Blue Cross Insurance Inc.vs.

Blue Cross and Blue Shield Association

(CA-G.R. SP No. 109467, 16 May 2011)

DOCTRINE: Cancellation: A certificate of registration of a mark or trade-name shall be prima facie

evidence of the validity of the registration, the registrant's ownership of the mark or trade-name, and of
the registrant's exclusive right to use the same in connection with the goods, business or services.

FACTS:

• As early as June 25, 1986 petitioner Blue Cross Insurance, Inc. has commercially used the mark
"BLUE CROSS" as part of its corporate name/trade name;
• Petitioner alleged that by virtue of their prior adoption and commercial usc of the mark "BLUE
CROSS", it had the exclusive title to, and interest in the said service mark or trade name.
• Blue Cross Insurance, Inc. and Blue Cross Health Care, Inc. filed a Petition for Cancellation of the
service mark "BLUE CROSS" issued in the name of respondents-appellee Blue Cross and Blue
Shield Association".
• By way of affirmative defenses, respondent claimed that: its predecessor-in-interest, the
American Hospital Association, was already the owner of the mark "Blue Cross" which was
registered in the Philippines on August 27, 1959.
• That on February 5, 1952 respondent obtained from the United States patent and Trademark
Office the service mark registration for the mark “BLUE CROSS” (Certificate of Registration No.
35780) valid for 20 years or until February 5, 1972;
• That the registration was repeatedly renewed until the petition at bar and that during the fifty
(50) years that it has been used by respondent, the service mark "BLUE CROSS" has achieved
goodwill, fame and favorable reputation worldwide.
• BLA DIRECTOR: DENIED PETITIONER’S PETITION FOR CANCELLATION OF RESPONDENT’S
TRADEMARK REGISTRATION

The Director held that the validity of Certificate of Registration No. 35780 which was issued to
respondent on July 22, 1985 enjoys the presumption of validity and that the respondent’s use of
the mark "BLUE CROSS" precedes that of herein petitioner. The respondent-appellee's
trademarks rights were acquired by it even previous to petitioner-appellants' usc of it from 1987
and years thereafter.

• Petitioner received a copy of the Decision dated December 28, 2007 on January 18, 2008 and
subsequently filed a motion for reconsideration.
• Petitioner received on the resolution denying their motion for reconsideration on April 16, 2009
but only filed their appeal memorandum on May 18, 2009.

• IPO DIRECTOR-GENERAL: DISMISSED PETITIONER’S APPEAL for being out of time.

ISSUES:

1. Did the BLA Director act with grave abuse of discretion when she failed to consider the
requirements of use?
2. Did the Director General act with grave abuse of discretion in not ruling upon the merits of the
case and in dismissing the case based on technicality?

HELD:

1. No. The BLA’s actions were correct. Against the evidence presented by the petitioners-
appellants, the respondent-appellee, aside from being a prior registrant, in fact presented
satisfactory proof of actual commercial use. These proofs were correctly appreciated, identified
and stated in the assailed Decision.

2. No. The Director General’s dismissal of the case was proper.

RATIO:

1. By virtue of Certificate of Registration No. 35780 ‘s issuance, the registrant enjoys in its favor the
presumption of validity of registration and ownership over the mark "Blue Cross". Section 20
provides:

Section 20. Certificate of registration prima facie evidence of validity:

“A certificate of registration of a mark or trade-name shall be prima facie evidence of the

validity of the registration, the registrant's ownership of the mark or trade-name, and of
the registrant's exclusive right to use the same in connection with the goods, business or
services specified in the certificate, subject to any conditions and limitations stated
therein.”

In addition to this, petitioner's own evidence reveal that prior to July 22, 1985, "Blue Cross" was
already registered in the name of American Hospital Association (Respondent registrant'
predecessor-in-interest) and was proven to have been repeatedly renewed.

Respondent also offered evidence of the registrations it secured for its marks BLUE CROSS in
countries all over the world.

In spite of the fact that petitioner was able to show continuous use of the mark from 1987 and
years thereafter, this cannot defeat respondent's trademarks rights already acquired.

2. Perfection of an appeal within the statutory or reglementary period is not only mandatory but
also jurisdictional; failure to do so renders the questioned decision/final order final and
 executory, and deprives the appellate court of jurisdiction to alter the judgment or final order,
much less to entertain the appeal.

Section 2 of the Uniform Rules on Appeal (Office Order no. 2009) states that:

Section 2. Appeal to the Director General.

“The decisions or final orders of the Bureau Director shall become final and executory
thirty (30) days after receipt of a copy thereof by the parties unless, within the same
period, a motion for reconsideration is filed with the Bureau Director or an appeal to the
Director General has been perfected; Provided, that only one (1) motion for
reconsideration of the decision or order of the Bureau Director shall he allowed; and, in
case the motion for reconsideration is denied, the appellant or appellants bas/have the
balance of the period prescribed above within which to file the appeal.”

Petitioner’s appeal memorandum, which was filed on May 18, 2009 was far in excess of the 30-
day period for perfecting an appeal. Resolution of the the Director of the Bureau of Legal Affairs
of the IPO became final and executory.

PETITION DISMISSED.