HICKOK MANUFACTURING VS CA

 It is a established doctrine that emphasis should be on the similarity of the products involved and
not on the arbitrary classification or general description of their properties or characteristics"
 "The mere fact that one person has adopted and used a trademark on his goods does not prevent
the adoption and use of the same trademark by others on unrelated articles of a different kind"
 While the law does not require that the competing trademarks be identical, the two marks must be
considered in their entirety, as they appear in the respective labels, in relation to the goods to which
they are attached

FACTS: Hickok Manufacturing Co., Inc., a foreign corporation duly registered in the Philippines, had
earlier registered the trademark Hickok for its products namely: handkerchiefs, underwear and briefs.
Private respondent, Lim Bun Liong, later registered for his products, Marikina shoes, the same
tradename Hickok. The former filed a petition with the patent director to cancel private respondent's
registration of the trademark Hickok. The petition was granted and private respondent's registration of the
trademark was cancelled. The Court of Appeals reversed the decision of the patent director and instead
dismissed petitioner's petition to cancel private respondent's registration of the trademark of Hickok for its
shoes. Hence this petition for review.

ISSUE: WON there’s trademark infringement

RULING: No. Taking into account the facts of record that petitioner, a foreign corporation registered the
trademark for its diverse articles of men's wear such as wallets, belts and men's briefs which are all
manufactured here in the Philippines by a licensee Quality House, Inc. (which pays a royalty of 1-1/2% of
the annual net sales) but are so labelled as to give the misimpression that the said goods are of foreign
(stateside) manufacture and that respondent secured its trademark registration exclusively for shoes (which
neither petitioner nor the licensee ever manufactured or traded in) and which are clearly labelled in block
letters as "Made in Marikina, Rizal, Philippines," no error can be attributed to the appellate court in upholding
respondent's registration of the same trademark for his unrelated and non-competing product of Marikina
shoes.

FREDCO MANUFACTURING CORP. VS PRESIDENT AND FELLOWS OF HARVARD

COLLEGE
Fredco Manufacturing Corporation (Fredco), a Philippine corporation filed a Petition for Cancellation of
Registration No. 56561 before the Bureau of Legal Affairs of the Intellectual Property Office (IPO) against
respondents President and Fellows of Harvard College (Harvard University), a corporation organized and
existing under the laws of Massachusetts, United States of America.

The registration issued on Nov. 25, 1993 in question pertains to the mark “Harvard Veritas Shield Symbol”
for decals, tote bags, serving trays, sweatshirts, t-shirts, hats and flying discs.

Fredco alleged that the mark Harvard for t-shirts, polo shirts, sandos, briefs, jackets and slacks was first
used in the Philippines on 2 January 1982 by New York Garments, a domestic corporation and Fredcos
predecessor-in-interest. The registration was later assigned to Romeo Chuateco, a member of the family
that owned New York Garments.

Fredco alleged that it was formed and registered with the SEC on 9 November 1995 and had since then
handled the manufacture, promotion and marketing of Harvard clothing articles. Fredco alleged that at the
time of issuance of Registration No. 56561 to Harvard University, New York Garments had already
registered the mark Harvard for goods under Class 25. Fredco alleged that the registration was cancelled
on 30 July 1998 when New York Garments inadvertently failed to file an affidavit of use/non-use on the fifth
anniversary of the registration but the right to the mark Harvard remained with its predecessor New York
Garments and now with Fredco.

Harvard University, on the other hand, alleged that it is the lawful owner of the name and mark Harvard in
numerous countries worldwide, including the Philippines. The name and mark Harvard was adopted in 1639
as the name of Harvard College6 of Cambridge, Massachusetts, U.S.A. The name and mark Harvard was
allegedly used in commerce as early as 1872. Harvard University is over 350 years old and is a highly
regarded institution of higher learning in the United States and throughout the world. Harvard University
promotes, uses, and advertises its name Harvard through various publications, services, and products in
foreign countries, including the Philippines. Harvard University further alleged that the name and the mark
have been rated as one of the most famous brands in the world, valued between US $750,000,000 and US
$1,000,000,000.

Harvard University alleged that in March 2002, it discovered, through its international trademark watch
program, Fredcos website www.harvard-usa.com. The website advertises and promotes the brand name
Harvard Jeans USA without Harvard University’s consent. The websites main page shows an oblong logo
bearing the mark Harvard Jeans USA, Established 1936, and Cambridge, Massachusetts. On 20 April
2004, Harvard University filed an administrative complaint against Fredco before the IPO for trademark
infringement and/or unfair competition with damages.

Issue: Whether “Harvard” is protected in the Phils considering that it is not registered in the country

Ruling:
1. YES. Harvard University is entitled to protection in the Phils of its trade name “Harvard” even
without registration of such trade name in the Phils under Art. 8 of the Paris Convention, as well as
Sec. 37 of RA No. 166. The Phils and USA are both signatories to the Paris Convention.

ARTICLE 6bis

(i) The countries of the Union undertake either administratively if their legislation so permits, or at the
request of an interested party, to refuse or to cancel the registration and to prohibit the use of a trademark
which constitutes a reproduction, imitation or translation, liable to create confusion or a mark considered by
the competent authority of the country as being already the mark of a person entitled to the benefits of
the present Convention and used for identical or similar goods. These provisions shall also apply
when the essential part of the mark constitutes a reproduction of any such well-known mark or an
imitation liable to create confusion therewith.

ARTICLE 8

A trade name shall be protected in all the countries of the Union without the obligation of filing or
registration, whether or not it forms part of a trademark. (Emphasis supplied)

Thus, this Court has ruled that the Philippines is obligated to assure nationals of countries of the Paris
Convention that they are afforded an effective protection against violation of their intellectual property rights
in the Philippines in the same way that their own countries are obligated to accord similar protection to
Philippine nationals.23

Article 8 of the Paris Convention has been incorporated in Section 37 of R.A. No. 166, as follows:

Section 37. Rights of foreign registrants. Persons who are nationals of, domiciled in, or have a bona fide or
effective business or commercial establishment in any foreign country, which is a party to any international
convention or treaty relating to marks or trade-names, or the repression of unfair competition to which the
Philippines may be a party, shall be entitled to the benefits and subject to the provisions of this Act to the
extent and under the conditions essential to give effect to any such convention and treaties so long as the
Philippines shall continue to be a party thereto, except as provided in the following paragraphs of this
section.
xxxx
Trade-names of persons described in the first paragraph of this section shall be protected without
the obligation of filing or registration whether or not they form parts of marks.24

x x x x (Emphasis supplied)

Thus, under Philippine law, a trade name of a national of a State that is a party to the Paris Convention,
whether or not the trade name forms part of a trademark, is protected without the obligation of filing or
registration.

2. The word trademark, as used in this MEMORANDUM, shall include tradenames, service marks,
logos, signs, emblems, insignia or other similar devices used for identification and recognition by
consumers.
3. The Philippine Patent Office shall refuse all applications for, or cancel the registration of, trademarks
which constitute a reproduction, translation or imitation of a trademark owned by a person, natural or
corporate, who is a citizen of a country signatory to the PARIS CONVENTION FOR THE PROTECTION
OF INDUSTRIAL PROPERTY.

x x x x28 (Emphasis supplied)

In Mirpuri, the Court ruled that the essential requirement under Article 6bis of the Paris Convention is that
the trademark to be protected must be well-known in the country where protection is sought. 29 The Court
declared that the power to determine whether a trademark is well-known lies in the competent authority of
the country of registration or use.30 The Court then stated that the competent authority would either be the
registering authority if it has the power to decide this, or the courts of the country in question if the issue
comes before the courts.31

To be protected under the two directives of the Ministry of Trade, an internationally well-known mark need
not be registered or used in the Philippines.32 All that is required is that the mark is well-known internationally
and in the Philippines for identical or similar goods, whether or not the mark is registered or used in the
Philippines. The Court ruled in Sehwani, Incorporated v. In-N-Out Burger, Inc.:33

The fact that respondents marks are neither registered nor used in the Philippines is of no moment.
The scope of protection initially afforded by Article 6bis of the Paris Convention has been expanded in the
1999 Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks, wherein the
World Intellectual Property Organization (WIPO) General Assembly and the Paris Union agreed to a
nonbinding recommendation that a well-known mark should be protected in a country even if the mark
is neither registered nor used in that country. Part I, Article 2(3) thereof provides:

(3) [Factors Which Shall Not Be Required] (a) A Member State shall not require, as a condition for
determining whether a mark is a well-known mark:

(i) that the mark has been used in, or that the mark has been registered or that an application for registration
of the mark has been filed in or in respect of, the Member State:

(ii) that the mark is well known in, or that the mark has been registered or that an application for registration
of the mark has been filed in or in respect of, any jurisdiction other than the Member State; or

(iii) that the mark is well known by the public at large in the Member State. 34 (Italics in the original decision;
boldface supplied)

Indeed, Section 123.1(e) of R.A. No. 8293 now categorically states that a mark which is considered by the
competent authority of the Philippines to be well-known internationally and in the Philippines, whether
or not it is registered here, cannot be registered by another in the Philippines. Section 123.1(e) does not
require that the well-known mark be used in commerce in the Philippines but only that it be well-known in
the Philippines. Moreover, Rule 102 of the Rules and Regulations on Trademarks, Service Marks, Trade
Names and Marked or Stamped Containers, which implement R.A. No. 8293, provides:
Rule 102. Criteria for determining whether a mark is well-known. In determining whether a mark is well-
known, the following criteria or any combination thereof may be taken into account:

a) the duration, extent and geographical area of any use of the mark, in particular, the duration, extent
and geographical area of any promotion of the mark, including advertising or publicity and the
presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies;

b) the market share, in the Philippines and in other countries, of the goods and/or services to which
the mark applies;

c) the degree of the inherent or acquired distinction of the mark;

d) the quality-image or reputation acquired by the mark;

e) the extent to which the mark has been registered in the world;

f) the exclusivity of registration attained by the mark in the world;

g) the extent to which the mark has been used in the world;

h) the exclusivity of use attained by the mark in the world;

i) the commercial value attributed to the mark in the world;

j) the record of successful protection of the rights in the mark;

k) the outcome of litigations dealing with the issue of whether the mark is a well-known mark; and

l) the presence or absence of identical or similar marks validly registered for or used on identical or
similar goods or services and owned by persons other than the person claiming that his mark is a
well-known mark. (Emphasis supplied)

Since any combination of the foregoing criteria is sufficient to determine that a mark is well-known, it is
clearly not necessary that the mark be used in commerce in the Philippines. Thus, while under the
territoriality principle a mark must be used in commerce in the Philippines to be entitled to protection,
internationally well-known marks are the exceptions to this rule.