Respondents Fitrite and Victoria Biscuit Co., domestic corporations engaged in manufacturing and selling biscuits and cookies, are the registered owners of the trademark ‘Sunshine.’ Later, respondents discovered that petitioner Conrad imports and sells ‘Sunshine Biscuits’ in the country. Respondents then moved to enjoin petitioner from continuing with those acts as it would mislead and deceive the public. The court ruled to dismiss the complaint stating that there is already a pending action before the BPTTT instituted by petitioner’s US-based principal against respondents’ use of the mark. CA reversed the decision and ordered petitioner to refrain from continuing its business.
Whether or respondents are entitled to injunctive relief.
Private respondents are the holder of certificate of registration for the questioned trademark. In Lorenzana vs. Macagba, cited with approval in Del Monte Corporation vs. CA, we have declared that registration in the Principal Register gives rise to a presumption of validity of the registration and of the registrant’s ownership and right to the exclusive use of the mark. It is precisely such a registration that can serve as the basis for an action for infringement. An invasion of this right entitles the registrant to court protection and relief. Section 23, Chapter V, of the Trade-Mark Law provides: xxx The complaining party, upon proper showing, may also be granted injunction.
In this instance, the sole concern, outside of the jurisdictional aspect of the petition hereinbefore discussed, would be that which focuses on the propriety of the injunction order of the appellate court. On this score, the appellate court has said:
Thus, having the exclusive right over said trademark, FITRITE should be protected in the use thereof; and considering that it is apparent from the record that the invasion of the right FITRITE sought to protect is material and substantial; that such right of FITRITE is clear and unmistakable; and that there is an urgent necessity to prevent serious damage to FITRITE’s business interest, goodwill and profit, thus under the authority of Sec. 23 of said Republic Act No. 166, as amended, a preliminary injunction may be issued in favor of FITRITE to maintain the status quo pending trial of the action a quo on the merits without prejudice to the suspension of such action if the aforesaid cancellation proceeding before the BPTTT has not been concluded.