GR 170891; (November, 2009) (Digest)
G.R. No. 170891 ; November 24, 2009
MANUEL C. ESPIRITU, JR., ET AL., Petitioners, vs. PETRON CORPORATION and CARMEN J. DOLOIRAS, Respondents.
FACTS
Respondent Petron Corporation sold LPG in cylinder tanks bearing its trademark “Gasul,” distributed in Sorsogon by respondent Carmen J. Doloiras’s Kristina Patricia Enterprises (KPE). Petitioners were officers and directors of Bicol Gas Refilling Plant Corporation, which sold LPG under the brand “Bicol Savers Gas.” In August 2001, KPE’s manager observed a Bicol Gas truck carrying a 50-kg Gasul tank. Upon inspection, Bicol Gas employees admitted the tank, belonging to a customer, had been refilled by Bicol Gas. KPE’s sales volume had also dropped significantly.
KPE filed a complaint for violation of Republic Act No. 623 (illegally filling registered cylinders), trademark infringement, and unfair competition. The provincial prosecutor found probable cause only for violation of R.A. 623 against four Bicol Gas employees. On petition for review, the Secretary of Justice sustained this. Respondents then filed a special civil action for certiorari with the Court of Appeals.
ISSUE
The primary issues were: (1) the sufficiency of the certificate of non-forum shopping signed by respondents’ counsel; and (2) whether the facts warranted charges for unfair competition and trademark infringement against the petitioners.
RULING
The Supreme Court granted the petition, reversing the Court of Appeals. On the procedural issue, the Court held the certificate of non-forum shopping was defective. The certification must be signed by the party, not merely by counsel, unless a special authority is shown. Here, only the counsel for Petron signed, without proof of authority, rendering the petition dismissible.
On the substantive merits, the Court ruled no probable cause existed for unfair competition or trademark infringement. The act of refilling a competitor’s registered LPG tank with one’s own product constitutes a violation of R.A. 623, a special law. This act, by itself, does not automatically constitute the distinct offenses under the Intellectual Property Code. For unfair competition under Section 169.1, there must be a showing of “passing off” one’s goods as those of another, creating confusion. The mere refilling does not establish that Bicol Gas attempted to sell its gas as “Gasul.” For trademark infringement under Section 155, the use of a registered mark must be in connection with the sale of goods. The act of refilling a captured tank is not a “use in commerce” of the Gasul trademark to identify Bicol Gas’s own goods. Therefore, the only applicable offense was the violation of R.A. 623. The charges against the corporate officers and directors were also correctly dismissed, as the acts were committed by employees without evidence of the officers’ direct participation or indispensable cooperation.