No Filipino celebration is complete without the roasted pig or ‘lechon’. Some historians say that the Spaniards possibly introduced it when they came to the Philippines in the 16th century, since the word ‘lechon’ is Spanish for ‘pig’, and the dish resembled its cochinillo asado.
In the case of Emzee Foods v Elarfoods (GR No. 220558, February 17 2021), the Supreme Court, affirming the decision of the Court of Appeals found Emzee guilty of infringement and unfair competition, and further awarded Elarfoods damages and ordered Emzee to cease and desist from using the trademarks ‘Elarz Lechon’, ‘Elar Lechon’, ‘Pig Device’ and ‘On A Bamboo Tray’ on its products.
The contending marks are shown below:
According to the Supreme Court, applying the dominancy test, the word ‘Elar’ is the dominant feature of both marks and considering that they were used on the same ‘lechon’ products, the uncanny resemblance of the marks would even lead buyers to believe that Elarfoods and Emzee are the same entity. Moreover, one of Emzee’s incorporators and shareholders was a former trusted employee of Elarfoods, who had previously eagerly promoted the brand ‘Elar Lechon’, and this knowledge subsequently puts Emzee in bad faith and liable for damages.
Emzee’s defense is that Elarfoods is not the owner of the mark but belongs to the estate of the spouses Lontoc, and that there is no valid assignment to the latter making the goodwill earned over the years as belonging to the said spouses’ estate. For this, the Supreme Court has given scant consideration, considering that a trademark like any incorporeal right may be disposed of not only by way of assignment.
Besides, at the time the spouses incorporated Elarfoods, the marks were still unregistered and its assignment was perfected by mere consent without the need of a written contract. What is important according to the Supreme Court is that from the time of the incorporation of Elarfoods, it has exclusively used and appropriated the mark as its own. The fact that Elarfoods is the first entity to have registered the said marks in good faith makes it the true owner.
The interesting question is why, despite the overwhelming evidence of ownership of Elarfoods of its marks, Emzee insists that Elarfoods is not the owner of the mark. It may be that despite finding Emzee liable for infringement and unfair competition neither the Intellectual Property Office of the Philippines (IPOPHL) nor the Court of Appeals ordered that Emzee cease and desist from using the marks ‘Elarz Lechon’, ‘Elar Lechon’, ‘Pig Device’ and ‘On A Bamboo Tray’, which was a glaring omission noticed by the Supreme Court.
The absence of this injunction has allowed Emzee to continue and profit from its infringing acts for at least the last 20 years. In this decision the Supreme Court restored the liability of Emzee for exemplary damages and ordered that it cease and desist from using the marks.
Editha R Hechanova
President, Hechanova & Co
