Fredco Manufacturing Corporation v.
President and months in the Philippines prior to the filing of an application
Fellows of Harvard College
G.R. No 185917, June 11, 2011
FACTS:
Fredco Manufacturing Corporation filed before the Bureau
of Legal Affairs of the Philippine Intellectual Property
Office a Petition for Cancellation of Registration No. 56561
issued to President and Fellows of Harvard College for the
mark “Harvard Veritas Shield Symbol”.
Fredco claimed that Harvard University had no right to
register the mark, since its Philippine registration was
based on a foreign registration. Hence,Harvard University
could not have been considered as a prior user of the mark
in the Philippines.
Fredco explained that the mark was first used in the
Philippines by its predecessor-in-interest New York
Garments as early as 1982, and a certificate of registration
was then issued in 1988 for goods under class 25. Although
the registration was cancelled for the non-filing of an
affidavit of use, the fact remained that the registration
preceded Harvard University’s use of the subject mark in
the Philippines.
Harvard University, on the other hand claimed that the
name and mark “Harvard” was adopted in 1639 as the name
of Harvard College of Cambridge, Massachusetts, USA.
The Bureau of Legal Affairs ruled in favor of Fredco and
ordered the cancellation of Registration No. 56561. It
found Fredco to be the prior user and adopter of the mark
“Harvard” in the Philippines. On appeal, the Office of the
Director General of the Intellectual Property Office
reversed the BLA ruling on the ground that more than the
use of the trademark in the Philippines, the applicant must
be the owner of the mark sought to be registered. Fredco,
not being the owner of the mark, had no right to register
it.
The Court Appeals affirmed the decision of the Office of
the Director General. Fredco appealed the decision with
the Supreme Court. In its appeal, Fredco insisted that the
date of actual use in the Philippines should prevail on the
issue of who had a better right to the mark.
ISSUES:
WON the mark Harvard is registrable?
RULING:
The SC held that:
Under Section 2 of Republic Act No. 166, as amended (R.A.
No. 166), before a trademark can be registered, it must
have been actually used in commerce for not less than two
for its registration.
While Harvard University had actual prior use of its marks
abroad for a long time, it did not have actual prior use in
the Philippines of the mark "Harvard Veritas Shield
Symbol" before its application for registration of the mark
"Harvard" with the then Philippine Patents Office.
However, Harvard University's registration of the name
"Harvard" is based on home registration which is allowed
under Section 37 of R.A. No. 166. As pointed out by
Harvard University in its Comment:
Section 2 of the Trademark law (R.A. 166) requires for the
registration of trademark that the applicant thereof must
prove that the same has been actually in use in commerce
or services for not less than two (2) months in the
Philippines before the application for registration is filed,
where the trademark sought to be registered has already
been registered in a foreign country that is a member of
the Paris Convention, the requirement of proof of use in
the commerce in the Philippines for the said period is not
necessary. An applicant for registration based on home
certificate of registration need not even have used the
mark or trade name in this country.”
“In any event, under Section 239.2 of Republic Act No.
8293 (R.A. No. 8293), "[m]arks registered under Republic
Act No. 166 shall remain in force but shall be deemed to
have been granted under this Act x x x," which does not
require actual prior use of the mark in the Philippines.
Since the mark "Harvard Veritas Shield Symbol" is now
deemed granted under R.A. No. 8293, any alleged defect
arising from the absence of actual prior use in the
Philippines has been cured by Section 239.2.”
The Supreme Court further ruled that Harvard University
is entitled to protection in the Philippines of its trade name
“Harvard” even without registration of such trade name in
the Philippines. It explained:
“There is no question then, and this Court so declares, that
"Harvard" is a well-known name and mark not only in the
United States but also internationally, including the
Philippines.
Levi Strauss & Co. v. Clinton Apparelle, GR No. 138900
September 20, 2005
FACTS:
The Complaint alleged that LS & Co., a foreign corporation
duly organized and existing under the laws of theState of
Delaware, USA and engaged in the apparel business, is the
owner by prior adoption and use since 1986 of the
internationally famous “Dockers and Design” trademark.
This ownership is evidenced by its valid and existing
registrations in various member countries if Paris
Convention. In the Philippines, it has a Certificate of
Registration No.46619 in the Principal Register for use of
said trademark on pants, shirts, blouses, skirts, shorts,
sweatshirts and jacketsunder Class 25.
The “Dockers and Design” trademark was first used in the
Philippines in or about May
1988, by LSPI, adomestic corporation engaged in the
manufacture, sale and distribution of various products
bearing trademarks owned
by LS & Co. To date, LSPI continues to manufacture and
sell Dockers Pants with the “Dockers and Design”
Trademark. LS
& Co
and LSPI alleged that they discovered the presence in the
local market of jeans under the brand name
“Paddocks”using a device which is substantially, if not
exactly, similar to the “Dockers and Design” trademark
owned and registered
in their name, without their consent. Based on their belied,
they added Clinton Apparelle manufactured and continues
to manufacture such “Paddocks” jeans and other apparel.
However, since LS & Co. and LSPI are unsure if both or just
one of impleaded defendants is behind the manufacture and
sale of the “Paddocks” jeans complained of,
they broughtthis suit under Sec. 13 Rule 3 of the 1997
Rules of Court.
ISSUE:
whether or not the
single registration of the trademark “Dockers and Design”
confers on the owner the right to
prevent the use of a fraction thereof.a
HELD:
Given the single registration of the trademark “Dockers
and Design” and considering that responde
nt only uses
the assailed device but a different word mark, the right to
prevent the latter from using the challenged
“Paddocks”device is far from clear. Stated otherwise, it is
not evident whether the single registration of the
trademark “Dockers and
Design” confers on the owner the right to prevent the use
of a fraction thereof in the course of trade. It is also
unclearwhether the use without the owner’s consent of a
portion of a trademark registered in its entirety
constitutes material
or substantial invasion of the owner’s right.
It is likewise not settled whether the wing-shaped logo, as
opposed to the word mark, is the dominant or central
feature of petitioners’ trademark—
the feature that prevails or is retained in the minds of the
public an imitation ofwhich creates the likelihood of
deceiving the public and constitutes trademark
infringement. In sum, there are vitalmatters which have yet
and may only be established through a full-blown trial
Bata Industries v CA
Digest
G.R. No. L-53672, May 31, 1982
Facts:
The respondent New Olympian Rubber Products
sought to register the mark "BATA" for casual rubber
shoe products, alleging it had used the said mark
since the 1970s. The petitioner, a Canadian
corporation opposed with its allegations that it owns
and has not abandoned said trademark. The
petitioner has no license to do business in the
Philippines and the trademark has never been
registered in the Philippines by any foreign entity.
Bata Industries does not sell footwear under the said
trademark in the Philippines nor does it have any
licensing agreement with any local entity to sell its
product.
Evidence show that earlier, even before the World
War II, Bata shoes made by Gerbec and Hrdina
(Czech company) were already sold in the country.
Some shoes made by the petitioner may have been
sold in the Philippines ntil 1948. On the other hand,
respondent spent money and effort to popularize the
trademark "BATA" since the 70's. Moreover, it also
secures 3 copyright registrations for the word
"BATA". The Philippine Patent Office (PPO) dismissed
the opposition by the petitioner while the Court of
Appeals (CA) reversed said decision. However, a 2nd
resolution by the CA affirmed the PPO decision.
Issue: Does the petitioner have the right to protect
its goodwill alleged to be threatened with the
registration of the mark?
NO. Bata Industries has no Philippine goodwill that
would be damaged by the registration of the mark.
Any slight goodwill obtained by the product before
World War II was completely abandoned and lost in
the more than 35 years that passed since Manila's
liberation from Japan. The petitioner never used the
trademark either before or after the war. It is also
not the successor-in-interest of Gerbec & Hrdina and
there there was no privity of interest between them,
Furthermore, the Czech trademark has long been
abandoned in Czechoslovakia
PROSOURCE INTERNATIONAL, INC. vs.
HORPHAG RESEARCH MANAGEMENT SA
G.R. No. 180073, November 25, 2009
Facts:
Respondent Horphag Research Management is a
corporation duly organized and existing under the
laws of Switzerland and the owner of trademark
PYCNOGENOL, a food supplement sold and
distributed by Zuellig Pharma Corporation.
Respondent discovered that petitioner Prosource
International was also distributing a similar food
supplement using the mark PCO-GENOLS since
1996 and was only discontinued in 2000.
Respondent filed a complaint for Infringement of
Trademark against petitioner, praying that the
latter cease and desist from using the brand PCO-
GENOLS for being confusingly similar with
respondent’s trademark PYCNOGENOL. Petitioner
contended that the two marks were not
confusingly similar and denied liability, since it
discontinued the use of the mark prior to the
institution of the infringement case.
Issue:
Whether or not petitioners are liable for
infringement of trademark.
Held:
The court ruled in the positive. A trademark is any
distinctive word, name, symbol, emblem, sign, or
device, or any combination thereof, adopted and
used by a manufacturer or merchant on his goods
to identify and distinguish them from those
manufactured, sold, or dealt by others. The
gravamen of trademark infringement is the
element of "likelihood of confusion" which must be
examined from the particular, and sometimes
peculiar, circumstances of each case.
In determining similarity and likelihood of
confusion, jurisprudence has developed two tests:
the Dominancy Test and the Holistic or Totality
Test. The Dominancy Test focuses on the similarity
of the prevalent features of the competing
trademarks that might cause confusion and
deception, thus constituting infringement. If the
competing trademark contains the main, essential
and dominant features of another, and confusion
or deception is likely to result, infringement takes
place. Duplication or imitation is not necessary;
nor is it necessary that the infringing label should
suggest an effort to imitate. The question is
whether the use of the marks involved is likely to
cause confusion or mistake in the mind of the
public or to deceive purchasers. Courts will
consider more the aural and visual impressions
created by the marks in the public mind, giving
little weight to factors like prices, quality, sales
outlets, and market segments. In contrast, the
Holistic Test entails a consideration of the entirety
of the marks as applied to the products, including
the labels and packaging, in determining confusing
similarity. The discerning eye of the observer must
focus not only on the predominant words but also
on the other features appearing on both labels in
order that the observer may draw his conclusion
whether one is confusingly similar to the other.
In the case at bar, the dominancy test was used in
determining whether there was a confusing similarity
between the marks PYCNOGENOL and PCO-GENOL.
Applying the test, the court found that:
Athough the letters "Y" between P and C, "N"
between O and C and "S" after L are missing PCO-
GENOLS, nevertheless, when the two words are
pronounced, the sound effects are confusingly similar
not to mention that they are both described by their
manufacturers as a food supplement and thus,
identified as such by their public consumers. And
although there were dissimilarities in the trademark
due to the type of letters used as well as the size,
color and design employed on their individual
packages/bottles, still the close relationship of the
competing products’ name in sounds as they were
pronounced, clearly indicates that purchasers could
be misled into believing that they are the same
and/or originates from a common source and
manufacturer. This is not the first time that the court
takes into account the aural effects of the words and
letters contained in the marks in determining the
issue of confusing similarity.
SHANGRI-LA INTERNATIONAL HOTEL
MANAGEMENT LTD., SHANGRI-LA PROPERTIES,
INC., MAKATI SHANGRI-LA HOTEL AND RESORT,
INC. and KUOK PHILIPPINE
PROPERTIES, INC., petitioners, vs. THE COURT
OF APPEALS, HON. FELIX M. DE
GUZMAN, as Judge, RTC of Quezon City, Branch
99 and DEVELOPERS GROUP OF
COMPANIES, INC., respondents.
YNARES-SANTIAGO, J.:
FACTS: On June 21, 1988, the Shangri-La
International Hotel Management, Ltd., Shangri-La
Properties, Inc., Makati Shangri-La Hotel and
Resort, Inc. and Kuok Philippine Properties, Inc.
(hereinafter collectively referred as the "Shangri-
La Group"), filed with the Bureau of Patents,
Trademarks and Technology Transfer (BPTTT) a
petition, praying for the cancellation of the
registration of the "Shangri-La" mark and "S"
device/logo issued to the Developers Group of
Companies, Inc., on the ground that the same was
illegally and fraudulently obtained and
appropriated for the latter's restaurant business.
The Shangri-La Group alleged that it is the
legal and beneficial owners of the subject mark
and logo; that it has been using the said mark
and logo for its corporate affairs and business
since March 1962 and caused the same to be
specially designed for their international hotels in
1975, much earlier than the alleged first use
thereof by the Developers Group in 1982.
Likewise, the Shangri-La Group filed with the
BPTTT its own application for registration of the
subject mark and logo. The Developers Group filed
an opposition to the application. Almost
three (3) years later, or on April 15, 1991, the
Developers Group instituted a complaint for
infringement and damages with prayer for
injunction, against the Shangri-La Group. On
January
8, 1992, the Shangri-La Group moved for the
suspension of the proceedings in the infringement
case on account of the pendency of the
administrative proceedings before the BPTTT. This
was
denied, as well as the Motion for Reconsideration,
by the trial court. The Shangri-La Group filed
a petition for certiorari before the Court of
Appeals. The Court of Appeals affirmed the
decision
of the trial court.
ISSUE:
Whether or not despite the institution of an Inter
Partes case for cancellation of a mark
with the BPTTT (now the Bureau of Legal Affairs,
Intellectual Property Office) by one party, the
adverse party can file a subsequent action for
infringement with the regular courts of justice in
connection with the same registered mark.
HELD:
YES. Section 151.2 of the Intellectual Property
Code substantially provides that the
earlier filing of petition to cancel the mark
with the Bureau of Legal Affairs shall not
constitute a prejudicial question that must be
resolved before an action to enforce the
rights to same registered mark may be decided.
Hence, as applied in the case at bar, the earlier
institution of an Inter Partes case by the
Shangri-La Group for the cancellation of the
"Shangri-La" mark and "S" device/logo with the
BPTTT cannot effectively bar the subsequent filing
of an infringement case by registrant
Developers Group. The law and the rules are
explicit.
The rationale is plain: Certificate of Registration
No. 31904, upon which the infringement case is
based, remains valid and subsisting for as long as
it has not been cancelled by the Bureau or by
an infringement court. As such, Developers
Group's Certificate of Registration in the principal
register continues as "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." Since the certificate
still subsists, Developers Group may thus file a
corresponding infringement suit and recover
damages from any person who infringes upon the
former's rights.
Furthermore, the issue raised before the BPTTT is
quite different from that raised in the trial
court. The issue raised before the BPTTT was
whether the mark registered by Developers
Group is subject to cancellation, as the Shangri-La
Group claims prior ownership of the disputed
mark. On the other hand, the issue raised before
the trial court was whether the Shangri-La
Group infringed upon the rights of Developers
Group within the contemplation of Section 22 of
Republic Act 166.
Following both law and the jurisprudence
enunciated in Conrad and Company, Inc. v. Court
of
Appeals, the infringement case can and should
proceed independently from the cancellation
case with the Bureau so as to afford the owner of
certificates of registration redress and
injunctive writs. In the same light, so must the
cancellation case with the BPTTT (now the
Bureau of Legal Affairs, Intellectual Property
Office) continue independently from the
infringement case so as to determine whether a
registered mark may ultimately be cancelled.
However, the Regional Trial Court, in granting
redress in favor of Developers Group, went
further and upheld the validity and preference of
the latter's registration over that of the Shangri-
La Group.
There can be no denying that the infringement
court may validly pass upon the right of
registration, as provided under Section 161 of the
Intellectual Property Code. With the decision
of the Regional Trial Court upholding the validity
of the registration of the service mark "Shangri-
La" and "S" logo in the name of Developers Group,
the cancellation case filed with the Bureau
hence becomes moot. To allow the Bureau to
proceed with the cancellation case would lead to
a possible result contradictory to that which the
Regional Trial Court has rendered, albeit the
same is still on appeal. Such a situation is
certainly not in accord with the orderly
administration
of justice. In any event, the Court of Appeals has
the competence and jurisdiction to resolve the
merits of the said RTC decision.
To provide a judicious resolution of the issues at
hand, The Court finds it appropriate to order
the suspension of the proceedings before the
Bureau pending final determination of the
infringement case, where the issue of the validity
of the registration of the subject trademark and
logo in the name of Developers Group was passed
upon.