Stiff prison term imposed for imitating JOLLIBEE logo

In People of the Philippines v Chua (November 19 2007), the Court of Appeals has not only affirmed the conviction of Richard Chua for violation of the Intellectual Property Code, but also increased the two-year prison term imposed by the trial court to an indeterminate sentence of two to five years.

This case is one of the few that resulted in a conviction and prison term for the infringer. In the majority of infringement cases, the aggrieved trademark owners opt for civil proceedings to seek compensation.

Under the code, trademark owners may file:

• an administrative action under Section 10(2);
  
  
• a civil action under Section 155; or
  
  
• a criminal action under Section 170.

Under Section 170, the courts have discretion to impose a prison term that is proportional to the seriousness of the offence.

Jollibee Food Corporation, the registered owner of the JOLLIBEE trademark for food products, has numerous outlets throughout the Philippines and in other countries. Richard Chua sold shoes and slippers bearing the trademark JOLILBEE. Jollibee filed a criminal action against Chua for infringement of its rights in the trademark JOLLIBEE. The case made its way to the Court of Appeals.

The court found that Chua "practically duplicated" the JOLLIBEE mark; the one-letter difference between JOLLIBEE and JOLILBEE was clearly insufficient to prevent confusion among consumers. The court also found that Chua imitated the bee logo which always accompanies the JOLLIBEE mark.

Chua argued that there was no likelihood of confusion between the marks because he was engaged in the business of selling shoes and slippers, while Jollibee was in the food business. The court rejected this argument on the following grounds:

"Looking at the mark used by the appellant on shoes and slippers, there is a strong likelihood that the purchasing public will be deceived or mistaken. The similarities between the two marks are so pronounced that the inevitable conclusion is that the JOLILBEE mark was deliberately used to deceive and to capitalize on Jollibee's reputation and goodwill."

The court also confirmed that JOLLIBEE was considered to be a well-known mark, as Jollibee possessed numerous retail outlets in the country and had a foothold in other Asian countries and in the United States. The court thus held that Chua had violated Jollibee's exclusive rights in the JOLLIBEE mark under Section 123 of the code, which reads as follows:

"A mark cannot be registered if it:

(f) is identical or confusingly similar to, or constitutes a translation of a mark that is considered well known in accordance with the preceding paragraph and is registered in the Philippines with respect to goods or services which are not similar to those with respect to which registration is sought, provided that use of the mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered mark, and provided that the interests of the owner of the registered mark are likely to be damaged by such use."

According to the court, consumers would be led to believe that the shoes and slippers bearing the JOLILBEE mark had been produced by Jollibee. This caused detriment to Jollibee as it had no way of monitoring the quality of the goods sold by Chua.

The fact that over 2,000 pairs of shoes bearing the JOLILBEE mark were seized at Chua's store justified the lengthy prison term imposed by the court.

Vicente B Amador, SyCip Salazar Hernandez & Gatmaitan, Manila