Co San v. Director of Patents
REITERATIONFacts
1. The Antecedents: Respondent Jose Ong Lian Bio obtained Letters Patent Nos. 6 and 7 for two designs for luggage. Petitioner Co San subsequently filed a petition with the Patent Office seeking the cancellation of these letters patent. The grounds for cancellation alleged were that the designs were not patentable under Republic Act No. 165 and that the submitted specifications did not comply with the Act's requirements. 2. Procedural History: The Director of Patents initially dismissed Co San's petition for cancellation without a hearing, citing a lack of statutory authority to cancel design patents. However, this Court ordered the Director of Patents to hear the petition. Following a hearing where Co San presented documentary evidence and relied on a Court of Appeals decision acquitting him of unfair competition, the Director of Patents dismissed the petition again, finding the evidence insufficient. The petitioner appealed this dismissal. 3. The Petition: The petitioner contends that the Director of Patents erred by not accepting the Court of Appeals' findings of fact as conclusive, specifically regarding prior use and the novelty and originality of the designs. The petitioner argues these findings should have bound the Director of Patents in the cancellation proceedings. The core issue presented to this Court is whether the Director of Patents is bound by the findings of fact made by the Court of Appeals in a prior criminal case involving unfair competition.
Issue(s)
Whether the Director of Patents is bound by the findings of fact of the Court of Appeals in a criminal case for unfair competition when ruling on a petition for cancellation of design patents. Whether the petition for cancellation of design patents should be dismissed for insufficiency of evidence.
Ruling
The petition for review is dismissed. The Director of Patents is not bound by the findings of fact of the Court of Appeals in a criminal case for unfair competition when ruling on a petition for cancellation of design patents. The petition for cancellation was dismissed for lack of sufficient evidence.
Ratio Decidendi
On the issue of whether the Director of Patents is bound by the findings of the Court of Appeals: The Court held in the negative. The cancellation proceedings before the Patent Office concern the validity of the design patents issued to Jose Ong Lian Bio, which falls under the cognizance of the Patent Office pursuant to Section 28 of Republic Act No. 165, as amended. In contrast, the criminal case for unfair competition was under the jurisdiction of the court of first instance, as defined by Article 189 of the Revised Penal Code, as amended by Republic Act No. 172. The acquittal in the criminal case was not based on the cancellation of a patent but on the finding that the petitioner had not deceived or defrauded the complainant. The Court reiterated the principle that the failure of a trial court in a civil suit to admit in evidence a former judgment of acquittal in a criminal action against the defendant is not an error, as insufficient evidence in a criminal prosecution does not bar a civil action for damages. Furthermore, a judgment of acquittal in a criminal action for fraudulent trademark registration cannot be invoked as res judicata in a civil action for unfair competition if the facts in the latter case are different and were not passed upon in the former judgment. On the issue of sufficiency of evidence: The Court agreed with the Director of Patents that the petition for cancellation should be dismissed for lack of sufficient evidence. The petitioner failed to present evidence that would conclusively establish the grounds for cancellation, relying instead on findings from a separate criminal proceeding with a different scope and jurisdiction. The findings of the Court of Appeals, which the petitioner sought to have deemed conclusive, were not considered "clear", "satisfactory" and "free from doubt" by the Director of Patents in the context of the patent cancellation proceedings.
Main Doctrine
The findings of fact of the Court of Appeals in a criminal case for unfair competition are not binding on the Director of Patents in a cancellation proceeding for design patents, as the issues and jurisdictions are distinct.