THIRD DIVISION
G.R. No. 197802, November 11, 2015
ZUNECA PHARMACEUTICAL, AKRAM ARAIN AND/OR VENUS ARAIN, M.D. DBA ZUNECA PHARMACEUTICAL, Petitioners, v. NATRAPHARM, INC., Respondent.
R E S O L U T I O N
VILLARAMA, JR., J.:
This is a petition for review1 under Rule 45 of the 1997 Rules of Civil Procedure, as amended, assailing the April 18, 2011 Decision2 and July 21, 2011 Resolution3 of the Court of Appeals (CA) in the petition for certiorari docketed as CA-G.R. SP No. 103333 granting a permanent injunction in favor of respondent Natrapharm, Inc. and against petitioner Zuneca Pharmaceutical.
The facts follow:
Respondent is an all-Filipino pharmaceutical company which manufactures and sells a medicine bearing the generic name "CITICOLINE," which is indicated for heart and stroke patients. The said medicine is marketed by respondent under its registered trademark "ZYNAPSE," which respondent obtained from the Intellectual Property Office (IPO) on September 24, 2007 under Certificate of Trademark Registration No. 4-2007-005596. With its registration, the trademark "ZYNAPSE" enjoys protection for a term of 10 years from September 24, 2007.4
In addition, respondent obtained from the Bureau of Food and Drugs (BFAD) all necessary permits and licenses to register, list and sell its "ZYNAPSE" medicine in its various forms and dosages.5
Allegedly unknown to respondent, since 2003 or even as early as 2001, petitioners have been selling a medicine imported from Lahore, Pakistan bearing the generic name "CARBAMAZEPINE," an anti-convulsant indicated for epilepsy, under the brand name "ZYNAPS," which trademark is however not registered with the IPO. "ZYNAPS" is pronounced exactly like "ZYNAPSE."6
Respondent further alleged that petitioners are selling their product "ZYNAPS" CARBAMAZEPINE in numerous drugstores in the country where its own product "ZYNAPSE" CITICOLINE is also being sold.7
Moreover, respondent claimed that the drug CARBAMAZEPINE has one documented serious and disfiguring side-effect called "Stevens-Johnson Syndrome," and that the sale of the medicines "ZYNAPSE" and "ZYNAPS" in the same drugstores will give rise to medicine switching.8
On October 30, 2007, respondent sent petitioners a cease-and-desist demand letter, pointing out that:
- "ZYNAPSE" is the registered trademark of [respondent], and that as such owner, it has exclusive trademark right under the law to the use thereof and prevent others from using identical or confusingly similar marks, and that [petitioners] must stop the use of "ZYNAPS" for being nearly identical to "ZYNAPSE"; and
- Because there is confusing similarity between "ZYNAPSE" and "ZYNAPS," there is a danger of medicine switching, with the patient on "ZYNAPSE" medication placed in a more injurious situation given the Steven-Johnson Syndrome side effect of the "ZYNAPS" CARBAMAZEPINE.9
In this Court's objective evaluation, neither party is, at this point, entitled to any injunctive solace. Plaintiff, while admittedly the holder of a registered trademark under the IPC, may not invoke ascendancy or superiority of its CTR [certificate of trademark registration] over the CPR [certificate of product registration of the BFAD] of the defendants, as the latter certificate is, in the Court's opinion, evidence of its "prior use". Parenthetically, the plaintiff would have been entitled to an injunction as against any or all third persons in respect of its registered mark under normal conditions, that is, in the event wherein Section 159.1 would not be invoked by such third person. Such is the case however in this litigation. Section 159 of the IPC explicitly curtails the registrant's rights by providing for limitations on those rights as against a "prior user" under Section 159.1 xxx.23
WHEREFORE, premises considered, the Petition for Certiorari is GRANTED. The assailed Omnibus Order dated 12 March 2008 of the Regional Trial Court, Branch 93 of Quezon City in Civil Case No. Q-07-61561 is REVERSED and SET ASIDE, and a new one is entered permanently ENJOINING defendants-respondents, their employees, agents, representatives, dealers, retailers, and/or assigns, and any and all persons acting in their behalf, from manufacturing, importing, distributing, selling and/or advertising for sale, or otherwise using in commerce, the anti-convulsant drug CARBAMAZEPINE under the brand name and mark "ZYNAPS," or using any other name which is similar or confusingly similar to petitioner's registered trademark "ZYNAPSE," including filing of application for permits, license, or certificate of product registration with the Food and Drug Administration and other government agencies.
SO ORDERED.26 (Underscoring and additional emphasis supplied)
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. (Emphasis supplied)
SEC. 9. When final injunction granted. — If after the trial of the action it appears that the applicant is entitled to have the act or acts complained of permanently enjoined, the court shall grant a final injunction perpetually restraining the party or person enjoined from the commission or continuance of the act or acts or confirming the preliminary mandatory injunction. (Emphasis supplied)
As things stand now, this Court can no longer interfere with the preliminary injunctions issued by the Leyte court in its cases Nos. 2985 and 2990, because such preliminary writs have already been vacated, being superseded and replaced by the permanent injunction ordered in the decision on the merits rendered on 21 March 1962. And as to the permanent injunction, no action can be taken thereon without reviewing the judgment on the merits, such injunction being but a consequence of the pronouncement that the credits of Tiongson and Montilla are entitled to priority over that of Casilan. Since the court below had the power and right to determine such question of preference, its judgment is not without, nor in excess of, jurisdiction; and even assuming that its findings are not correct, they would, at most, constitute errors of law, and not abuses of discretion, correctible by certiorari . The obvious remedy for petitioner Casilan was a timely appeal from the judgment on the merits to the Court of Appeals, the amount involved being less than P200,000. But the judgment has become final and unappealable and can not be set aside through certiorari proceedings. (Emphasis supplied)
Endnotes:
* Designated additional Member in lieu of Associate Justice Diosdado M. Peralta, per Raffle dated October 21, 2015.
** Designated Acting Member in lieu of Associate Justice Bienvenido L. Reyes, per Raffle dated October 12, 2015.
1Rollo, pp. 14-46.
2 Id. at 52-76. Penned by Associate Justice Elihu A. Ybañez with Associate Justices Bienvenido L. Reyes and Estela M. Perlas-Bernabe (both now Members of this Court), concurring.
3 Id. at 78-82.
4 Id. at 53.
5 Id.
6 Id. at 54.
7 Id.
8 Id. at 55.
9 Id. at 56.
10 Id.
11 THE INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES, Section 122 provides:
Sec. 122. How Marks are Acquired. - The rights in a mark shall be acquired through registration made validly in accordance with the provisions of this law.
12Rollo, p. 57.
13 THE INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES, Section 138 provides:
SEC. 138. Certificates of Registration. - A certificate of registration of a mark shall be prima facie evidence of the validity of the registration, the registrant's ownership of the mark, and of the registrant's exclusive right to use the same in connection with goods or services and those that are related thereto specified in the certificate.
14 Id., Section 147.1 provides:
Sec. 147. Rights Conferred. - 147.1. The owner of a registered mark shall have the exclusive right to prevent all third parties not having the owner's consent from using in the course of trade identical or similar signs or containers for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed.
15Rollo, pp. 57-58.
16 316 Phil. 850(1995).
17Rollo, p. 58.
18 CA rollo (Vol. I), p. 385.
19 THE INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES, Section 159 provides:
SEC. 159. Limitations to Actions for Infringement. - Notwithstanding any other provision of this Act, the remedies given to the owner of a right infringed under this Act shall be limited as follows:
159.1. Notwithstanding the provision of Section 155 hereof, a registered mark shall have no effect against any person who, in good faith, before the filing date or the priority date, was using the mark for the purposes of his business or enterprise; x x x
20 Rollo, pp. 58-59.
21 Id. at 121-122.
22 Id. at 88-90.
23 Id. at 89.
24 Id. at 217. Penned by Associate Justice Fernanda Lampas Peralta with Associate Justices Edgardo P. Cruz and Ricardo R. Rosario concurring.
25 Id. at 248-249.
26 Id. at 74-75.
27 Id. at 741-751. Penned by Acting Presiding Judge Bernelito R. Fernandez.
28 Id. at 751. The dispositive part of the December 2, 2011 Decision of the RTC reads:
WHEREFORE, in view of the foregoing, judgment is hereby rendered in favor of plaintiff [Natrapharm], Inc. and against defendants Zuneca Pharmaceutical, Akram Arain and/or Venus Arain, MD, doing business in the name and style of Zuneca Pharmaceutical.
Defendants, jointly and severally, are hereby directed to pay the plaintiff the following amounts, to wit:
One Million Pesos (P1,000,000.00) as damages;cralawlawlibrary
One Million Pesos (P1,000,000.00) as exemplary damages;cralawlawlibrary
Two Hundred Thousand Pesos (P200,000.00) as attorney'[s] fees;cralawlawlibrary
and the Costs.
Defendants are further enjoined from henceforth using Zynaps or any other variations thereto which are confusingly similar to the plaintiffs Zynapse.
It is likewise ordered that all infringing goods, labels, signs, prints, packages, wrappers, receptacles and advertisements in possession of the defendants, bearing the registered mark or any reproduction, counterfeit, copy or colourable imitation thereof, all plates, molds, matrices and other means of making the same, implements, machines and other items related to the conduct, and predominantly used, by the defendants in such infringing activities, be disposed of outside the channels of commerce or destroyed, without compensation.
The counterclaim of the defendants is DISMISSED for lack of merit.
SO ORDERED.
29 Id. at 738.
30La Vista Association, Inc. v. Court of Appeals, 344 Phil. 30, 44 (1997).
31 Urbanes, Jr. v. Court of Appeals, 407 Phil. 856, 867 (2001), citing Olaliav. Hizon, 274 Phil. 66, 72 (1991).
32Urbanes, Jr. v. Court of Appeals, id.
33 Francisco, V.J., THE REVISED RULES OF COURT IN THE PHILIPPINES, PROVISIONAL REMEDIES (2nd ed., 1985), p. 305.
34 Id. at 274.
35 116 Phil. 906,908(1962).
36 The appeal on the main case is pending before this Court, docketed as G.R. No. 211850.ChanRoblesVirtualawlibrary