Does an entity duly licensed to engage in the business of refilling, buying, selling, distributing and marketing liquefied petroleum gas (LPG) commit trade mark infringement when it refills containers bearing the registered marks of another entity without the latter's consent? Yes, said the Supreme Court of the Philippines in its decision issued on June 17 2013 in the case of Republic Gas Corporation et al, v Shell International et al (GR No 194062).
Petron Corporation and Pilipinas Shell Petroleum Corporation are two of the largest bulk suppliers and producers of LPG in the Philippines. Petron is the registered owner of the trade mark Gasul, while Pilipinas Shell is the authorised user in the Philippines of the trade marks of its principal, Shell International Petroleum Company Limited, such as the mark Shellane for LPG. Appellant Republic Gas Corporation (Regasco) is an entity duly licensed to engage in, conduct and carry on, the business of refilling, buying, selling, distributing and marketing at wholesale and retail LPG.
Some time in 2004, armed with search warrants, the National Bureau of Investigation (NBI) raided the refilling station of Regasco and seized several empty and filled Shellane and Gasul LPG cylinders. In 2005, a complaint for trade mark infringement and unfair competition was filed with the Department of Justice. During the preliminary investigation, the complaint was dismissed on the ground that no proof was introduced that would show that Regasco was engaged in selling Petron's and Shell's products or that it imitated and reproduced the registered trade marks, and that there was no deception on the part of Regasco in the conduct of its business of refilling and marketing LPG.
On appeal, the Secretary of Justice affirmed the decision of the prosecutor to dismiss the complaint. According to the Secretary, refilling the empty cylinders of Shellane and Gasul is by no means an offence in itself – it being the legitimate business of Regasco to engage in the refilling and marketing of liquefied petroleum gas. Further, the empty cylinders were merely swapped by customers for those which are already filled. In this case, the end-users know fully well that the contents of their cylinders are not those produced by Petron or Shell.
Unhappy with the ruling of the Secretary of Justice, Petron and Shell appealed to the Court of Appeals which granted its petition, and reversed the ruling of the former court. Regasco filed a petition for review on certiorari before the Supreme Court to question the decision of the Court of Appeal. In this case, applying Section 155 of the IP Code and citing the cases of Ty v De Jemil and Yao, Sr v People, the Supreme Court ruled that mere unauthorised use of a container bearing a registered trade mark in connection with the sale, distribution or advertising of goods or services which is likely to cause confusion, mistake or deception among the buyers/consumers can be considered as trade mark infringement.
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Editha R Hechanova |
Hechanova Bugay & Vilchez
GF Chemphil Building
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Makati City 1223
Philippines
Tel: +63 2 888 4293
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