In n out Burger, Inc. vs.

Sehwani, inc and / or Benita Frites FACTS: Burger is a business entity incorporated under the laws of California, US which is a signatory to the convention of Paris on Protection of Industrial Property and TRIPS. It is engaged mainly in restaurant business but has never engaged business in the Phil. Sehwani, Inc and Benita Frites, Inc are domestic Corpo. On June 2, 1997, Burger filed trademark and service mark applications w/ the IPO for in n out and in n out Burger & Arrow Design. Petitoner later found out that Sehwani, Inc. had already obtained trademark registration for the mark In n Out ( the inside letter o formed like a star). Benita Frites was able to use the mark of Sehwani by virtue of licensing agreement. On June 4, 2001,Burger filed an admin complaint against respondents for unfair competition and cancellation of trademark registration before the BLA-IPO. It averred that it is the owner of the trade name in n out and the trademarks: 1. In N Out 2. In N Out Burger & Arrow Design and In N Out Burger Logo registered w/ the trademark office of the US and in various parts of the world, are internationally well known, and have become distinctive of its business and goods through its long and exclusive commercial use. It pointed out that its internationally well-known trademarks and the mark of the respondents are all registered for the restaurant business and are clearly identical and confusingly similar. Burger sent a demand letter directing Sehwani to cease and desist from claiming ownership of the mark In N Out and to voluntarily cancel its trademark registration. Sehwani refused to accede to Burgers demand but expressed willingness to surrender the registration of the In N Out trademark for a fair and reasonable consideration. Burger was able to register also the mark Double Double and alleged that Sehwani also used this mark. It also averred that Benita Frites receipts bore the phrase, representing In N Out Burger. Sehwani contends that they had been using the mark in the Phil since 1982 and that on Nov. 1991 it filed w/ the then Bureau of Patents (BPTTT) an application for the mark In N Out and a certificate of registration was issued in 1993. It argued that none of the grounds for cancellation of trademark are present and that Burger had no legal capacity to sue as it had never operated in the Phil. BLA-IPO director rendered a decision in favor of Burger and ruled that Burger had legal capacity because its country of origin was a member of and a signatory to the convention of paris and although Burger had never done business in the Phil, it was widely known in this country through the use herein of products bearing its corporate and trade name and burger had the right to use its trade name and mark in the Phil to the exclusion of others. BLA however said that Sehwani used the mark in good faith and were not guilty of unfair competition (the inside of the letter O in the mark used by Sehwani formed a star.). Burger filed MR but was denied by the BLA. So it filed an appeal before the IPO DG. IPO DG found the appeal meritorious and modified the decision of the BLA. It

ruled that Sehwani was guilty of unfair competition and that Burger is entitled for damages. Aggrieved, Sehwani filed a petition for review w/ the CA. The CA proceeded to resolve on jurisdictional grounds not raised by the parties and declared that Sec. 163 of the IPC specifically confers upon the regular courts had not the BLA-IPO, sole jurisdiction to hear and decide cases involving of the IPC, particularly trademarks. Consequently, the IPO DG had no jurisdiction to rule in its decision on supposed violations of the provisions of the IPC. ISSUE: WON the CA and not the IPO has jurisdiction over administrative complaints for IPRV RULING: SC Disagrees Sec. 10 and Sec. 7 of the IPC