Philippines: Supreme Court addresses the battle of the roasted pig
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Philippines: Supreme Court addresses the battle of the roasted pig

Sponsored by

hechanova-400px.png
carolina-garcia-tavizon-gli8lcaifpa-unsplash-1.jpg

Editha R Hechanova of Hechanova & Co Inc explores a recent judgment in a two-decade long trademark infringement case between two prominent lechon retailers

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:

elarfoods

Emzee

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

E: editharh@hechanova.com.ph

 

more from across site and ros bottom lb

More from across our site

A 36-member team from Zhong Lun Law Firm, including six partners, will join the newly formed East IP Group
The Delhi High Court sided with Ericsson against Indian smartphone maker Lava, bringing the companies' nine-year dispute to a close
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Tennessee has passed the ELVIS Act, a law that fights against AI models that mimic the voice and likeness of music artists
Rob Stien, chief communications and public policy officer at InterDigital, says the EU has forgotten innovators while trying to solve an issue that doesn’t exist
As Australia’s Qantm IP leans towards being acquired by a private equity company, sources discuss what it could mean for IP firms
Law firms that are conscious of their role in society are more likely to win work, according to a survey of over 23,000 in-house professionals
Nghiem Xuan Bac Pham, managing partner of Vision & Associates, discusses opportunities created by the US-China rift as well as profitability issues facing IP practices
Douglas Leite and two of his colleagues were intrigued by Bhering Advogados’s mission to grow its patent litigation practice
Each week Managing IP speaks to a different IP practitioner about their life and career
Gift this article