GR L 17049; (May, 1961) (Digest)
G.R. No. L-17049; May 31, 1961
PAULA RECARO, doing business under the name and style, “BIG FIVE PRODUCTS”, and THING ONG, plaintiffs-appellees, vs. NESTOR EMBISAN, doing business under the name and style “NEL’S COFF PRODUCTS”, defendant-appellant.
FACTS
Plaintiff Paula Recaro, doing business as “BIG FIVE PRODUCTS”, is the registered owner of the trademark “BIG FIVE 5” for repacked vegetable lard. She filed a complaint against defendant Nestor Embisan, doing business as “Nel-Coff Products”, alleging that his use of the unregistered trademark “Nel’s Big 3 Lard” on similar vegetable lard products constituted infringement and unfair competition. Plaintiff asserted that defendant’s label was a colorable imitation likely to cause public confusion. Defendant, in his answer, generally denied the allegations for lack of knowledge and claimed his mark was not an imitation. He also asserted he had already substituted his label with “MARCA 3 LARD” to avoid misunderstanding.
Plaintiff moved for summary judgment, attaching an affidavit and documents proving her ownership and registration of the “BIG FIVE 5” trademark. She argued that defendant’s answer raised no genuine issue of fact and that his claim of substitution implied an admission of the initial infringement. The trial court granted the motion, issuing a permanent injunction against defendant, awarding plaintiff attorney’s fees, and dismissing defendant’s counterclaim for damages.
ISSUE
Whether the trial court erred in rendering a summary judgment and granting a permanent injunction.
RULING
The Supreme Court affirmed the trial court’s decision. Summary judgment was proper as no genuine issue of material fact existed for trial. Plaintiff substantiated her claim of registered trademark ownership through an affidavit and certified documents, which defendant failed to specifically deny or contradict with opposing evidence. A mere comparison of the labels—plaintiff’s “BIG FIVE 5” and defendant’s original “Nel’s Big 3 Lard”—revealed such resemblance in general appearance as was likely to deceive ordinary purchasers, establishing infringement.
The Court rejected defendant’s argument that his voluntary substitution of labels rendered the case moot. This allegation was unsupported by affidavit and did not preclude the grant of a permanent injunction, which was necessary to prevent defendant from resuming the infringing use. The nominal award of attorney’s fees was justified by the legal services rendered. Defendant’s counterclaim for damages was correctly dismissed as the suit was neither false nor unfounded.