G.R. No. 39483 ; April 18, 1934
JOSE L. UY, plaintiff-appellant, vs. ANASTASIO SANTOS, defendant-appellee.

FACTS

Plaintiff Jose L. Uy discovered that defendant Anastasio Santos had been illegally using his registered trademark on products from the distillery “La Suerte” since 1929. The defendant requested permission to exhaust his remaining stock of labels bearing the trademark, promising to discontinue use afterward. The plaintiff consented and did not immediately file a judicial proceeding. He later filed a complaint seeking not only an injunction but also indemnity for damages arising from the trademark violation.

ISSUE

Whether the plaintiff-appellant is entitled to an indemnity for damages due to the defendant’s violation of the trademark, considering the plaintiff’s initial consent to the use of the remaining labels.

RULING

No. The Supreme Court affirmed the trial court’s judgment, which perpetually enjoined the defendant from using the trademark but absolved the defendant from paying indemnity for damages. The Court held that the plaintiff consented to the defendant’s use of the remaining labels and did not issue any prohibition against such use until the filing of the complaint. Therefore, the plaintiff cannot claim damages for an illegal use to which he had initially agreed. The defendant was found to have violated Act No. 666 (the trademark law), but the plaintiff’s conduct barred recovery of monetary indemnity.

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