Supreme Court Decides "Big Mak" Controversy
McDonald's Corp. vs. L.G. Big Mak Burger, Inc.,
G.R. No. 143993, 18 August 2004
The Supreme Court has settled the issue on whether the use of "Big Mak" on hamburgers by a
domestic corporation operating fast food outlets and snack vans constitutes trademark
infringement and unfair competition in relation to McDonald's "Big Mac" trademark.
In a decision dated 18 August 2004 written by Justice Antonio Carpio for the First Division, the
Court ruled that L.C. Big Mak Burger, Inc. is indeed liable for trademark infringement and unfair
competition. Actual damages, exemplary damages, attorney's fees and costs of the suit were
awarded to the plaintiffs McDonald's Corporation and McGeorge Food Industries, Inc.
To establish trademark infringement under the old trademark law (R.A. No. 166) the Court ruled
that the following elements must be shown: 1) the validity of the plaintiff's mark; 2) the
plaintiff's ownership of the mark; and 3) the use of the mark or its colorable imitation by the
alleged infringer results in a likelihood of confusion.
Citing Section 22 of the trademark law, the Court discussed that there are 2 types of confusion
that arise from the use of similar marks: product confusion (as to the goods themselves) and
source/origin confusion (as to the identity of businesses). The defendants admittedly used "Big
Mak" on its hamburgers plus the fact that it is engaged in the same line of business (fast food),
the Court concluded that confusion as to competing goods and as to identity of source would
The Court rejected the defendants' arguments that they used "Big Mak" on other food products
like siopao, pizza, and noodles; that the packaging of their hamburgers are different; and that
they sell their food through mobile vans as compared to the popular McDonald's chain stores
which are normally in airconditioned buildings with drive thru service.
The "dominancy test" where the dominant features of the competing marks are considered was
used by the Court to determine likelihood of confusion. It found the two marks to be confusingly
similar in that: 1) "Big Mak" and "Big Mac" sound exactly same; 2) the first words are exactly
the same; 3) the first 2 letters in "Mak" are the same as the first 2 letters in "Mac"; 4) the "k" in
"Mak" sounds the same as "c" and 5) In Filipino, the letter "k" replaces "c" in spelling, e.g.
"Caloocan" is spelled "Kalookan." The court significantly rejected the "holistic test" as it firmly
established its preference for the "dominancy test."
In finding that there was indeed unfair competition, the Court rejected the defendants' arguments
that there were numerous differences in the packaging of their hamburgers. Those differences
were "minor" compared to the "stark similarities" in the words used. "What attracts the attention
of the buying public," said the court, "are the words "Big Mak" which are the same, aurally and
visually, as the words "Big Mac." The dissimilarities in the material and other devices are
insignificant compared to the glaring similarity in the words used in the wrappings."
The Court also pointed out that during the injunctive hearings, plastic wrappers and bags with the
"Big Mak" mark without the name "L.C. Big Mak Burger, Inc." were presented by the plaintiff;
thus there was no actual notice to the public that the defendants' "Big Mak" hamburgers are
actually made by them, and their intent to deceive the public was thus shown.
Republic of the Philippines
G.R. No. 113388 September 5, 1997
ANGELITA MANZANO, petitioner,
COURT OF APPEALS, and MELECIA MADOLARIA, as Assignor to NEW UNITED
FOUNDRY MANUFACTURING CORPORATION, respondents.
The primary purpose of the patent system is not the reward of the individual but the
advancement of the arts and sciences. The function of a patent is to add to the sum of
useful knowledge and one of the purposes of the patent system is to encourage
dissemination of information concerning discoveries and inventions. This is a matter
which is properly within the competence of the Patent Office the official action of which
has the presumption of correctness and may not be interfered with in the absence of
new evidence carrying thorough conviction that the Office has erred. Since the Patent
Office is an expert body preeminently qualified to determine questions of patentability,
its findings must be accepted if they are consistent with the evidence, with doubts as to
patentability resolved in favor of the Patent Office. 1
Petitioner Angelita Manzano filed with the Philippine Patent Office on 19 February 1982
an action for the cancellation of Letters Patent No. UM-4609 for a gas burner registered
in the name of respondent Melecia Madolaria who subsequently assigned the letters
patent to New United Foundry and Manufacturing Corporation (UNITED FOUNDRY, for
brevity). Petitioner alleged that (a) the utility model covered by the letters patent, in this
case, an LPG gas burner, was not inventive, new or useful; (b) the specification of the
letters patent did not comply with the requirements of Sec. 14, RA No. 165, as
amended; (c) respondent Melecia Madolaria was not the original, true and actual
inventor nor did she derive her rights from the original, true and actual inventor of the
utility model covered by the letters patent; and, (d) the letters patent was secured by
means of fraud or misrepresentation. In support of her petition for cancellation petitioner
further alleged that (a) the utility model covered by the letters patent of respondent had
been known or used by others in the Philippines for more than one (1) year before she
filed her application for letters patent on 9 December 1979; (b) the products which were
produced in accordance with the utility model covered by the letters patent had been in
public use or on sale in the Philippines for more than one (1) year before the application
for patent therefor was filed.
Petitioner presented the following documents which she correspondingly marked as
exhibits: (a) affidavit of petitioner alleging the existence of prior art, marked Exh. "A;" (b)
a brochure distributed by Manila Gas Corporation disclosing a pictorial representation of
Ransome Burner made by Ransome Torch and Burner Company, USA, marked Exh.
"D;" and, (c) a brochure distributed by Esso Gasul or Esso Standard Eastern, Inc., of
the Philippines showing a picture of another similar burner with top elevation view and
another perspective view of the same burner, marked Exh. "E."
Testifying for herself petitioner narrated that her husband Ong Bun Tua worked as a
helper in the UNITED FOUNDRY where respondent Melecia Madolaria used to be
affiliated with from 1965 to 1970; that Ong helped in the casting of an LPG burner which
was the same utility model of a burner for which Letters Patent No. UM-4609 was
issued, and that after her husband's separation from the shop she organized Besco
Metal Manufacturing (BESCO METAL, for brevity) for the casting of LPG burners one of
which had the configuration, form and component parts similar to those being
manufactured by UNITED FOUNDRY. Petitioner presented in evidence an alleged
model of an LPG burner marked Exh. "K" and covered by the Letters Patent of
respondent, and testified that it was given to her in January 1982 by one of her
customers who allegedly acquired it from UNITED FOUNDRY. Petitioner also presented
in evidence her own model of an LPG burner called "Ransome" burner marked Exh. "L,"
which was allegedly manufactured in 1974 or 1975 and sold by her in the course of her
business operation in the name of BESCO METAL. Petitioner claimed that this
"Ransome" burner (Exh. "L") had the same configuration and mechanism as that of the
model which was patented in favor of private respondent Melecia Madolaria. Also
presented by petitioner was a burner cup of an imported "Ransome" burner marked Exh
"M" which was allegedly existing even before the patent application of private
Petitioner presented two (2) other witnesses, namely, her husband Ong Bun Tua and
Fidel Francisco. Ong testified that he worked as a helper in the UNITED FOUNDRY
from 1965 to 1970 where he helped in the casting of LPG burners with the same form,
configuration and mechanism as that of the model covered by the Letters Patent issued
to private respondent. Francisco testified that he had been employed with the Manila
Gas Corporation from 1930 to 1941 and from 1952 up to 1969 where he retired as
supervisor and that Manila Gas Corporation imported "Ransome" burners way back in
1965 which were advertised through brochures to promote their sale.
Private respondent, on the other hand, presented only one witness, Rolando Madolaria,
who testified, among others, that he was the General Supervisor of the UNITED
FOUNDRY in the foundry, machine and buffing section; that in his early years with the
company, UNITED FOUNDRY was engaged in the manufacture of different kinds of gas
stoves as well as burners based on sketches and specifications furnished by customers;
that the company manufactured early models of single-piece types of burners where the
mouth and throat were not detachable; that in the latter part of 1978 respondent Melecia
Madolaria confided in him that complaints were being brought to her attention
concerning the early models being manufactured; that he was then instructed by private
respondent to cast several experimental models based on revised sketches and
specifications; that private respondent again made some innovations; that after a few
months, private respondent discovered the solution to all the defects of the earlier
models and, based on her latest sketches and specifications, he was able to cast
several models incorporating the additions to the innovations introduced in the models.
Various tests were conducted on the latest model in the presence and under the
supervision of Melecia Madolaria and they obtained perfect results. Rolando Madolaria
testified that private respondent decided to file her application for utility model patent in
On 7 July 1986 the Director of Patents Cesar C. Sandiego issued Decision No. 86-56
denying the petition for cancellation and holding that the evidence of petitioner was not
able to establish convincingly that the patented utility model of private respondent was
anticipated. Not one of the various pictorial representations of business clearly and
convincingly showed that the devices presented by petitioner was identical or
substantially identical with the utility model of the respondent. The decision also stated
that even assuming that the brochures depicted clearly each and every element of the
patented gas burner device so that the prior art and patented device became identical
although in truth they were not, they could not serve as anticipatory bars for the reason
that they were undated. The dates when they were distributed to the public were not
indicated and, therefore, were useless prior art references. The records and evidence
also do not support the petitioner's contention that Letters Patent No. UM-4609 was
obtained by means of fraud and/or misrepresentation. No evidence whatsoever was
presented by petitioner to show that the then applicant Melecia Madolaria withheld with
intent to deceive material facts which, if disclosed, would have resulted in the refusal by
the Philippine Patent Office to issue the Letters Patent under inquiry.
Petitioner elevated the decision of the Director of Patents to the Court of Appeals which
on 15 October 1993 affirmed the decision of the Director of Patents. Hence, this petition
for review on certiorari alleging that the Court of Appeals erred (a) in relying on
imaginary differences which in actuality did not exist between the model of private
respondent covered by Letters Patent No. UM-4609 and the previously known model of
Esso Standard Eastern, Inc., and Manila Gas Corporation, making such imaginary
differences grounded entirely on speculation, surmises and conjectures; (b) in rendering
judgment based on misapprehension of facts; (c) in relying mainly on the testimony of
private respondent's sole witness Rolando Madolaria; and, (d) in not cancelling Letters
Patent No. UM-4609 in the name of private respondent.
Petitioner submits that the differences cited by the Court of Appeals between the utility
model of private respondent and the models of Manila Gas Corporation and Esso
Standard Eastern, Inc., are more imaginary than real. She alleges that based on Exhs.
"E," "E-1," "F" and "F-1" or the brochures of Manila Gas Corporation and Esso Standard
Eastern, Inc., presented by petitioner, the cup-shaped burner mouth and threaded hole
on the side are shown to be similar to the utility model of private respondent. The
exhibits also show a detachable burner mouth having a plurality of upwardly existing
undulations adopted to act as gas passage when the cover is attached to the top of said
cup-shaped mouth all of which are the same as those in the patented model. Petitioner
also denies as substantial difference the short cylindrical tube of the burner mouth
appearing in the brochures of the burners being sold by Manila Gas Corporation and the
long cylindered tube of private respondent's model of the gas burner.
Petitioner argues that the actual demonstration made during the hearing disclosed the
similarities in form, operation and mechanism and parts between the utility model of
private respondent and those depicted in the brochures. The findings of the Patent
Office and the Court of Appeals that the brochures of Manila Gas Corporation and Esso
Standard Eastern, Inc., are undated cannot overcome the fact of their circulation before
private respondent filed her application for utility model patent. Petitioner thus asks this
Court to take judicial notice of the fact that Esso Standard Eastern, Inc., disappeared
before 1979 and reappeared only during the Martial Law years as Petrophil Corporation.
Petitioner also emphasizes that the brochures indicated the telephone number of Manila
Gas Corporation as 5-79-81 which is a five (5) numbered telephone number existing
before 1975 because telephones in Metro Manila started to have six (6) numbers only
after that year.
Petitioner further contends that the utility model of private respondent is absolutely
similar to the LPG burner being sold by petitioner in 1975 and 1976, and also to the
"Ransome" burner depicted in the old brochures of Manila Gas Corporation and Esso
Standard Eastern, Inc., fabricated by Ransome Torch and Burner Company of Oakland,
California, USA, especially when considered through actual physical examination,
assembly and disassembly of the models of petitioner and private respondent.
Petitioner faults the Court of Appeals for disregarding the testimonies of Ong Bun Tua
and Fidel Francisco for their failure to produce documents on the alleged importation by
Manila Gas Corporation of "Ransome" burners in 1965 which had the same
configuration, form and mechanism as that of the private respondent's patented model.
Finally, it is argued that the testimony of private respondent's lone witness Rolando
Madolaria should not have been given weight by the Patent Office and the Court of
Appeals because it contained mere after-thoughts and pretensions.
We cannot sustain petitioner. Section 7 of RA No. 165, as amended, which is the law on
patents, expressly provides —
Sec. 7. Inventians patentable. Any invention of a new and useful machine, manufactured product
or substance, process or an improvement of any of the foregoing, shall be patentable.
Further, Sec. 55 of the same law provides —
Sec. 55. Design patents and patents for utility models. — (a) Any new, original and ornamental
design for an article of manufacture and (b) any new model of implements or tools or of any
industrial product or of part of the same, which does not possess the quality of invention, but
which is of practical utility by reason of its form, configuration, construction or composition, may
be protected by the author thereof, the former by a patent for a design and the latter by a patent
for a utility model, in the same manner and subject to the same provisions and requirements as
relate to patents for inventions insofar as they are applicable except as otherwise herein
The element of novelty is an essential requisite of the patentability of an invention or
discovery. If a device or process has been known or used by others prior to its invention
or discovery by the applicant, an application for a patent therefor should be denied; and
if the application has been granted, the court, in a judicial proceeding in which the
validity of the patent is drawn in question, will hold it void and ineffective. 2 It has been
repeatedly held that an invention must possess the essential elements of novelty,
originality and precedence, and for the patentee to be entitled to the protection the
invention must be new to the world. 3
In issuing Letters Patent No. UM-4609 to Melecia Madolaria for an "LPG Burner" on 22
July 1981, the Philippine Patent Office found her invention novel and patentable. The
issuance of such patent creates a presumption which yields only to clear and cogent
evidence that the patentee was the original and first inventor. The burden of proving
want of novelty is on him who avers it and the burden is a heavy one which is met only
by clear and satisfactory proof which overcomes every reasonable doubt. 4 Hence, a
utility model shall not be considered "new" if before the application for a patent it has
been publicly known or publicly used in this country or has been described in a printed
publication or publications circulated within the country, or if it is substantially similar to
any other utility model so known, used or described within the country. 5
As found by the Director of Patents, the standard of evidence sufficient to overcome the
presumption of legality of the issuance of UM-4609 to respondent Madolaria was not
legally met by petitioner in her action for the cancellation of the patent. Thus the Director
of Patents explained his reasons for the denial of the petition to cancel private
respondent's patent —
Scrutiny of Exhs. "D" and "E" readily reveals that the utility model (LPG Burner) is not anticipated.
Not one of the various pictorial representations of burners clearly and convincingly show that the
device presented therein is identical or substantially identical in construction with the aforesaid
utility model. It is relevant and material to state that in determining whether novelty or newness is
negatived by any prior art, only one item of the prior art may be used at a time. For anticipation to
occur, the prior art must show that each element is found either expressly or described or under
principles of inherency in a single prior art reference or that the claimed invention was probably
known in a single prior art device or practice. (Kalman v. Kimberly Clark, 218 USPQ 781, 789)
Even assuming gratia arguendi that the aforesaid brochures do depict clearly on all fours each
and every element of the patented gas burner device so that the prior art and the said patented
device become identical, although in truth they are not, they cannot serve as anticipatory bars for
the reason that they are undated. The dates when they were distributed to the public were not
indicated and, therefore, they are useless prior art references.
xxx xxx xxx
Furthermore, and more significantly, the model marked Exh. "K" does not show whether or not it
was manufactured and/or cast before the application for the issuance of patent for the LPG
burner was filed by Melecia Madolaria.
With respect to Exh. "L," petitioner claimed it to be her own model of LPG burner allegedly
manufactured sometime in 1974 or 1975 and sold by her in the course of her business operation
in the name of Besco Metal Manufacturing, which burner was denominated as "Ransome" burner
xxx xxx xxx
But a careful examination of Exh. "L" would show that it does not bear the word "Ransome" which
is the burner referred to as the product being sold by the Petitioner. This is not the way to prove
that Exh. "L" anticipates Letters Patent No. UM-4609 through Exhs. "C" and "D." Another factor
working against the Petitioner's claims is that an examination of Exh. "L" would disclose that there
is no indication of the time or date it was manufactured. This Office, thus has no way of
determining whether Exh. "L" was really manufactured before the filing of the aforesaid
application which matured into Letters Patent No. UM-4609, subject matter of the cancellation
At this juncture, it is worthwhile to point out that petitioner also presented Exh. "M" which is the
alleged burner cup of an imported "Ransome" burner. Again, this Office finds the same as
unreliable evidence to show anticipation. It observed that there is no date indicated therein as to
when it was manufactured and/or imported before the filing of the application for issuance of
patent of the subject utility model. What is more, some component parts of Exh. "M" are missing,
as only the cup was presented so that the same could not be compared to the utility model
(subject matter of this case) which consists of several other detachable parts in combination to
form the complete LPG burner.
xxx xxx xxx
It must likewise be pointed out that Ong Bun Tua testified on the brochures allegedly of Manila
Gas and of Esso Gasul marked Exhs. "E" and "F" and on the alleged fact that Manila Gas
Corporation was importing from the United States "Ransome" burners. But the same could not be
given credence since he himself admitted during cross-examination that he has never been
connected with Manila Gas Corporation. He could not even present any importation papers
relating to the alleged imported ransome burners. Neither did his wife.
The above findings and conclusions of the Director of Patent were reiterated and
affirmed by the Court of Appeals. 7
The validity of the patent issued by the Philippine Patent Office in favor of private
respondent and the question over the inventiveness, novelty and usefulness of the
improved model of the LPG burner are matters which are better determined by the
Patent Office. The technical staff of the Philippine Patent Office composed of experts in
their field has by the issuance of the patent in question accepted private respondent's
model of gas burner as a discovery. There is a presumption that the Office has correctly
determined the patentability of the model 8 and such action must not be interfered with in
the absence of competent evidence to the contrary.
The rule is settled that the findings of fact of the Director of Patents, especially when
affirmed by the Court of Appeals, are conclusive on this Court when supported by
substantial evidence. Petitioner has failed to show compelling grounds for a reversal of
the findings and conclusions of the Patent Office and the Court of Appeals.
The alleged failure of the Director of Patents and the Court of Appeals to accord
evidentiary weight to the testimonies of the witnesses of petitioner showing anticipation
is not a justification to grant the petition. Pursuant to the requirement of clear and
convincing evidence to overthrow the presumption of validity of a patent, it has been
held that oral testimony to show anticipation is open to suspicion and if uncorroborated
by cogent evidence, as what occurred in this case, it may be held insufficient. 9
Finally, petitioner would want this Court to review all over again the evidence she
presented before the Patent Office. She argues that contrary to the decision of the
Patent Office and the Court of Appeals, the evidence she presented clearly proves that
the patented model of private respondent is no longer new and, therefore, fraud
attended the acquisition of patent by private respondent.
It has been held that the question on priority of invention is one of fact. Novelty and
utility are likewise questions of fact. The validity of patent is decided on the basis of
factual inquiries. Whether evidence presented comes within the scope of prior art is a
factual issue to be resolved by the Patent Office. 10 There is question of fact when the
doubt or difference arises as to the truth or falsehood of alleged facts or when the query
necessarily invites calibration of the whole evidence considering mainly the credibility of
witnesses, existence and relevance of specific surrounding circumstances, their relation
to each other and to the whole and the probabilities of the situation. 11
Time and again we have held that it is not the function of the Supreme Court to analyze
or weigh all over again the evidence and credibility of witnesses presented before the
lower tribunal or office. The Supreme Court is not a trier of facts. Its jurisdiction is limited
to reviewing and revising errors of law imputed to the lower court, its findings of fact
being conclusive and not reviewable by this Court.
WHEREFORE, the Petition is DENIED. The Decision of the Court of Appeals affirming
that of the Philippine Patent Office is AFFIRMED. Costs against petitioner.
Vitug, Kapunan and Hermosisima, Jr., JJ., concur.
1 60 AmJur 2d 462.
2 40 AmJur 547.
3 Maguan v. Court of Appeals, No. L-45101, 28 November 1986, 146 SCRA 107.
4 60 AmJur 2d 573.
5 Sec. 55. RA No. 165, as amended.
6 Rollo, pp. 143-167.
7 Id., pp. 204-214.
8 Aguas v. de Leon, No. L-32160, 30 January 1982, 111 SCRA 238.
9 60 AmJur 2d 573.
10 Id., p. 582.
11 Bernardo v. Court of Appeals, G.R. No. 101680, 2 December 1992, 216 SCRA 224.
Doctrine of Equivalents: Its Equivalence in the Philippines
By: Jonathan Q. Perez
I. What is the "doctrine of equivalents"?
Patent infringement is ordinarily understood to mean as the unauthorized replication or use of a
patented invention or process. Technically, however, patent infringement is committed either
literally or by equivalents. Literal infringement exists when every limitation recited in a patent
claim is found in the infringing device (or process). Infringement by equivalents, on the other
hand, happens when a device (or process) appropriates a prior invention by incorporating its
innovative concept and, although with some modification and change, performs substantially the
same function in substantially the same way to achieve substantially the same result. This
"function-way-result" equation lies at the heart of the doctrine of equivalents.
The doctrine of equivalents is a common law concept borne out of American jurisprudence. It is
an equitable measure to protect patentees against deliberate efforts of infringers to evade liability
for infringement by making only insubstantial changes to a patented invention. In other words, it
extends protection beyond the specific and literal claims of patents. In one of its recent decisions,
the U.S Supreme Court restated the time-honored rationale behind the application of the doctrine
The language in the patent claims may not capture every nuance of the invention or describe with
complete precision the range of its novelty. If patents were always interpreted by their literal
terms, their value would be greatly diminished. Unimportant and insubstantial substitutes for
certain elements could defeat the patent, and its value to inventors could be destroyed by simple
acts of copying. For this reason, the clearest rule of patent interpretation, literalism, may
conserve judicial resources but is not necessarily the most efficient rule. The scope of a patent is
not limited to its literal terms but instead embraces all equivalents to the claims described. (Festo
v. Shoketsu Kogyo Kabushiki Co. Ltd., 535 U.S. 722, 152 L. Ed. 2d 944. 122 S. Ct. 1831
II. The Doctrine as Entrenched in American Jurisprudence
One of the earliest manifestations of the doctrine of equivalents in American jurisprudence was
in Winans v. Denmead (15 How. 330, 347 ). In Winans, the doctrine was expressed in this
wise: "the exclusive right to the thing patented is not secured, if the public are at liberty to make
substantial copies of it, varying its form or proportions."
Close to a century later, the debate over whether the doctrine of equivalents should be afforded a
second look took center stage in Graver Tank & Mfg. Co. v. Linde Air Products Co. (339 U.S.
605 ). Clearing the air of doubts on the matter, the Court in Graver Tank ruled that "patent
claims must protect the inventor not only from those who produce devices falling within the
literal claims of the patent but also from copyists who make unimportant and insubstantial
changes and substitutions in the patent which, though adding nothing, would be enough to take
the copied matter outside the claim, and hence outside the reach of law."
Recently, the doctrine's stronghold as an important consideration in patent infringement
determination was reaffirmed in Warner-Jenkinson Co. v. Hilton Davis Chemical Co. (520 U.S.
17 ). Warner-Jenkinson held that:
If the essential predicate of the doctrine of equivalents is the notion of identity between a
patented invention and its equivalent, there is no basis for treating an infringing equivalent any
differently than a device that infringes the express terms of the patent.
While the doctrine of equivalents is firmly entrenched in American jurisprudence, its
applicability is nonetheless subject to limitations i.e. existence of prior art, technological
advances and prosecution history estoppel. These limitations had been subjects of numerous
cases decided by the U.S. Court of Appeals Federal Circuit and the U.S. Supreme Court, some of
the most significant of which are the so-called "Festo" rulings on the scope and extent of
prosecution history estoppel as a limitation to the applicability of the doctrine of equivalents
(please see related article entitled "Prosecution History Estoppel: Festo I and II Revisited").
Back To Top
III. Doctrine of Equivalents: Finding its niche in Philippine jurisprudence.
In the Philippines, the doctrine of equivalents finds statutory basis in Section 75.2 of R.A. No.
8293, otherwise known as the Intellectual Property Code ("IP Code"), which states:
For the purpose of determining the extent of protection conferred by the patent, due account shall
be taken of elements which are equivalent to the elements expressed in the claims, so that a claim
shall be considered to cover not only all the elements as expressed, but also equivalents.
However, in as far as Philippine jurisprudence is concerned, discussion on the doctrine of
equivalents is relatively scarce. In fact, only three cases delved on the subject of equivalents vis-
à-vis patent infringement. Surprisingly, the earliest mention of the doctrine was in Carlos Gsell
v. Valeriano Veloso Yap-Jue (G.R. No. 4720, January 19, 1909) where there was no substantial
discourse on the matter but merely a token reference to an American case.
In Pascual Godines v. Court of Appeals, et al. (G.R. No. 97343, September 13, 1993), the
Supreme Court relied on the doctrine of equivalents when it found patent infringement against an
individual for manufacturing and selling "power tillers" in substantially the same mold as that of
a patented model. In Pascual Godines, the doctrine as conceived and defined in American
jurisprudence, was re-stated, thus:
Recognizing that the logical fallback position of one in the place of defendant is to aver that his
product is different from the patented one, courts have adopted the doctrine of equivalents which
recognizes that minor modifications in a patented invention are sufficient to put the item beyond
the scope of literal infringement. Thus, according to this doctrine, "(a)n infringement also occurs
when a device appropriates a prior invention by incorporating its innovative concept and, albeit
with some modification and change, performs substantially the same function in substantially the
same way to achieve substantially the same result." The reason for the doctrine of equivalents is
that to permit the imitation of a patented invention which does not copy any literal detail would
be to convert the protection of the patent grant into a hollow and useless thing. Such imitation
would leave room for - indeed encourage - the unscrupulous copyist to make unimportant and
insubstantial changes and substitutions in the patent which, though adding nothing, would be
enough to take the copied matter outside the claim, and hence outside the reach of the law.
More recently, in Smith Kline Beckman Corp. v. Court of Appeals, et al. (G.R. No. 126627,
August 14, 2003), the Supreme Court struck down a patent infringement suit because the
petitioner fell short of substantiating the function-means-and-result requirement for infringement
by equivalents. It nevertheless reiterated its recognition of the doctrine of equivalents in Pascual
The doctrine of equivalents provides that an infringement also takes place when a device
appropriates a prior invention by incorporating its innovative concept and, although with some
modification and change, performs substantially the same function in substantially the same way
to achieve substantially the same result.
While the doctrine of equivalents is recognized in Philippine jurisprudence, the High Court has
yet to render an incisive discussion on the matter. Other than reference to the vast sources of
American case law on the doctrine, Philippine jurisprudence offers no hint as to the extent of its
applicability. As to how the Supreme Court would eventually appreciate the scope of prosecution
history estoppel, for instance, remains to be seen. Would the Supreme Court regard prosecution
history estoppel as a complete bar to the applicability of the doctrine of equivalents?
Alternatively, would the Court provide some leeway for patentees to refute estoppel?
At present, there may be very few cases dealing with prosecution history estoppel that are
pending with the Intellectual Property Office. However, until these cases actually reach the
Supreme Court and are resolved with finality, patent infringement litigants will have to rely
exclusively on American authorities for applicable case law on the matter
[G. R. No. 126627. August 14, 2003]
SMITH KLINE BECKMAN CORPORATION, petitioner, vs. THE HONORABLE COURT OF
APPEALS and TRYCO PHARMA CORPORATION, respondents.
Smith Kline Beckman Corporation (petitioner), a corporation existing by virtue of the laws of the
state of Pennsylvania, United States of America (U.S.) and licensed to do business in the
Philippines, filed on October 8, 1976, as assignee, before the Philippine Patent Office (now
Bureau of Patents, Trademarks and Technology Transfer) an application for patent over an
invention entitled “Methods and Compositions for Producing Biphasic Parasiticide Activity
Using Methyl 5 Propylthio-2-Benzimidazole Carbamate.” The application bore Serial No.
On September 24, 1981, Letters Patent No. 14561 for the aforesaid invention was issued to
petitioner for a term of seventeen (17) years.
The letters patent provides in its claims that the patented invention consisted of a new compound
named methyl 5 propylthio-2-benzimidazole carbamate and the methods or compositions
utilizing the compound as an active ingredient in fighting infections caused by gastrointestinal
parasites and lungworms in animals such as swine, sheep, cattle, goats, horses, and even pet
Tryco Pharma Corporation (private respondent) is a domestic corporation that manufactures,
distributes and sells veterinary products including Impregon, a drug that has Albendazole for its
active ingredient and is claimed to be effective against gastro-intestinal roundworms,
lungworms, tapeworms and fluke infestation in carabaos, cattle and goats.
Petitioner sued private respondent for infringement of patent and unfair competition before the
Caloocan City Regional Trial Court (RTC). It claimed that its patent covers or includes the
substance Albendazole such that private respondent, by manufacturing, selling, using, and
causing to be sold and used the drug Impregon without its authorization, infringed Claims 2, 3,
4, 7, 8 and 9 of Letters Patent No. 14561 as well as committed unfair competition under Article
189, paragraph 1 of the Revised Penal Code and Section 29 of Republic Act No. 166 (The
Trademark Law) for advertising and selling as its own the drug Impregon although the same
contained petitioner’s patented Albendazole.
On motion of petitioner, Branch 125 of the Caloocan RTC issued a temporary restraining order
against private respondent enjoining it from committing acts of patent infringement and unfair
competition. A writ of preliminary injunction was subsequently issued.
Private respondent in its Answer averred that Letters Patent No. 14561 does not cover the
substance Albendazole for nowhere in it does that word appear; that even if the patent were to
include Albendazole, such substance is unpatentable; that the Bureau of Food and Drugs allowed
it to manufacture and market Impregon with Albendazole as its known ingredient; that there is
no proof that it passed off in any way its veterinary products as those of petitioner; that Letters
Patent No. 14561 is null and void, the application for the issuance thereof having been filed
beyond the one year period from the filing of an application abroad for the same invention
covered thereby, in violation of Section 15 of Republic Act No. 165 (The Patent Law); and that
petitioner is not the registered patent holder.
Private respondent lodged a Counterclaim against petitioner for such amount of actual damages
as may be proven; P1,000,000.00 in moral damages; P300,000.00 in exemplary damages; and
P150,000.00 in attorney’s fees.
Finding for private respondent, the trial court rendered a Decision dated July 23, 1991, the
dispositive portion of which reads:
WHEREFORE, in view of the foregoing, plaintiff’s complaint should be, as it is hereby,
DISMISSED. The Writ of injunction issued in connection with the case is hereby ordered
The Letters Patent No. 14561 issued by the then Philippine Patents Office is hereby declared null
and void for being in violation of Sections 7, 9 and 15 of the Patents Law.
Pursuant to Sec. 46 of the Patents Law, the Director of Bureau of Patents is hereby directed to
cancel Letters Patent No. 14561 issued to the plaintiff and to publish such cancellation in the
Defendant Tryco Pharmaceutical Corporation is hereby awarded P330,000.00 actual damages
and P100,000.00 attorney’s fees as prayed for in its counterclaim but said amount awarded to
defendant is subject to the lien on correct payment of filing fees.
SO ORDERED. (Underscoring supplied)
On appeal, the Court of Appeals, by Decision of April 21, 1995, upheld the trial court’s finding
that private respondent was not liable for any infringement of the patent of petitioner in light of
the latter’s failure to show that Albendazole is the same as the compound subject of Letters
Patent No. 14561. Noting petitioner’s admission of the issuance by the U.S. of a patent for
Albendazole in the name of Smith Kline and French Laboratories which was petitioner’s former
corporate name, the appellate court considered the U.S. patent as implying that Albendazole is
different from methyl 5 propylthio-2-benzimidazole carbamate. It likewise found that private
respondent was not guilty of deceiving the public by misrepresenting that Impregon is its
The appellate court, however, declared that Letters Patent No. 14561 was not void as it sustained
petitioner’s explanation that Patent Application Serial No. 18989 which was filed on October 8,
1976 was a divisional application of Patent Application Serial No. 17280 filed on June 17, 1975
with the Philippine Patent Office, well within one year from petitioner’s filing on June 19, 1974
of its Foreign Application Priority Data No. 480,646 in the U.S. covering the same compound
subject of Patent Application Serial No. 17280.
Applying Section 17 of the Patent Law, the Court of Appeals thus ruled that Patent Application
Serial No. 18989 was deemed filed on June 17, 1995 or still within one year from the filing of a
patent application abroad in compliance with the one-year rule under Section 15 of the Patent
Law. And it rejected the submission that the compound in Letters Patent No. 14561 was not
patentable, citing the jurisprudentially established presumption that the Patent Office’s
determination of patentability is correct. Finally, it ruled that petitioner established itself to be
the one and the same assignee of the patent notwithstanding changes in its corporate name. Thus
the appellate court disposed:
WHEREFORE, the judgment appealed from is AFFIRMED with the
MODIFICATION that the orders for the nullification of Letters Patent
No. 14561 and for its cancellation are deleted therefrom.
Petitioner’s motion for reconsideration of the Court of Appeals’ decision having been denied the
present petition for review on certiorari was filed, assigning as errors the following:
I. THE COURT OF APPEALS GRAVELY ERRED IN NOT FINDING THAT
ALBENDAZOLE, THE ACTIVE INGREDIENT IN TRYCO’S “IMPREGON” DRUG, IS
INCLUDED IN PETITIONER’S LETTERS PATENT NO. 14561, AND THAT
CONSEQUENTLY TRYCO IS ANSWERABLE FOR PATENT INFRINGEMENT.
II. THE COURT OF APPEALS GRAVELY ERRED IN AWARDING TO PRIVATE
RESPONDENT TRYCO PHARMA CORPORATION P330,000.00 ACTUAL DAMAGES
AND P100,000.00 ATTORNEY’S FEES.
Petitioner argues that under the doctrine of equivalents for determining patent infringement,
Albendazole, the active ingredient it alleges was appropriated by private respondent for its drug
Impregon, is substantially the same as methyl 5 propylthio-2-benzimidazole carbamate covered
by its patent since both of them are meant to combat worm or parasite infestation in animals. It
cites the “unrebutted” testimony of its witness Dr. Godofredo C. Orinion (Dr. Orinion) that the
chemical formula in Letters Patent No. 14561 refers to the compound Albendazole. Petitioner
adds that the two substances substantially do the same function in substantially the same way to
achieve the same results, thereby making them truly identical. Petitioner thus submits that the
appellate court should have gone beyond the literal wordings used in Letters Patent No. 14561,
beyond merely applying the literal infringement test, for in spite of the fact that the word
Albendazole does not appear in petitioner’s letters patent, it has ably shown by evidence its
sameness with methyl 5 propylthio-2-benzimidazole carbamate.
Petitioner likewise points out that its application with the Philippine Patent Office on account of
which it was granted Letters Patent No. 14561 was merely a divisional application of a prior
application in the U. S. which granted a patent for Albendazole. Hence, petitioner concludes that
both methyl 5 propylthio-2-benzimidazole carbamate and the U.S.-patented Albendazole are
dependent on each other and mutually contribute to produce a single result, thereby making
Albendazole as much a part of Letters Patent No. 14561 as the other substance is.
Petitioner concedes in its Sur-Rejoinder that although methyl 5 propylthio-2-benzimidazole
carbamate is not identical with Albendazole, the former is an improvement or improved version
of the latter thereby making both substances still substantially the same.
With respect to the award of actual damages in favor of private respondent in the amount of
P330,000.00 representing lost profits, petitioner assails the same as highly speculative and
conjectural, hence, without basis. It assails too the award of P100,000.00 in attorney’s fees as
not falling under any of the instances enumerated by law where recovery of attorney’s fees is
In its Comment, private respondent contends that application of the doctrine of equivalents
would not alter the outcome of the case, Albendazole and methyl 5 propylthio-2-benzimidazole
carbamate being two different compounds with different chemical and physical properties. It
stresses that the existence of a separate U.S. patent for Albendazole indicates that the same and
the compound in Letters Patent No. 14561 are different from each other; and that since it was on
account of a divisional application that the patent for methyl 5 propylthio-2-benzimidazole
carbamate was issued, then, by definition of a divisional application, such a compound is just one
of several independent inventions alongside Albendazole under petitioner’s original patent
As has repeatedly been held, only questions of law may be raised in a petition for review on
certiorari before this Court. Unless the factual findings of the appellate court are mistaken,
absurd, speculative, conjectural, conflicting, tainted with grave abuse of discretion, or contrary to
the findings culled by the court of origin, this Court does not review them.
From an examination of the evidence on record, this Court finds nothing infirm in the appellate
court’s conclusions with respect to the principal issue of whether private respondent committed
patent infringement to the prejudice of petitioner.
The burden of proof to substantiate a charge for patent infringement rests on the plaintiff. In the
case at bar, petitioner’s evidence consists primarily of its Letters Patent No. 14561, and the
testimony of Dr. Orinion, its general manager in the Philippines for its Animal Health Products
Division, by which it sought to show that its patent for the compound methyl 5 propylthio-2-
benzimidazole carbamate also covers the substance Albendazole.
From a reading of the 9 claims of Letters Patent No. 14561 in relation to the other portions
thereof, no mention is made of the compound Albendazole. All that the claims disclose are: the
covered invention, that is, the compound methyl 5 propylthio-2-benzimidazole carbamate; the
compound’s being anthelmintic but nontoxic for animals or its ability to destroy parasites
without harming the host animals; and the patented methods, compositions or preparations
involving the compound to maximize its efficacy against certain kinds of parasites infecting
When the language of its claims is clear and distinct, the patentee is bound thereby and may not
claim anything beyond them. And so are the courts bound which may not add to or detract from
the claims matters not expressed or necessarily implied, nor may they enlarge the patent beyond
the scope of that which the inventor claimed and the patent office allowed, even if the patentee
may have been entitled to something more than the words it had chosen would include.
It bears stressing that the mere absence of the word Albendazole in Letters Patent No. 14561 is
not determinative of Albendazole’s non-inclusion in the claims of the patent. While Albendazole
is admittedly a chemical compound that exists by a name different from that covered in
petitioner’s letters patent, the language of Letter Patent No. 14561 fails to yield anything at all
regarding Albendazole. And no extrinsic evidence had been adduced to prove that Albendazole
inheres in petitioner’s patent in spite of its omission therefrom or that the meaning of the claims
of the patent embraces the same.
While petitioner concedes that the mere literal wordings of its patent cannot establish private
respondent’s infringement, it urges this Court to apply the doctrine of equivalents.
The doctrine of equivalents provides that an infringement also takes place when a device
appropriates a prior invention by incorporating its innovative concept and, although with some
modification and change, performs substantially the same function in substantially the same way
to achieve substantially the same result. Yet again, a scrutiny of petitioner’s evidence fails to
convince this Court of the substantial sameness of petitioner’s patented compound and
Albendazole. While both compounds have the effect of neutralizing parasites in animals,
identity of result does not amount to infringement of patent unless Albendazole operates in
substantially the same way or by substantially the same means as the patented compound, even
though it performs the same function and achieves the same result. In other words, the principle
or mode of operation must be the same or substantially the same.
The doctrine of equivalents thus requires satisfaction of the function-means-and-result test, the
patentee having the burden to show that all three components of such equivalency test are met.
As stated early on, petitioner’s evidence fails to explain how Albendazole is in every essential
detail identical to methyl 5 propylthio-2-benzimidazole carbamate. Apart from the fact that
Albendazole is an anthelmintic agent like methyl 5 propylthio-2-benzimidazole carbamate,
nothing more is asserted and accordingly substantiated regarding the method or means by which
Albendazole weeds out parasites in animals, thus giving no information on whether that method
is substantially the same as the manner by which petitioner’s compound works. The testimony
of Dr. Orinion lends no support to petitioner’s cause, he not having been presented or qualified
as an expert witness who has the knowledge or expertise on the matter of chemical compounds.
As for the concept of divisional applications proffered by petitioner, it comes into play when two
or more inventions are claimed in a single application but are of such a nature that a single patent
may not be issued for them. The applicant thus is required “to divide,” that is, to limit the claims
to whichever invention he may elect, whereas those inventions not elected may be made the
subject of separate applications which are called “divisional applications.” What this only means
is that petitioner’s methyl 5 propylthio-2-benzimidazole carbamate is an invention distinct from
the other inventions claimed in the original application divided out, Albendazole being one of
those other inventions. Otherwise, methyl 5 propylthio-2-benzimidazole carbamate would not
have been the subject of a divisional application if a single patent could have been issued for it as
well as Albendazole.
The foregoing discussions notwithstanding, this Court does not sustain the award of actual
damages and attorney’s fees in favor of private respondent. The claimed actual damages of
P330,000.00 representing lost profits or revenues incurred by private respondent as a result of the
issuance of the injunction against it, computed at the rate of 30% of its alleged P100,000.00
monthly gross sales for eleven months, were supported by the testimonies of private respondent’s
President and Executive Vice-President that the average monthly sale of Impregon was
P100,000.00 and that sales plummeted to zero after the issuance of the injunction. While
indemnification for actual or compensatory damages covers not only the loss suffered (damnum
emergens) but also profits which the obligee failed to obtain (lucrum cessans or ganacias
frustradas), it is necessary to prove the actual amount of damages with a reasonable degree of
certainty based on competent proof and on the best evidence obtainable by the injured party. The
testimonies of private respondent’s officers are not the competent proof or best evidence
obtainable to establish its right to actual or compensatory damages for such damages also require
presentation of documentary evidence to substantiate a claim therefor.
In the same vein, this Court does not sustain the grant by the appellate court of attorney’s fees to
private respondent anchored on Article 2208 (2) of the Civil Code, private respondent having
been allegedly forced to litigate as a result of petitioner’s suit. Even if a claimant is compelled to
litigate with third persons or to incur expenses to protect its rights, still attorney’s fees may not
be awarded where no sufficient showing of bad faith could be reflected in a party’s persistence in
a case other than an erroneous conviction of the righteousness of his cause. There exists no
evidence on record indicating that petitioner was moved by malice in suing private respondent.
This Court, however, grants private respondent temperate or moderate damages in the amount of
P20,000.00 which it finds reasonable under the circumstances, it having suffered some pecuniary
loss the amount of which cannot, from the nature of the case, be established with certainty.
WHEREFORE, the assailed decision of the Court of Appeals is hereby AFFIRMED with
MODIFICATION. The award of actual or compensatory damages and attorney’s fees to private
respondent, Tryco Pharma Corporation, is DELETED; instead, it is hereby awarded the amount
of P20,000.00 as temperate or moderate damages.
Puno, (Chairman), Panganiban, Sandoval-Gutierrez, and Corona, JJ., concur.
Records, Exhibit “A” at 320-342.
Id. at 340-341.
Records at 1.
Id. at 2-3.
Id. at 4.
Id. at 34.
Id. at 250.
Records at 35-40.
Records at 454-462.
Court of Appeals Rollo at 97-107.
Supreme Court Rollo at 47-51.
Id. at 8-33.
Supreme Court Rollo at 119-122.
Supreme Court Rollo at 66-84.
Ramirez v. Court of Appeals, 294 SCRA 512 .
Vargas v. F. M. Yaptico & Co., 40 Phil. 195 .
69 C.J.S. 684.
69 C.J.S. 684 – 685.
Godines v. Court of Appeals, 226 SCRA 338 .
60 Am Jur 2d 631-632.
69 C. J. S. 860.
Malta v. Schulmerich Carillons, Inc., 13 U.S.P.Q. 2d 1900 .
69 C.J.S. 455.
TSN, March 30, 1990, pp. 15-16.
TSN, May 11, 1990, pp. 3-5.
Integrated Packaging Corporation v. Court of Appeals, 333 SCRA 170 .
Producers Bank of the Philippines vs. Court of Appeals, 365 SCRA 326 .
ABS-CBN Broadcasting Corporation v. Court of Appeals, 301 SCRA 572 .
Civil Code, art. 2224.
Republic of the Philippines
G.R. No. 150798 March 31, 2005
RUDECON MANAGEMENT CORPORATION, petitioner,
SISENANDO S. SINGSON, respondent.
CALLEJO, SR., J.:
In this petition for review under Rule 45 of the Revised Rules of Court, petitioner Rudecon
Management Corporation seeks the reversal of the two (2) Resolutions1 of the Court of Appeals
in CA-G.R. CV No. 64281. The first resolution denied petitioner’s omnibus motion to dismiss
CA-G.R. CV No. 64281, while the second denied the petitioner's motion for reconsideration
The spouses Pablo and Ma. Theresa P. Tolentino were the owners of a condominium unit (Room
302) in the Tempus Place I Condominium located at Matalino St., Diliman, Quezon City,
covered by Condominium Certificate of Title (CCT) No. 8876. In 1993, Rudecon Management
Corporation (RMC) executed a Deed of Absolute Sale2 in favor of the spouses Tolentino over its
condominium unit, Room 404, at the same Tempus Place I Condominium covered by CCT No.
3295 for P600,000.00. Sisenando S. Singson, on the other hand, was the owner of two
condominium units in the Tempus Place II Condominium, Unit A covered by CCT No. 5013,
and Unit B covered by CCT No. 5014.
On April 18, 1997, the spouses Tolentino and Sisenando Singson executed a Deed of Exchange3
in which the latter deeded his condominium units (Units A and B) to the spouses Tolentino in
exchange for Rooms 302 and 404, which the spouses Tolentino deeded to Singson.
On or about September 15, 1987, RMC filed a complaint against Ramon Veluz for unlawful
detainer with the Metropolitan Trial Court of Quezon City (MeTC), Branch 41. RMC sought the
eviction of Ramon Veluz from Room 404, which the latter leased from Singson on August 7,
1995. The complaint was docketed as Civil Case No. 18436.
The decision of the MeTC was appealed to the Regional Trial Court (RTC), docketed as Civil
Case No. 35326.
On September 3, 1998, Singson filed a complaint against the RMC for the reconveyance of
Room 404 covered by Condominium Certificate of Title (CCT) No. 3295 with damages. Singson
alleged, inter alia, that Pablo Tolentino acquired ownership over the unit based on the deed of
absolute sale executed by RMC covering the said unit; he acquired ownership over the same
based on the "unit-swapping arrangement" between him and the spouses Tolentino; he later
leased the unit to Veluz; despite its knowledge of his ownership over the unit and that he had
leased the same to Veluz, RMC, nevertheless, filed a complaint for unlawful detainer against his
lessee; and despite demands, RMC refused to turn over to him CCT No. 3295 to enable him to
register the title over the unit in his name.
Singson prayed that judgment be rendered in his favor for damages and that –
… the Defendant be ordered to reconvey to the Plaintiff Condominium Certificate of
Title No. 3295 over the subject property issued by the Registry of Deeds of Quezon City
in the name of the Defendant in order that the Plaintiff may register the same under his
name and for this purpose, that the Defendant be ordered to execute the duly notarized
deed of absolute sale thereover in favor of Pablo C. Tolentino and/or the Plaintiff by
virtue of the swapping arrangement between the latter. …4
The case was docketed as Civil Case No. 98-35444. Singson appended to his complaint the Deed
of Absolute Sale executed by RMC in favor of the spouses Tolentino.
Singson, thereafter, filed an amended complaint wherein he alleged the following:
3. That the Plaintiff is the actual owner of a condominium unit designated as Unit 404,
with an area of sixty point two square meters (60.2 sq. m.) in the Tempus I Condominium
located at 21 Matalino Street, Diliman, Quezon City, Metro Manila, by virtue of a unit-
swapping arrangement between the latter and one Pablo C. Tolentino; That on April 18,
1997, a deed of exchange, hereto marked Annex "A," was executed by the parties to
formalize the swapping arrangement previously entered by the parties; of which
swapping arrangement, defendant Rudecon Management Corporation, through its
president Rudegelio Tacorda has full knowledge per its letter dated March 5, 1997
advising Pablo Tolentino and Petitioner to formalize the same, copy of which letter is
marked as Annex "B"; That said Pablo C. Tolentino was the owner of said Unit 404 as
his share in the joint construction venture with defendant, under an unnotarized deed of
absolute sale, valid between the parties, executed by the Defendant Rudecon
Management Corporation in his favor dated February 1993, a copy of which is attached
and made an integral part hereof as Annexes "C" and "C-1"; That the subject unit is
covered by one Condominium Certificate of Title No. 3295 issued by the Registry of
Deeds of Quezon City in the name of the Defendant, a copy of which is attached hereto
and made an integral part hereof as Annex "D," and that said condominium certificate of
title was never transferred by the Defendant to Pablo C. Tolentino and to this day still
remains in the name of Defendant despite the latter’s execution of a deed of absolute sale
in favor of the former;
8. That it likewise appears that defendant through its president Rudegelio Tacorda
maliciously and falsely claiming ownership over subject condominium unit mortgaged
the same to Allied Banking Corporation for a reported sum of not less than
P2,000,000.00 as per attached letter dated February 14, 1997 marked Annex "H" to the
great prejudice and damage, representing actual, moral and exemplary damages, of herein
plaintiff in the sum of not less than P2,000,000.00.5
Singson prayed that judgment be rendered in his favor, thus:
Upon the additional cause of action alleged in paragraph 8 of this Amended Complaint, it
is further prayed that defendant be adjudged to pay the plaintiff the sum of not less [than]
P2,000,000.00 by way of actual, moral and exemplary damages.
It is also respectfully prayed of this Honorable Court that the Defendant be ordered to
liquidate its mortgage indebtedness with the Allied Banking Corporation upon subject
unit and thereafter to reconvey to the Plaintiff Condominium Certificate of Title No. 3295
over the subject property issued by the Registry of Deeds of Quezon City in the name of
the Defendant free from any liens or encumbrances in order that the Plaintiff may register
the same in his name and for this purpose, that the Defendant be ordered to execute the
duly notarized deed of absolute sale over subject condominium unit in favor of the
Plaintiff as transferee from the former owner Pablo Tolentino by virtue of the swapping
arrangement and deed of exchange between the parties.
Other relief as may be just and equitable under the circumstances are likewise prayed for.
Singson also executed a "Verification and Affidavit of Non-Forum Shopping," wherein he stated
… That if I should thereafter learn that a similar action or proceeding has been filed or is
pending before the Supreme Court, the Court of Appeals, or any other tribunal or agency,
I undertake to report such fact within five (5) days therefrom to this Honorable Court. …7
RMC filed a motion to dismiss the amended complaint on the following grounds:
PLAINTIFF’S AMENDED COMPLAINT STATES NO CAUSE OF ACTION
(SECTION 1[g], RULE 16) BECAUSE, UNDER ART. 1311 OF THE NEW CIVIL
CODE IN RELATION TO SECTION 28, RULE 130, DEFENDANT IS NOT BOUND
BY EITHER THE ALLEGED DEED OF EXCHANGE (ANNEX A, COMPLAINT) OR
THE ALLEGED VERBAL SWAPPING AGREEMENT BETWEEN PLAINTIFF AND
PABLO TOLENTINO CONSIDERING THAT DEFENDANT IS NOT A PARTY OR
PRIVY TO SAID DEED OR AGREEMENT AND FURTHER CONSIDERING THAT
THE DEED OF EXCHANGE IS SIMULATED AND FORGED.
PLAINTIFF’S AMENDED COMPLAINT STATES NO CAUSE OF ACTION
BECAUSE PLAINTIFF, NOT BEING A REAL PARTY- IN-INTEREST, DOES NOT
HAVE THE LEGAL PERSONALITY TO SUE FOR THE PERFORMANCE OR
ENFORCEMENT OF THE UNNOTARIZED DEED OF SALE (ANNEX C,
COMPLAINT) BETWEEN DEFENDANT AND PABLO TOLENTINO TO WHICH
PLAINTIFF IS ADMITTEDLY NOT A PARTY OR PRIVY.
PLAINTIFF’S AMENDED COMPLAINT STATES NO CAUSE OF ACTION
BECAUSE PLAINTIFF HAS ADMITTEDLY NOT TRANSFERRED OWNERSHIP
OF CCT NOS. 1503 (SIC) AND 1504 (SIC) TO PABLO TOLENTINO AND INSTEAD
PLAINTIFF HOLDS ON TO SAID TITLES AND CONTINUES TO OCCUPY THE
CONDOMINIUM UNITS THEREOF THEREBY PRECLUDING AND BELYING
THE DAMAGE SUPPOSEDLY SUSTAINED BY PLAINTIFF. MOREOVER, THE
AMENDED COMPLAINT IS BUT PLAINTIFF’S MALICIOUS ATTEMPT AT
UNJUST ENRICHMENT AT DEFENDANT’S EXPENSE.
PLAINTIFF’S AMENDED COMPLAINT STATES NO CAUSE OF ACTION AS THE
RELIEF OF RECONVEYANCE SOUGHT BY HIM IS NOT A PROPER REMEDY
AND CANNOT BE GRANTED BY THIS HONORABLE COURT BECAUSE
ADMITTEDLY CCT NO. 3295 IS VALID AND GENUINE AND THERE IS NO
WRONGFUL OR ERRONEOUS REGISTRATION THEREOF IN DEFENDANT’S
NAME THAT WOULD WARRANT RECONVEYANCE AS A LEGAL REMEDY.8
RMC averred that it was not a party to the deed of exchange executed by Singson and the
spouses Tolentino; hence, it could not be compelled to reconvey the subject unit to Singson. And
since it was not a party to the said deed of exchange, Singson had no right to enforce the same
against it. Hence, despite the deed of exchange, Singson continued to occupy Units A and B and
failed to transfer the same to the spouses Tolentino.
RMC maintained that Singson was not entitled to the reconveyance of the unit since there was no
allegation in the complaint that it had been erroneously or fraudulently registered in the name of
On April 7, 1999, the trial court issued an Order10 granting the motion and dismissing the
complaint. Singson then filed a motion for the reconsideration of the Order and for the inhibition
of the Presiding Judge of the court. On June 30, 1999, the trial court issued an Order11 denying
the motion for reconsideration, but granted the motion for inhibition. Hence, Singson appealed
the April 7, 1999 Order of the trial court to the CA, docketed as CA-G.R. CV No. 64281.
In the meantime, Singson filed another complaint with the RTC of Quezon City, this time against
Allied Banking Corporation and the Sheriff’s Office of Quezon City, for the annulment of the
Sheriff’s Sale at Public Auction of Room 302 (covered by CCT No. 8876) in favor of the said
bank. He alleged, inter alia, that as early as June 1995, he became the owner of Room 302 and
Room 404 based on his verbal agreement with the spouses Tolentino which was contextualized
via their deed of exchange. Allied Banking Corporation had been informed of his ownership and
occupancy of Room 302 as early as 1995. He then offered Unit A (covered by CCT No. 5013)
for Room 302, as substitute collateral for the payment of the loan of Pablo Tolentino which the
latter endorsed to the bank. Singson also alleged that the extrajudicial sheriff’s foreclosure of the
mortgage and the subsequent sale was illegal for want of notice and publication, including for the
… [T]he defendant bank employed deceptive and fraudulent scheme to consummate the
Sheriffs’ Auction Sale to the prejudice of the plaintiff.
17. Defendant bank confused and misled the plaintiff by accepting Condominium Unit
No. 302 with CCT No. 8876 and allowed it to be used as a collateral to secure a loan of
P2 Million and the Bank is fully aware that said condominium unit is owned and
occupied by the plaintiff and thereafter foreclosed it without notice to the plaintiff.
Defendant bank is fully aware that plaintiff exercises rights of possession and ownership
on the said property since defendant bank was duly informed by plaintiffs about the
physical possession thereof and the Deed of Exchange.12
Singson prayed that judgment be rendered in his favor as follows:
ON THE ISSUANCE OF PRELIMINARY INJUNCTION
AND TEMPORARY RESTRAINING ORDER
1. A temporary restraining Order be issued ex parte restraining/preventing defendant or
any of its agents to consolidate/repossess the Real Estate property identified as Condo
Unit No. 302 with CCT No. 8876 of the Register of Deeds of Quezon City and after due
hearing, the Temporary Restraining Order be made permanent.
ON THE MAIN CAUSE OF ACTION
2. An order be issued declaring the foreclosure sale and the Sheriff’s sale of
condominium unit No. 302 with CCT No. 8876 as null and void.
3. An Order be issued declaring defendant bank liable for moral damages in the amount
of Two Million Pesos (P2,000,000.00), exemplary damages of Fifty Thousand Pesos
(P50,000.00) and ordering the defendant bank to pay the attorney’s fees in the amount of
Three Hundred Thousand Pesos (P300,000.00) and appearance fee of Five Thousand
Pesos (P5,000.00) per hearing.
4. Plus cost of suit.
Other reliefs just and equitable in the premises are likewise prayed for.13
Singson signed his Affidavit of Non-Forum Shopping in this manner:
VERIFICATION AND AFFIDAVIT OF
I, SISENANDO S. SINGSON, subscribing under oath do hereby depose and say that:
1. I am the plaintiff in the above-entitled case;
2. I caused the preparation of the foregoing Complaint For Annulment of Sheriff’s
Foreclosure/Certificate of Sale and Damages with Prayer for Issuance of Preliminary
Injunction/Temporary Restraining Order;
3. Pursuant to Supreme Court Administrative Circular No. 04-94, I hereby certify that
plaintiff has not therefore commenced any other action or proceeding involving the same
issues in the Supreme Court, the Court of Appeals, or any other tribunal or agency, and to
the best of my knowledge, no such action or proceeding is pending in the Supreme Court,
the Court of Appeals or any other tribunal or agency, and if I should thereafter learn that
a similar action or proceeding has been filed or is pending before the Supreme Court, the
Court of Appeals or any other tribunal or agency, I undertake to report that fact within
five (5) days therefrom;
4. I have read and understood the contents thereof and the allegations contained therein
are true and correct of my own personal knowledge.
The case was docketed as Civil Case No. Q-00-39794.
Meanwhile, RMC filed an Omnibus Motion in CA-G.R. CV No. 64281 praying for the dismissal
of Singson’s appeal in Civil Case No. Q-98-35444 on the ground of forum shopping. They also
prayed that Singson and his counsel be cited for indirect contempt for their failure to comply
with the undertaking in the Verification and Affidavit of Non-Forum Shopping embodied in his
amended complaint in Civil Case No. Q-00-39794, that is, to inform the trial court of the filing
of the complaint within fifteen (15) days thereof. RMC averred that as gleaned from the
averments of the amended complaint in Civil Case No. Q-98-35444, and the allegations in the
complaint in Civil Case No. Q-00-39794, the two cases involved the same issues. RMC averred
that Singson had also submitted a false certificate of non-forum shopping in Civil Case No. Q-
00-39794, where he stated that he had not commenced any action or proceeding involving the
On July 31, 2001, the CA issued a Resolution denying the Omnibus Motion of RMC on the
1. There is no identity of parties and cause of action between Civil Cases Nos. Q-98-
35444 and Q-00-39794;
2. The subject matter in the former is CCT No. 3295, whereas that of the latter is CCT
3. The reliefs sought in the two actions are vastly different.15
Upon the appellate court’s denial of its motion for reconsideration of the said resolution, RMC
filed the present petition for review on certiorari under Rule 45 of the Rules of Court,
WHETHER OR NOT THE COURT OF APPEALS, IN DENYING PETITIONER’S
OMNIBUS MOTION (ANNEX "K" HEREOF), RESOLVED SAID OMNIBUS
MOTION NOT IN ACCORD WITH LAW AND APPLICABLE DECISIONS OF THIS
HONORABLE SUPREME COURT WHEN IT RULED THAT THERE IS NO FORUM
SHOPPING HEREIN BECAUSE THE ELEMENTS OF RES JUDICATA ARE NOT
PRESENT IN PATENT ARBITRARY DISREGARD OF, AND DESPITE, THE FACT
THAT PETITIONER NEVER INVOKED SAID SPECIE OF FORUM SHOPPING
GROUNDED ON RES JUDICATA AND HAS INSTEAD SPECIFICALLY INVOKED
IN SAID OMNIBUS MOTION TWO (2) OTHER SPECIES OR FORMS OF FORUM
SHOPPING, NAMELY, (a.) RESPONDENT’S DELIBERATE NON-COMPLIANCE
WITH HIS UNDERTAKING TO REPORT THE PENDENCY OF ANOTHER
SIMILAR ACTION INVOLVING THE SAME ISSUES; AND (b.) RESPONDENT’S
[WILLFUL] SUBMISSION OF FALSE CERTIFICATION ON NON-FORUM
SHOPPING AS PENALIZED UNDER PARAGRAPH 2, SC ADM. CIRCULAR NO.
COROLLARY TO THE ABOVE, WHETHER OR NOT THE ANTECEDENT ISSUES
OF VALIDITY AND ENFORCEABILITY OF HEREIN DEED OF EXCHANGE
(ANNEX "D" HEREOF") EXPRESSLY RAISED BY RESPONDENT IN CIVIL CASE
NO. Q-98-35444 (CA-G.R. CV NO. 64281) AND ALSO IMPLICITLY POSITED BY
RESPONDENT IN CIVIL CASE NO. Q-00-39794 CAN BE CONSIDERED AS
"SIMILAR ISSUES" AS CONTEMPLATED IN PARAGRAPH 1, SC ADM.
CIRCULAR NO. 04-94 THEREBY OBLIGATING RESPONDENT: (a.) TO
STRICTLY COMPLY WITH HIS UNDERTAKING TO REPORT IN CIVIL CASE
NO. Q-98-35444 (CA-G.R. CV NO. 64281) THE PENDENCY OF CIVIL CASE NO. Q-
00-39794, AND VICE-VERSA AND (b.) TO DISCLOSE IN HIS CERTIFICATIONS
ON NON-FORUM SHOPPING IN BOTH THE ORIGINAL AND AMENDED
COMPLAINTS IN THE LATTER CASE THE PENDENCY OF THE FORMER CASE
SUCH THAT THE FAILURE OF RESPONDENT AND ATTY. CAMACHO TO SO
REPORT AND DISCLOSE ARE CONSTITUTIVE OF FORUM SHOPPING UNDER
SC ADM. CIRCULAR NO. 04-94.
WHETHER OR NOT THE COURT OF APPEALS GRAVELY ERRED AND
DEPARTED FROM APPLICABLE LAWS AND SUPREME COURT DECISIONS
WHEN IT RULED THAT THERE IS NO IDENTITY OF CAUSES OF ACTION
BETWEEN CIVIL CASE NO. Q-98-35444 AND CIVIL CASE NO. Q-00-39794 IN
COMPLETE DISREGARD OF, AND DESPITE, THE FACT THAT THERE IS SUCH
IDENTITY OF CAUSES OF ACTION BECAUSE BOTH AFORESAID CASES,
EVEN IF DIFFERENT IN FORMS OR NATURE, INVOLVED THE SAME
ANTECEDENT FACTS AND CIRCUMSTANCES, THE SAME EVIDENCE AND
ACTIONABLE DOCUMENT, NAMELY, THE DEED OF EXCHANGE DATED
APRIL 18, 1997 (ANNEX D HEREOF) WHOSE VALIDITY AND
ENFORCEABILITY MUST PRIORLY BE RESOLVED AS THE RESOLUTION
THEREOF IS DETERMINATIVE OF ANY FURTHER ADJUDICATIONS IN SAID
TWO (2) CASES (MANGOMA VS. COURT OF APPEALS, 241 SCRA 25; VDA. DE
CRUZO VS. CARRIAGA, 174 SCRA 330; BANGKO SILANGAN DEVELOPMENT
BANK VS. COURT OF APPEALS, ET. AL., G.R. NO. 1140480 [SIC], JUNE 29, 2001)
COROLLARY TO ALL THE FOREGOING, WHETHER OR NOT THE COURT OF
APPEALS GRAVELY ERRED (a.) IN NOT DISMISSING CA-G.R. CV NO. 62481
GROUNDED ON THE DELIBERATE AND WILFUL (SIC) COMMISSION BY
RESPONDENT SINGSON AND ATTY. MANUEL N. CAMACHO OF THE
AFORESAID TWO (2) SPECIES OF FORUM SHOPPING; AND (b.) IN NOT
HOLDING THAT RESPONDENT SINGSON AND ATTY. MANUEL CAMACHO
ARE GUILTY OF MULTIPLE AND DELIBERATE FORUM SHOPPING AND
SHOULD THEREFORE BE CITED IN CONTEMPT UNDER SUPREME COURT
ADM. CIRCULAR NO. 04-94 AND APPLICABLE JURISPRUDENCE (BUAN VS.
LOPEZ, 145 SCRA 34).16
In his comment on the petition, the respondent asserts that the petitioner’s procedural recourse to
this Court under Rule 45 of the Revised Rules of Court is flawed. He argues that the resolutions
of the CA subject of this petition for review are interlocutory; hence, not appealable under
Section 1, Rule 45. He also argues that the Court may not even treat the present recourse as a
petition for certiorari under Rule 65 since there is nary an allegation or proof that the CA
committed grave abuse of discretion.
In its reply, the petitioner adamantly insists that the questioned resolutions of the CA are final in
character and, therefore, appealable. It argues that a violation SC Adm. Cir. No. 04-94 is unlike
those grounds under Rule 16 of the Revised Rules of Court, where when a motion to dismiss is
denied, the proper procedure to be followed by the dissatisfied movant is not to appeal from the
order of denial but to answer, go to trial, and if the decision is adverse, reiterate the issue on
appeal from the final judgment.
We agree with respondent that the mode of appeal resorted to by the petitioner is improper.
Indubitably, the Resolution of the CA dated July 31, 2001 denying the petitioner’s omnibus
motion is interlocutory in nature. The word interlocutory refers to something intervening
between the commencement and the end of a suit which decides some point or matter but is not a
final decision of the whole controversy.17 The Court distinguished a final order or resolution
from an interlocutory one in Investments, Inc. v. Court of Appeals18 as follows:
… A "final" judgment or order is one that finally disposes of a case, leaving nothing
more to be done by the Court in respect thereto, e.g., an adjudication on the merits which,
on the basis of the evidence presented at the trial, declares categorically what the rights
and obligations of the parties are and which party is in the right; or a judgment or order
that dismisses an action on the ground, for instance, of res adjudicata or prescription.
Once rendered, the task of the Court is ended, as far as deciding the controversy or
determining the rights and liabilities of the litigants is concerned. Nothing more remains
to be done by the Court except to await the parties’ next move (which among others, may
consist of the filing of a motion for new trial or reconsideration, or the taking of an
appeal) and ultimately, of course, to cause the execution of the judgment once it becomes
"final" or, to use the established and more distinctive term, "final and executory."
Conversely, an order that does not finally dispose of the case, and does not end the
Court's task of adjudicating the parties’ contentions and determining their rights and
liabilities as regards each other, but obviously indicates that other things remain to be
done by the Court, is "interlocutory," e.g., an order denying a motion to dismiss under
Rule 16 of the Rules, or granting a motion for extension of time to file a pleading, or
authorizing amendment thereof, or granting or denying applications for postponement, or
production or inspection of documents or things, etc. Unlike a "final" judgment or order,
which is appealable, as above pointed out, an "interlocutory" order may not be questioned
on appeal except only as part of an appeal that may eventually be taken from the final
judgment rendered in the case.
The rule is founded on considerations of orderly procedure, to forestall useless appeals and avoid
undue inconvenience to the appealing party by having to assail orders as they are promulgated by
the court, when all such orders may be contested in a single appeal.
The reason of the law in permitting appeal only from a final order or judgment, and not
from interlocutory or incidental one, is to avoid multiplicity of appeals in a single action,
which must necessarily suspend the hearing and decision on the merits of the case during
the pendency of the appeal. If such appeal were allowed the trial on the merits of the case
should necessarily be delayed for a considerable length of time, and compel the adverse
party to incur unnecessary expenses; for one of the parties may interpose as many appeals
as incidental questions may be raised by him and interlocutory orders rendered or issued
by the lower court.19
Under Section 1, Rule 45 of the Revised Rules of Court, only final judgments, orders or
resolutions of the Court of Appeals or Sandiganbayan may be assailed therein. The remedy is a
mode of appeal on questions of law only.20
In the case at bar, the CA merely denied the petitioner’s omnibus motion to dismiss based on
forum shopping, on its finding that there was no litis pendentia between the parties. The motion
is only an incident in CA-G.R. CV No. 64281, which is a continuation of Civil Case No. Q-98-
35444 for "damages and reconveyance" instituted by the respondent against the petitioner. The
appellate court had yet to resolve the appeal on its merits. Being interlocutory, the resolution is
not appealable21 but may be assailed in this Court only under Rule 65 of the Revised Rules of
Court grounded on grave abuse of discretion amounting to excess or lack of jurisdiction
committed by the CA. However, the petitioner opted to file a petition for review on certiorari
under Rule 45 of the Revised Rules of Court.
Even on the merits, the petition must be denied.
The petitioner avers that there are three (3) species of forum shopping: (1) forum shopping
grounded either on res judicata or litis pendentia; (2) forum shopping for "non-compliance to
report the pendency of another action or proceeding involving the same issues;" and (3) forum
shopping based on the "submission of a false certification on non-forum shopping by not
disclosing the pendency of another action or proceedings involving the same issues as provided
in paragraph 2 of SC Adm. Cir. No. 04-94." To violate SC Adm. Cir. No. 04-94, it maintains,
"similarity of issues" between the first and the second case is enough.
The petitioner faults the CA for denying its omnibus motion based on its so-called first species of
forum shopping. It argues that what it invoked therein were the other two (2) species, not the first
one. It avers that respondent and his counsel violated SC Adm. Cir. No. 04-94 because:
a.) Respondent Singson and Atty. Camacho did not report in CA-G.R. CV No. 64281
(Civil Case No. Q-98-35444) the pendency of Civil Case No. Q-00-39794 filed by
respondent himself on January 26, 2000 and which case involves the same principal
issues of validity and enforceability of the same deed of exchange dated April 18, 1997.
b.) Vice-versa, respondent and Atty. Camacho did not report in Civil Case No. Q-00-
39794 the pendency of CA-G.R. CV No. 64281 (Civil Case No. Q-98-35444);
c.) Respondent Singson submitted a false certification on non-forum shopping in the
original complaint in Civil Case Q-00-39794 by wilful (sic) non-disclosure of the
pendency of CA-G.R. CV No. 64281 (Civil Case No. Q-98-35444);
d.) Corollary to the above, respondent Singson and Atty. Camacho submitted a false
certification on non-forum shopping in the amended complaint in Civil Case No. Q-00-
39794 by wilful (sic) non-disclosure of the pendency of CA-G.R. CV No. 64281 (Civil
Case No. Q-98-35444).22
We are not swayed.
The rule on forum shopping was first included in Section 17 of the Interim Rules and Guidelines
issued by this Court on January 11, 1983, which imposed a sanction in this wise: "A violation of
the rule shall constitute contempt of court and shall be a cause for the summary dismissal of both
petitions, without prejudice to the taking of appropriate action against the counsel or party
concerned." Thereafter, the Court restated the rule in Revised Circular No. 28-91 and Adm. Cir.
No. 04-94. The rule is now embodied in Section 5, Rule 7 of the Revised Rules of Court which
SECTION 5. Certification against forum shopping. – The plaintiff or principal party shall
certify under oath in the complaint or other initiatory pleading asserting a claim for relief,
or in a sworn certification annexed thereto and simultaneously filed therewith: (a) that he
has not theretofore commenced any action or filed any claim involving the same issues in
any court, tribunal or quasi-judicial agency and, to the best of his knowledge, no such
other action or claim is pending therein; (b) if there is such other pending action or claim,
a complete statement of the present status thereof; and (c) if he should thereafter learn
that the same or similar action or claim has been filed or is pending, he shall report that
fact within five (5) days therefrom to the court wherein his aforesaid complaint or
initiatory pleading has been filed.
Failure to comply with the foregoing requirements shall not be curable by mere
amendment of the complaint or other initiatory pleading but shall be cause for the
dismissal of the case without prejudice, unless otherwise provided, upon motion and after
hearing. The submission of a false certification or non-compliance with any of the
undertakings therein shall constitute indirect contempt of court, without prejudice to the
corresponding administrative and criminal actions. If the acts of the party or his counsel
clearly constitute willful and deliberate forum shopping, the same shall be ground for
summary dismissal with prejudice and shall constitute direct contempt as well as a cause
for administrative sanctions.
Forum shopping exists when, as a result of an adverse opinion in one forum, a party seeks a
favorable opinion (other than by appeal or certiorari) in another, or when he institutes two or
more actions or proceedings grounded on the same cause, on the gamble that one or the other
court would make a favorable disposition.23
What is pivotal in determining whether forum shopping exists or not is the vexation caused the
courts and parties-litigants by a party who asks different courts and/or administrative agencies to
rule on the same or related causes and/or grant the same or substantially the same reliefs, in the
process creating possibility of conflicting decisions being rendered by the different courts and/or
administrative agencies upon the same issues.24
In Ayala Land, Inc. v. Valisno,25 the Court explained the concept of forum shopping, to wit –
Forum shopping exists when the elements of litis pendentia are present or where a final
judgment in one case will amount to res judicata in another (Alejandrino v. Court of
Appeals, 295 SCRA 536, 554 ; Philippine Woman’s Christian Temperance Union,
Inc. v. Abiertas House of Friendship, Inc., 292 SCRA 785, 794 ). Litis pendentia
requires the concurrence of the following requisites:
1. Identity of parties, or at least such parties as those representing the same
interests in both actions;
2. Identity of rights asserted and reliefs prayed for, the reliefs being founded on
the same facts; and
3. Identity with respect to the two preceding particulars in the two cases, such that
any judgment that may be rendered in the pending case, regardless of which party
is successful, would amount to res adjudicata in the other case. (Philippine
Woman’s Christian Temperance Union, Inc. v. Abiertas House of Friendship,
Inc., supra, at 791; citations omitted.)
As explained by this Court in First Philippine International Bank v. Court of Appeals
(252 SCRA 259 ), forum-shopping exists where the elements of litis pendentia are
present, and where a final judgment in one case will amount to res judicata in the other.
Thus, there is forum shopping when, between an action pending before this Court and
another one, there exist: "a) identity of parties, or at least such parties as represent the
same interests in both actions, b) identity of rights asserted and relief prayed for, the
relief being founded on the same facts, and c) the identity of the two preceding particulars
is such that any judgment rendered in the other action, will, regardless of which party is
successful, amount to res judicata in the action under consideration; said requisites also
constitutive of the requisites for auter action pendant or lis pendens." Another case
elucidates the consequence of forum shopping: "[W]here a litigant sues the same party
against whom another action or actions for the alleged violation of the same right and the
enforcement of the same relief is/are still pending, the defense of litis pendentia in one
case is a bar to the others; and, a final judgment in one would constitute res judicata and
thus would cause the dismissal of the rest." (Prubankers Association v. Prudential Bank
& Trust Company, 302 SCRA 74, 83-84 .)
We agree with the contention of the petitioner that, under Section 5, Rule 7, of the Revised Rules
of Court, a complaint may be dismissed for failure of the plaintiff therein to inform the court of
the filing of the same or similar complaint within five (5) days from such filing. The same or
similar complaint referred to in the rule refers to a complaint wherein the parties, causes of
action, issues and reliefs prayed for, are identical to those in the first complaint. The plaintiff
may also be declared in indirect contempt of court if he submits a false certification.
But the respondent cannot be faulted for stating in his Affidavit of Non-Forum Shopping in Civil
Case No. Q-00-39794 that he had not commenced any other action or proceeding involving the
same issues in the CA or in any other tribunal; nor can he be charged with executing a falsified
certification in Civil Case No. Q-00-39794 for stating that he had not commenced before any
other tribunal any initiatory pleading involving the same issues.
The petitioner was not mandated to inform the trial court in Civil Case No. Q-00-39794 and
Civil Case No. Q-98-35444 and of CA-G.R. CV No. 64281. This is so because, as admitted by
the petitioner, there is no identity of the causes of action, the parties, issues and reliefs prayed for
in the two complaints. The subject matter of the suit in Civil Case No. Q-00-39794 is Room 302,
while that in Civil Case No. Q-98-35444 is Room 404. The principal issue raised in Civil Case
No. Q-00-39794 is whether the extrajudicial foreclosure of the real estate mortgage over Room
404 and the sale thereof to Allied Banking Corporation are null and void, while the principal
issue in Civil Case No. Q-98-35444 is whether or not the petitioner as defendant therein is
obliged to convey to the respondent Room 404.
While it is true that in his Amended Complaint in Civil Case No. Q-98-35444, the respondent
sought to compel the petitioner to execute a deed of sale over Room 404 free from any liens or
encumbrances arising from the real estate mortgage over the said unit as security for a loan of
P2,000,000.00 secured by the petitioner from Allied Banking Corporation, it cannot thereby be
concluded that the issues raised in the said case are the same or similar to those in Civil Case No.
IN LIGHT OF ALL THE FOREGOING, the petition is DENIED. The assailed Resolutions of
the Court of Appeals are AFFIRMED. No costs.
Puno, (Chairman), Austria-Martinez, Tinga, and Chico-Nazario, JJ., concur.
Penned by Associate Justice Delilah Vidallon-Magtolis with Associate Justices Teodoro
P. Regino (retired) and Josefina Guevara-Salonga, concurring.
Rollo, pp. 48-49.
Id. at 58-59.
Id. at 46.
Id. at 52-55.
Id. at 55-56.
Id. at 57.
Id. at 68-69.
Id. at 68-78.
Id. at 79-83.
Id. at 84-86.
Id. at 92.
Id. at 94.
Id. at 95.
Id. at 37.
Id. at 15-16.
Ramiscal, Jr. v. Sandiganbayan, G.R. No. 140576, December 13, 2004.
147 SCRA 334 (1987).
Sitchon v. Sheriff of Occidental Negros, 80 Phil. 397 (1948).
Section. 1. Filing of petition with Supreme Court. – A person desiring to appeal by
certiorari from a judgment or final order or resolution of the Court of Appeals, the
Sandiganbayan, the Regional Trial Court or other courts whenever authorized by law,
may file with the Supreme Court a verified petition for review on certiorari. The petition
shall raise only questions of law which must be distinctly set forth.
Section 1(c), Rule 41, Revised Rules of Court.
Rollo, pp. 19-20.
Benguet Electric Cooperative, Inc. v. Flores, 287 SCRA 449 (1998).
Yupangco Cotton Mills, Inc. v. Court of Appeals, 373 SCRA 451 (2002).
324 SCRA 522 (2000).