Samson vs. Daway G.R. No. 160054-55 | July 21, 2004 | Ynares-Santiago, J. Ynares-Santiago, J. Petitioner: Manolo P. Samson Respondents: Hon. Reynaldo Daway (RTC Quezon City), People of the Philippines, and Caterpillar, Inc. Summary: Samson is the registered owner of ITTI Shoes. He was charged with a criminal complaint for unfair competition with the Quezon City RTC because he sells imitations of Caterpillar products, to the damage and prejudice of respondent Caterpillar Inc. He filed a motion to suspend arraignment because of the existence of an alleged prejudicial question involved in another civil case. This was denied by the trial court. Next, he also filed a motion to quash information alleging that the RTC has no jurisdiction over him. The Supreme Court ruled against him. In criminal/civil cases involving infringement of registered marks, unfair competition, false designation of origin and false description or representation, is lodged with the RTC, as provided under RA 166 or the Old Trademark Law. Note that at this time, the IPC was already enacted. However, the IPC did not repeal the provisions involving jurisdiction, hence, RA 166 as regards jurisdiction is still good law. Further, there can be no prejudicial question involved in this case. It i s important to note that under unfair competition, fraud is the common element. Also, an independent civil action may be filed under Art. 33 of the Civil Code for fraud. Being an independent civil action, there can be no prejudicial question. Facts:
Samson is the registered owner of ITTI Shoes. He was charged with two informations for unfair competition under the Intellectual Property Code (IPC). The following are the pertinent portions of the informations: Samson is the owner of ITTI Shoes/Mano Shoes Manufacturing Corporation. o It is located at Robinson’s Galleria, EDSA cor. Ortigas Avenue, QC. o Sometime in November 1999, Samson unlawfully distributed/sold Caterpillar products o (footwear, garments, clothing, bags, accessories) which are closely identical/colorable imitations of the authentic Caterpillar products and likewise using trademarks, symbols and/or designs as would cause confusion, mistake or deception on the part of the buying public to the damage and prejudice of CATERPILLAR, INC., the prior adopter, user and owner of the following internationally: “CATERPILLAR”, “CAT”, “CATERPILLAR & DESIGN”, “CAT AND DESIGN”, “WALKING MACHINES” and “TRACK -TYPE TRACTOR & DESIGN.” Samson filed a motion to suspend arraignment and other proceedings because of the existence of an alleged prejudicial question involved in another case (Civ Case No. Q-00-41446) involving unfair competition pending in the same RTC branch, as well as a petition for review with the Sec. of Justice assailing the Chief State Prosecutor’s resolution. RTC denied this. o He then filed a motion to quash the informations on the ground that the trial court has no jurisdiction over the offense. He contended that since under Section 170 of the IPC, the penalty of imprisonment for o unfair competition does not exceed six years, the offense is cognizable by the Municipal Trial Courts and not by the Regional Trial Court, per R.A. No. 7691. RTC also denied this. o Hence, this petition.
Issues/Held: (IMPT) Which court has jurisdiction over criminal and civil cases for violation of intellectual property rights? – rights? – RTC. RTC. Samson is wrong. Was there a prejudicial question involved in this case as claimed by the accused? – NO. NO. Judge correctly dismissed the motion to suspend arraignment. Whether the pendency of the petition for review with the SOJ on the finding of probable cause for unfair competition shall suspend t he proceedings – proceedings – NO. NO.
Ratio
Jurisdiction Issue Under Section 170 of the IPC, which took effect on January 1, 1998, the criminal penalty for infringement of registered marks, unfair competition, false designation of origin and false description or representation, is imprisonment from 2 to 5 years and a fine ranging from Fifty Thousand Pesos to Two Hundred Thousand Pesos, Corollarily, Section 163 of the same Code states that actions (including criminal and civil) under Sections 150, 155, 164, 166, 167, 168 and 169 shall be brought before the proper courts with appropriate jurisdiction under existing laws. The existing law referred to here is Sec. 27 of RA 166 (The OLD Trademark Law)! o It provides that jurisdiction over cases for infringement of registered marks, unfair o competition, false designation of origin and false description or representation, is lodged with the Court of First Instance (now Regional Trial Court) Now, Samson is claiming that RA 166 is already repealed by the IPC. Ho wever, this is not so, because: The repealing clause of the IPC reads that “all acts and parts of Acts inconsistent o herewith, more particularly RA 166 (and goes on to cite other laws), are hereby repealed). The use of the phrases “parts of Acts” and “inconsistent herewith” only means that the o repeal pertains only to provisions which are repugnant or not susceptible of harmonization with the IPC. Section 27 of R.A. No. 166, however, is consistent and in harmony with Section 163 of R.A. No. 8293. Had R.A. No. 8293 intended to vest jurisdiction over violations of intellectual property o rights with the Metropolitan Trial Courts, it would have expressly stated so under Section 163 thereof. Moreover, the settled rule in statutory construction is that in case of conflict between a general law and a special law, the latter must prevail. In this case, the IPC and RA 166 are special laws conferring jurisdiction over violations o of intellectual property rights to the RTC. o It should prevail over RA No 7691 (as cited by Samson) which is a general law. Hence, jurisdiction over the instant criminal case for unfair competition is properly o lodged with the Regional Trial Court even if the penalty therefor is imprisonment of less than 6 years, or from 2 to 5 years and a fine ranging from P50,000.00 to P200,000.00. In fact, to implement and ensure the speedy disposition of cases involving violations of intellectual property rights under the IPC, the Court issued A.M. No. 02-1-11-SC dated February 19, 2002 designating certain Regional Trial Courts as Intellectual Property Courts. On June 17, 2003, the Court further issued a Resolution consolidating jurisdiction to hear o and decide Intellectual Property Code and Securities and Exchange Commission cases in specific Regional Trial Courts designated as Special Commercial Courts. Petitioner also cites the case of Mirpuri in arguing that RA 166 was already repealed totally by the IPC. However, such argument has no merit because there is no categorical ruling that violation of IP rights is lodged with the MTC. Also, the mere passing remark in that case was merely a backgrounder to the enactment of the IPC and cannot be construed as a pronouncement in cases for violation of intellectual property rights. Prejudicial Question Issue Samson failed to substantiate his allegations of prejudicial question. In any case, there is no prejudicial question if the civil and the criminal action can, according to law, proceed independently of each other. In the case at bar, the common element in the acts constituting unfair competition under Section 168 of the IPC is fraud. Pursuant to Article 33 of the Civil Code, in cases of defamation, fraud, and physical o injuries, a civil action for damages, entirely separate and distinct from the criminal action, may be brought by the injured party.
o
Hence, Civil Case No. Q-00-41446, which as admitted by private respondent also relate to unfair competition, is an independent civil action under Article 33 of the Civil Code. As such, it will not operate as a prejudicial question that will justify the suspension of the criminal cases at bar.
Petition for Review Issue According to the Rules, while the pendency of a petition for review is a ground for suspension of the arraignment, the aforecited provision limits the deferment of the arraignment to a period of 60 days reckoned from the filing of the petition with the reviewing office. Hence, after the expiration of said period, the trial court is bound to arraign the accused o or to deny the motion to defer arraignment. In this case, Samson failed to substantiate his allegations/failed to discharge the burden of proving that he was entitled to a suspension of his arraignment. His pleadings and annexes do not show the date of filing of the petition of review with o the SOJ.
