWO-DRAGON DEVICE was registered on issued with grave abuse of discretion. Conformably, there was no abuse of
August 15, 1985. 13 discretion by the Court of Appeals when it issued its own order to restrain the
enforcement of the preliminary injunction issued by the trial court.
To resolve this controversy, we have to return to basics. A person to be entitled to
a copyright must be the original creator of the work. He must have created it by his Finally, we note that the complaint initially filed with the RTC was for infringement
own skill, labor and judgment without directly copying or evasively imitating the of copyright. The trial court’s resolution subject of Tan’s petition under Rule 65
work of another. 14 The grant of preliminary injunction in a case rests on the sound before the CA concerns the correctness of the grant of the writ of preliminary
discretion of the court with the caveat that it should be made with extreme caution. injunction. The only issue brought before the CA involved the grave abuse of
15 Its grant depends chiefly on the extent of doubt on the validity of the copyright, discretion allegedly committed by the trial court in granting the writ of preliminary
existence of infringement, and the damages sustained by such infringement. 16 In injunction. The Court of Appeals in declaring that the wrapper of petitioner is a
our view, the copies of the certificates of copyright registered in the name of copy of Ceroilfood Shandong’s wrapper went beyond that issue and touched on
Ceroilfood Shandong sufficiently raise reasonable doubt. With such a doubt, the the merits of the infringement case, which remains to be decided by the trial court.
preliminary injunction is unavailing. 17 In Medina v. City Sheriff, Manila, 276 SCRA 19 In our view, it was premature for the Court of Appeals to declare that the design
133, 139 (1997), where the complainant’s title was disputed, we held that of petitioner’s wrapper is a copy of the wrapper allegedly registered by Ceroilfood
injunction was not proper. Shandong. That matter remains for decision after appropriate proceedings at the
trial court.
Petitioner Ong argues that the Court of Appeals erred and contradicted itself in its
January 3, 1995 Resolution, where it deleted the phrase "the order dated October WHEREFORE, the instant petition is PARTIALLY GRANTED. The prayer for a writ
13, 1993 and related orders, as well as the writ of preliminary injunction issued by of preliminary injunction to prohibit Tan from using the cellophane wrapper with
the respondent court, are SET ASIDE as issued with grave abuse of discretion" in two-dragon device is denied, but the finding of the respondent appellate court that
its August 8, 1994 decision, and at the same time issued a writ of preliminary Ong’s copyrighted wrapper is a copy of that of Ceroilfood Shandong is SET ASIDE
injunction in Tan’s favor. for being premature. The Regional Trial Court of Quezon City, Branch 94, is
directed to proceed with the trial to determine the merits of Civil Case No. 33779
Ong’s claim (that the Court of Appeals in deleting the aforequoted phrase in the expeditiously. Let the records of this case be REMANDED to said trial court
August 8, 1994 decision abandoned its earlier finding of grave abuse of discretion promptly.
on the part of the trial court), however, is without logical basis. The appellate court
merely restated in its own words the issue raised in the petition: from a) whether No pronouncement as to costs.
the RTC committed grave abuse of discretion, to b) whether Tan was entitled to an
injunctive relief. Then it clarified that the relief sought is a prohibition against Ong SO ORDERED.
and his agents from enforcing the writ of preliminary injunction. Properly
understood, an order enjoining the enforcement of a writ of preliminary injunction
issued by the RTC in a certiorari proceeding under Rule 65 of the Rules of Court
effectively sets aside the RTC order for being issued with grave abuse of
discretion.

To be entitled to an injunctive writ, petitioner must show, inter alia, the existence of
a clear and unmistakable right and an urgent and paramount necessity for the writ
G.R. No. 132604 March 6, 2002 occupation of the premises. He also claimed he did not know the whereabouts of
Sambar, the alleged owner of CVSGE.
VENANCIO SAMBAR, doing business under the name and style of CVS Garment
Enterprises, petitioner, Thereafter, private respondents amended their complaint to include CVSGIC.
vs. When private respondents learned the whereabouts of Sambar and CVSGE, the
LEVI STRAUSS & CO., and LEVI STRAUSS (PHIL.), INC., respondents. case was revived.

DECISION Private respondents alleged in their complaint that Levi Strauss and Co. (LS&Co.),
an internationally known clothing manufacturer, owns the arcuate design
QUISUMBING, J.: trademark which was registered under U.S. Trademark Registration No. 404, 248
on November 16, 1943, and in the Principal Register of trademarks with the
This petition for review on certiorari prays for the reversal of the decision dated Philippine Patent Office under Certificate of Registration No. 20240 issued on
January 30, 1998, of the Court of Appeals in CA-G.R. CV No. 51553. That decision October 8, 1973; that through a Trademark Technical Data and Technical
affirmed the decision in Civil Case No. 88-2220 of the Regional Trial Court, Branch Assistance Agreement with Levi Strauss (Phil.) Inc. (LSPI) in 1972, LS&Co.
66, Makati City, making permanent the writ of preliminary injunction, ordering CVS granted LSPI a non-exclusive license to use the arcuate trademark in its
Garment and Industrial Company (CVSGIC) and petitioner Venancio Sambar to manufacture and sale of Levi’s pants, jackets and shirts in the Philippines; that in
pay private respondents jointly and solidarily the sum of ₱50,000 as temperate and 1983, LS&Co. also appointed LSPI as its agent and attorney-in-fact to protect its
nominal damages, ₱10,000 as exemplary damages, and ₱25,000 as attorney’s trademark in the Philippines; and that sometime in 1987, CVSGIC and Venancio
fees and litigation costs, and ordering the Director of the National Library to cancel Sambar, without the consent and authority of private respondents and in
Copyright Registration No. 1-1998 in the name of Venancio Sambar. infringement and unfair competition, sold and advertised, and despite demands to
cease and desist, continued to manufacture, sell and advertise denim pants under
The facts are as follows: the brand name "Europress" with back pockets bearing a design similar to the
arcuate trademark of private respondents, thereby causing confusion on the
On September 28, 1987, private respondents, through a letter from their legal buying public, prejudicial to private respondents’ goodwill and property right.
officer, demanded that CVS Garment Enterprises (CVSGE) desist from using their
stitched arcuate design on the Europress jeans which CVSGE advertised in the In its answer, CVSGIC admitted it manufactured, sold and advertised and was still
Manila Bulletin. manufacturing and selling denim pants under the brand name of "Europress",
bearing a back pocket design of two double arcs meeting in the middle. However,
Atty. Benjamin Gruba, counsel of CVSGE, replied that the arcuate design on the it denied that there was infringement or unfair competition because the display
back pockets of Europress jeans was different from the design on the back rooms of department stores where Levi’s and Europress jeans were sold, were
pockets of Levi’s jeans. He further asserted that his client had a copyright on the distinctively segregated by billboards and other modes of advertisement. CVSGIC
design it was using. avers that the public would not be confused on the ownership of such known
trademark as Levi’s, Jag, Europress, etc.. Also, CVSGIC claimed that it had its
Thereafter, private respondents filed a complaint against Sambar, doing business own original arcuate design, as evidenced by Copyright Registration No. 1-1998,
under the name and style of CVSGE. Private respondents also impleaded the which was very different and distinct from Levi’s design. CVSGIC prayed for
Director of the National Library. Summons was sent to Sambar in his business actual, moral and exemplary damages by way of counterclaim.
address at 161-B Iriga corner Retiro, La Loma, Quezon City.
Petitioner Venancio Sambar filed a separate answer. He denied he was connected
Atty. Gruba claimed that he erroneously received the original summons as he with CVSGIC. He admitted that Copyright Registration No. 1-1998 was issued to
mistook it as addressed to his client, CVSGIC. He returned the summons and the him, but he denied using it. He also said he did not authorize anyone to use the
pleadings and manifested in court that CVSGE, which was formerly doing business copyrighted design. He counterclaimed for moral and exemplary damages and
in the premises, already stopped operation and CVSGIC took over CVSGE’s payment of attorney’s fees.
After hearing, the trial court issued a writ of preliminary injunction enjoining SO ORDERED.3
CVSGIC and petitioner from manufacturing, advertising and selling pants with the
arcuate design on their back pockets. CVSGIC and petitioner did not appear In this instant petition, petitioner avers that the Court of Appeals erred in:
during the October 13 and 27, 1993 hearings, when they were to present
evidence. Consequently, the trial court ruled that they waived their right to present I. ...RULING THAT THERE WAS AN INFRINGEMENT OF RESPONDENT’S
evidence. ARCUATE MARK.

On May 3, 1995, the trial court rendered its decision. The dispositive portion reads: II. ...RULING THAT PETITIONER IS JOINTLY AND SOLIDARILY LIABLE WITH
CVS GARMENTS INDUSTRIAL CORPORATION FOR INFRINGEMENT OF
IN VIEW OF THE FOREGOING, judgment is hereby rendered: RESPONDENT’S ARCUATE MARK.

a) making the writ of preliminary injunction permanent; III. ...IN ORDERING, THERE BEING NO INFRINGEMENT OR UNFAIR
COMPETITION, THE AWARD OF DAMAGES AND CANCELLATION OF
b) ordering the defendants CVS Garment and Industrial Company and Venancio COPYRIGHT REGISTRATION NO. 1-1998 ISSUED IN THE NAME OF
Sambar to pay the plaintiffs jointly and solidarily the sum of P50,000.00 as PETITIONER.4
temperate and nominal damages, the sum of P10,000.00 as exemplary damages,
and the sum of P25,000.00 as attorney’s fees and litigation expenses and to pay Briefly, we are asked to resolve the following issues:
the costs.
1. Did petitioner infringe on private respondents’ arcuate design?
SO ORDERED.1
2. Must we hold petitioner solidarily liable with CVS Garments Industrial
Private respondents moved for a reconsideration praying for the cancellation of Corporation?
petitioner’s copyright registration. The trial court granted reconsideration in its July
14, 1995 order, thus: 3. Are private respondents entitled to nominal, temperate and exemplary damages
and cancellation of petitioner’s copyright?
IN VIEW OF THE FOREGOING, judgment is hereby rendered:
On the first issue, petitioner claims that he did not infringe on private respondents’
a) making the writ of preliminary injunction permanent; arcuate design because there was no colorable imitation which deceived or
confused the public. He cites Emerald Garment Manufacturing Corporation vs.
b) ordering the defendants CVS Garment and Industrial Company and Venancio Court of Appeals, G.R. No. 100098, 251 SCRA 600 (1995), as authority. He
Sambar to pay the plaintiffs jointly and solidarily the sum of P50,000.00 as disagreed with the Court of Appeals that there were confusing similarities between
temperate and nominal damages, the sum of P10,000.00 as exemplary damages, Levi’s and Europress’ arcuate designs, despite the trial court’s observation of
and the sum of P25,000.00 as attorney’s fees and litigation expenses and to pay differences in them. Petitioner maintains that although the backpocket designs had
the costs; similarities, the public was not confused because Levi’s jeans had other marks not
found in Europress jeans. Further, he says Levi’s long history and popularity made
c) ordering the Director of the National Library to cancel the Copyright Registration its trademark easily identifiable by the public.
No. 1-1998 issued in the name of Venancio Sambar.2
In its comment, private respondents aver that the Court of Appeals did not err in
Petitioner appealed to the Court of Appeals which on January 30, 1998 decided in ruling that there was infringement in this case. The backpocket design of
favor of private respondents as follows: Europress jeans, a double arc intersecting in the middle was the same as Levi’s’
mark, also a double arc intersecting at the center. Although the trial court found
WHEREFORE, the judgment appealed from is AFFIRMED in toto. differences in the two designs, these differences were not noticeable. Further,
private respondents said, infringement of trademark did not require exact similarity.
Colorable imitation enough to cause confusion among the public, was sufficient for use it. He also said he was not connected with CVSGIC. These were not alleged
a trademark to be infringed. Private respondents explained that in a market by private respondents in their pleadings, and petitioner therefore had the burden
research they conducted with 600 respondents, the result showed that the public to prove these.
was confused by Europress trademark vis the Levi’s trademark.
Lastly, are private respondents entitled to nominal, temperate and exemplary
We find that the first issue raised by petitioner is factual. The basic rule is that damages and cancellation of petitioner’s copyright?
factual questions are beyond the province of this Court in a petition for review.
Although there are exceptions to this rule, this case is not one of them.5 Hence, Petitioner insists that he had not infringed on the arcuate trademark, hence, there
we find no reason to disturb the findings of the Court of Appeals that Europress’ was no basis for nominal and temperate damages. Also, an award of nominal
use of the arcuate design was an infringement of the Levi’s design. damages precludes an award of temperate damages. He cites Ventanilla vs.
Centeno, G.R. No. L-14333, 1 SCRA 215 (1961) on this. Thus, he contends,
On the second issue, petitioner claims that private respondents did not show that assuming arguendo that there was infringement, the Court of Appeals still erred in
he was connected with CVSGIC, nor did they prove his specific acts of awarding both nominal and temperate damages.
infringement to make him liable for damages. Again, this is a factual matter and
factual findings of the trial court, concurred in by the Court of Appeals, are final and Petitioner likewise said that the grant of exemplary damages was inconsistent with
binding on this Court.6 Both the courts below found that petitioner had a copyright the trial court’s finding that the design of Europress jeans was not similar to Levi’s
over Europress’ arcuate design and that he consented to the use of said design by design and that no pecuniary loss was suffered by respondents to entitle them to
CVSGIC. We are bound by this finding, especially in the absence of a showing that such damages.
it was tainted with arbitrariness or palpable error.7 It must be stressed that it was
immaterial whether or not petitioner was connected with CVSGIC. What is relevant Lastly, petitioner maintains that as Europress’ arcuate design is not a copy of that
is that petitioner had a copyright over the design and that he allowed the use of the of Levi’s, citing the trial court’s findings that although there are similarities, there
same by CVSGIC. are also differences in the two designs, cancellation of his copyright was not
justified.
Petitioner also contends that the Court of Appeals erred when it said that he had
the burden to prove that he was not connected with CVSGIC and that he did not On this matter, private respondents assert that the lower courts found that there
authorize anyone to use his copyrighted design. According to petitioner, these are was infringement and Levi’s was entitled to damages based on Sections 22 and 23
important elements of private respondents’ cause of action against him, hence, of RA No. 166 otherwise known as the Trade Mark Law,10 as amended, which
private respondents had the ultimate burden of proof. was the law then governing. Said sections define infringement and prescribe the
remedies therefor. Further, private respondents aver it was misleading for
Pertinent is Section 1, Rule 131 of the Rules of Court8 which provides that the petitioner to claim that the trial court ruled that private respondents did not suffer
burden of proof is the duty of a party to prove the truth of his claim or defense, or pecuniary loss, suggesting that the award of damages was improper. According to
any fact in issue by the amount of evidence required by law. In civil cases, the the private respondents, the trial court did not make any such ruling. It simply
burden of proof may be on either the plaintiff or the defendant. It is on the latter, if stated that there was no evidence that Levi’s had suffered decline in its sales
in his answer he alleges an affirmative defense, which is not a denial of an because of the use of the arcuate design by Europress jeans. They offer that while
essential ingredient in the plaintiff’s cause of action, but is one which, if there may be no direct proof that they suffered a decline in sales, damages may
established, will be a good defense – i.e., an "avoidance" of the claim, which prima still be measured based on a reasonable percentage of the gross sales of the
facie, the plaintiff already has because of the defendant’s own admissions in the respondents, pursuant to Section 23 of the Trademark law.11
pleadings.9
Finally, regarding the cancellation of petitioner’s copyright, private respondents
Petitioner’s defense in this case was an affirmative defense.1âwphi1 He did not deny that the trial court ruled that the arcuate design of Europress jeans was not
deny that private respondents owned the arcuate trademark nor that CVSGIC used the same as Levi’s arcuate design jeans. On the contrary, the trial court expressly
on its products a similar arcuate design. What he averred was that although he ruled that there was similarity. The cancellation of petitioner’s copyright was
owned the copyright on the Europress arcuate design, he did not allow CVSGIC to justified because petitioner’s copyright can not prevail over respondents’
registration in the Principal Register of Bureau of Patents, Trademarks, and c) the Director of the National Library is ordered to cancel the Copyright
Technology Transfer. According to private respondents, the essence of copyright Registration No. 1-1998 issued in the name of Venancio Sambar.
registration is originality and a copied design is inherently non-copyrightable. They
insist that registration does not confer originality upon a copycat version of a prior SO ORDERED.
design.

From the foregoing discussion, it is clear that the matters raised by petitioner in
relation to the last issue are purely factual, except the matter of nominal and
temperate damages. Petitioner claims that damages are not due private
respondents and his copyright should not be cancelled because he had not
infringed on Levi’s trademark. Both the trial court and the Court of Appeals found
there was infringement. Thus, the award of damages and cancellation of
petitioner’s copyright are appropriate.12 Award of damages is clearly provided in
Section 23,13 while cancellation of petitioner’s copyright finds basis on the fact that
the design was a mere copy of that of private respondents’ trademark.1âwphi1 To
be entitled to copyright, the thing being copyrighted must be original, created by
the author through his own skill, labor and judgment, without directly copying or
evasively imitating the work of another.14

However, we agree with petitioner that it was error for the Court of Appeals to
affirm the award of nominal damages combined with temperate damages15 by the
Regional Trial Court of Makati. What respondents are entitled to is an award for
temperate damages, not nominal damages. For although the exact amount of
damage or loss can not be determined with reasonable certainty, the fact that
there was infringement means they suffered losses for which they are entitled to
moderate damages.16 We find that the award of ₱50,000.00 as temperate
damages fair and reasonable, considering the circumstances herein as well as the
global coverage and reputation of private respondents Levi Strauss & Company
and Levi Strauss (Phil.), Inc.

WHEREFORE, the decision dated January 30, 1998, of the Court of Appeals, in
CA-G.R. CV No. 51553 AFFIRMING the judgment of the Regional Trial Court of
Makati, Branch 66, dated July 14, 1995, is hereby MODIFIED so that nominal
damages are deleted but the amount of P50,000 is hereby awarded only as
TEMPERATE DAMAGES. In all other respects, said judgment is hereby
AFFIRMED, to wit:

a) the writ of preliminary injunction is made permanent;

b) the defendants CVS Garment and Industrial Company and Venancio Sambar
are ordered also to pay the plaintiffs jointly and solidarily the sum of ₱10,000.00 as
exemplary damages, and the sum of ₱25,000.00 as attorney’s fees and litigation
expenses, and to pay the costs; and
G.R. No. 119280 August 10, 2006 1.7. Since then, P&G has used the "tac-tac" key visual in the advertisement of its
products. In fact, in 1986, in Italy, the "tac-tac" key visual was used in the television
UNILEVER PHILIPPINES (PRC), INC., Petitioner, vs. THE HONORABLE commercial for "Ace" entitled "Kite."
COURT OF APPEALS and PROCTER AND GAMBLE PHILIPPINES, INC.,
Respondents. 1.8. P&G has used the same distinctive "tac-tac" key visual to local consumers in
the Philippines.
DECISION
xxxxxxxxx
CORONA, J.:
1.10. Substantially and materially imitating the aforesaid "tac-tac" key visual of
In this petition for review under Rule 45 of the Rules of Court, petitioner assails the P&GP and in blatant disregard of P&GP’s intellectual property rights, Unilever on
February 24, 1995 decision 1 of the Court of Appeals (CA) in CA-G.R. SP No. 24 July 1993 started airing a 60 second television commercial "TVC" of its "Breeze
35242 entitled "Unilever Philippines (PRC), Inc. v. Honorable Fernando V. Powerwhite" laundry product called "Porky." The said TVC included a stretching
Gorospe, Jr. and Procter and Gamble Philippines, Inc. (P&GP)" which affirmed the visual presentation and sound effects almost [identical] or substantially similar to
issuance by the court a quo of a writ of preliminary injunction against it. The writ P&GP’s "tac-tac" key visual.
enjoined petitioner from using and airing, until further orders of the court, certain
television commercials for its laundry products claimed to be identical or similar to xxxxxxxxx
its "double tug" or "tac-tac" key visual. 2
1.14. On July 15, 1994, P&GP aired in the Philippines, the same "Kite" television
Petitioner alleges that the writ of preliminary injunction was issued by the trial court advertisement it used in Italy in 1986, merely dubbing the Italian language with
(and affirmed by the CA) without any evidence of private respondent’s clear and Filipino for the same produce "Ace" bleaching liquid which P&GP now markets in
unmistakable right to the writ. Petitioner further contends that the preliminary the Philippines.
injunction issued against it already disposed of the main case without trial, thus
denying petitioner of any opportunity to present evidence on its behalf. 1.15. On August 1, 1994, Unilever filed a Complaint with the Advertising Board of
the Philippines to prevent P&GP from airing the "Kite" television advertisement. 3
The antecedents show that on August 24, 1994, private respondent Procter and
Gamble Phils., Inc. filed a complaint for injunction with damages and a prayer for On August 26, 1994, Judge Gorospe issued an order granting a temporary
temporary restraining order and/or writ of preliminary injunction against petitioner restraining order and setting it for hearing on September 2, 1994 for Unilever to
Unilever, alleging that: show cause why the writ of preliminary injunction should not issue. During the
hearing on September 2, 1994, P&GP received Unilever’s answer with opposition
1.5. As early as 1982, a P&G subsidiary in Italy used a key visual in the to preliminary injunction. P&GP filed its reply to Unilever’s opposition to a
advertisement of its laundry detergent and bleaching products. This key visual preliminary injunction on September 6, 1994.
known as the "double-tug" or "tac-tac" demonstration shows the fabric being held
by both hands and stretched sideways. During the hearing on September 9, 1994, Judge Gorospe ordered petitioner to
submit a sur-rejoinder. P&GP received Unilever’s rejoinder to reply on September
1.6. The "tac-tac" was conceptualized for P&G by the advertising agency Milano 13, 1994. The following day, on September 14, 1994, P&GP filed its sur-reply to
and Gray of Italy in 1982. The "tac-tac" was used in the same year in an Unilever’s rejoinder.
advertisement entitled "All aperto" to demonstrate the effect on fabrics of one of
P&GP’s products, a liquid bleach called "Ace." On September 19, 1994, P&GP received a copy of the order dated September 16,
1994 ordering the issuance of a writ of preliminary injunction and fixing a bond of
xxxxxxxxx P100,000. On the same date, P&GP filed the required bond issued by Prudential
Guarantee and Assurance, Inc.
On September 21, 1994, petitioner appealed to the CA assigning the following petitioner’s contention, the intellectual creator’s exercise and enjoyment of
errors allegedly committed by the court a quo, to wit: copyright for his work and the protection given by law to him is not contingent or
dependent on any formality or registration. Therefore, taking the material
PUBLIC RESPONDENT HAD ACTED WITHOUT OR IN EXCESS OF allegations of paragraphs 1.3 to 1.5 of P&GP’s verified Complaint in the context of
JURISDICTION AND WITH GRAVE ABUSE OF DISCRETION AMOUNTING TO PD 49, it cannot be seriously doubted that at least, for purposes of determining
LACK OF JURISDICTION IN ISSUING THE WRIT OF PRELIMINARY whether preliminary injunction should issue during the pendency of the case,
INJUNCTION IN VIOLATION OF THE RULES ON EVIDENCE AND P&GP is entitled to the injunctive relief prayed for in its Complaint.
PROCEDURE, PARTICULARLY OF SEC. 3 (a), RULE 58 OF THE REVISED
RULES OF COURT AND OF THE PREVAILING JURISPRUDENCE. The second ground is likewise not well-taken. As adverted to earlier, the
provisional remedy of preliminary injunction will not issue unless it is shown in the
PUBLIC RESPONDENT IN ISSUING THE VOID ORDER DATED SEPTEMBER verified complaint that plaintiff is probably entitled to the relief demanded, which
16, 1994, HAD, IN EFFECT, ALREADY PREJUDGED THE MERITS OF THE consists in whole or in part in restraining the commission or continuance of the
MAIN CASE. acts complained of. In view of such requirement, the court has to make a tentative
determination if the right sought to be protected exists and whether the act against
PUBLIC RESPONDENT HAD ISSUED THE VOID ORDER ACCORDING RELIEF which the writ is to be directed is violative of such right. Certainly, the court’s
TO A NON-PARTY IN CIVIL CASE NO. 94-2434 WITHOUT JURISDICTION. determination as to the propriety of issuing the writ cannot be taken as a
prejudgment of the merits of the case because it is tentative in nature and the writ
PUBLIC RESPONDENT IN ISSUING THE VOID ORDER HAD DEPRIVED may be dissolved during or after the trial if the court finds that plaintiff was not
PETITIONER OF SUBSTANTIVE AND PROCEDURAL DUE PROCESS; PUBLIC entitled to it….
RESPONDENT HAD FORECLOSED PETITIONER’S RIGHT AND THE
OPPORTUNITY TO CROSS-EXAMINE PROCTER’S WITNESSES ABAD AND xxxxxxxxx
HERBOSA. 4
Obviously, the determination made by the court a quo was only for purposes of
On February 24, 1995, the CA rendered its decision finding that Judge Gorospe preliminary injunction, without passing upon the merits of the case, which cannot
did not act with grave abuse of discretion in issuing the disputed order. The petition be done until after a full-blown hearing is conducted.
for certiorari was thus dismissed for lack of merit.
The third ground is patently unmeritorious. As alleged in the Complaint P&GP is a
After a careful perusal of the records, we agree with the CA and affirm its decision subsidiary of Procter and Gamble Company (P&G) for which the "double tug" or
in toto: "tac-tac" key visual was conceptualized or created. In that capacity, P&GP used
the said TV advertisement in the Philippines to promote its products. As such
Petitioner does not deny that the questioned TV advertisements are substantially subsidiary, P&GP is definitely within the protective mantle of the statute (Sec. 6,
similar to P&GP’s "double tug" or "tac-tac" key visual. However, it submits that PD 49).
P&GP is not entitled to the relief demanded, which is to enjoin petitioner from
airing said TV advertisements, for the reason that petitioner has Certificates of Finally, We find the procedure adopted by the court a quo to be in order….
Copyright Registration for which advertisements while P&GP has none with
respect to its "double-tug" or "tac-tac" key visual. In other words, it is petitioner’s The record clearly shows that respondent Judge followed the (procedure provided
contention that P&GP is not entitled to any protection because it has not registered for in Section 5, Rule 58, as amended by BP 224, and Paragraph A(8) of the
with the National Library the very TV commercials which it claims have been Interim Rules). In fact, the court a quo set the incident for hearing on September 2,
infringed by petitioner. 1994, at which date petitioner was ordered to show cause why the writ should not
be issued. Petitioner filed an Opposition to the application for preliminary
We disagree. Section 2 of PD 49 stipulates that the copyright for a work or injunction. The same incident was again set for hearing on September 9, 1994,
intellectual creation subsists from the moment of its creation. Accordingly, the during which the parties made some manifestations in support of their respective
creator acquires copyright for his work right upon its creation.… Contrary to positions. Subsequent to such hearing petitioner filed a Reply to P&GP’s Rejoinder
to its Opposition. Under the foregoing circumstances, it is absurd to even suggest the opportunity to oppose the application for injunction. The fact was, it failed to
that petitioner was not given its day in court in the matter of the issuance of the convince the court why the injunction should not be issued. Thus, in Santos v.
preliminary injunctive relief. Court of Appeals, 11 we held that no grave abuse of discretion can be attributed to
a judge or body issuing a writ of preliminary injunction where a party has not been
xxxxxxxxx deprived of its day in court as it was heard and it exhaustively presented all its
arguments and defenses.
There was of course extreme urgency for the court a quo to act on plaintiff’s
application for preliminary injunction. The airing of TV commercials is necessarily WHEREFORE, the petition is hereby DENIED.
of limited duration only. Without such temporary relief, any permanent injunction
against the infringing TV advertisements of which P&GP may possibly succeed in Costs against petitioner.
getting after the main case is finally adjudicated could be illusory if by then such
advertisements are no longer used or aired by petitioner. It is therefore not difficult SO ORDERED.
to perceive the possible irreparable damage which P&GP may suffer if respondent
Judge did not act promptly on its application for preliminary injunction. 5

Preliminary injunction is a provisional remedy intended to provide protection to

parties for the preservation of their rights or interests during the pendency of the
principal action. 6 Thus, Section1, Rule 58 of the Rules of Court provides:

Section 1. Preliminary injunction defined; classes. — A preliminary injunction is an

order granted at any stage of an action or proceeding prior to the judgment or final
order, requiring a party or a court, agency or a person to refrain from a particular
act or acts. It may also require the performance of a particular act or acts, in which
case it shall be known as a preliminary mandatory injunction.

Injunction is resorted to only when there is a pressing necessity to avoid injurious

consequences which cannot be remedied under any standard compensation. 7 As
correctly ruled by the CA, there was an extreme urgency to grant the preliminary
injunction prayed for by P&GP considering that TV commercials are aired for a
limited period of time only. In fact, this Court takes note of the fact that the TV
commercial in issue ― the Kite TV advertisement ― is no longer aired today, more
than 10 years after the injunction was granted on September 16, 1994.

The sole objective of a writ of preliminary injunction is to preserve the status quo
until the merits of the case can be heard fully. 8 A writ of preliminary injunction is
generally based solely on initial and incomplete evidence. 9 Thus, it was
impossible for the court a quo to fully dispose of the case, as claimed by petitioner,
without all the evidence needed for the full resolution of the same. To date, the
main case still has to be resolved by the trial court.

The issuance of a preliminary injunction rests entirely on the discretion of the court
and is generally not interfered with except in cases of manifest abuse. 10 There
was no such abuse in the case at bar, especially because petitioner was given all