GR L 45101; (November, 1986) (Digest)
G.R. No. L-45101 November 28, 1986
ROSARIO C. MAGUAN (formerly ROSARIO C. TAN), petitioner, vs. THE HONORABLE COURT OF APPEALS and SUSANA LUCHAN, respondents.
FACTS
Petitioner Rosario C. Maguan, doing business as Swan Manufacturing, held utility model patents for powder puffs. She demanded that private respondent Susana Luchan, operating as Susana Luchan Powder Puff Manufacturing, cease manufacturing and selling allegedly infringing products. Luchan refused, asserting that Maguan’s patents were void for lack of novelty and because Maguan was not the true author. Luchan subsequently filed petitions for the cancellation of these patents with the Philippine Patent Office.
Maguan then filed a complaint for damages with injunction in the Court of First Instance of Rizal. The trial court granted a writ of preliminary injunction, enjoining Luchan from manufacturing or selling products embodying the patented utility models. Luchan challenged this writ via a petition for certiorari in the Court of Appeals, arguing the injunction was improper given the pending cancellation proceedings and the alleged invalidity of the patents. The Court of Appeals initially dismissed Luchan’s petition but later, upon reconsideration, set aside its own decision and nullified the preliminary injunction. Maguan’s motion for reconsideration was denied, prompting this petition for review.
ISSUE
Whether the Court of Appeals erred in nullifying the writ of preliminary injunction issued by the trial court.
RULING
The Supreme Court affirmed the resolutions of the Court of Appeals. The legal logic centers on the propriety of the extraordinary remedy of certiorari and the prerequisites for a preliminary injunction. The Court of Appeals correctly exercised its certiorari jurisdiction because the trial court’s issuance of the injunction constituted a grave abuse of discretion. For a preliminary injunction to issue, two requisites must concur: the existence of a right to be protected and the violation of that right. Here, the right asserted by Maguan was based on patents whose validity was directly and seriously contested by Luchan in pending cancellation proceedings before the Patent Office.
Given this substantive challenge to the patents’ validity, the trial court’s injunctive order, which was broadly worded and could bar Luchan from selling any powder puff, was premature and overreaching. The ordinary remedy of appeal was inadequate to address the immediate and irreparable injury caused by an improperly issued injunction. Therefore, certiorari was the appropriate remedy to correct the trial court’s grave abuse of discretion. The Court also clarified that the trial judge was merely a nominal party in the certiorari proceedings and that the defense of patent invalidity in an infringement action is not subject to prescription. Consequently, the Court of Appeals acted correctly in setting aside the preliminary injunction pending the resolution of the patent’s validity.