LA CHEMISE LACOSTE VS FERNANDEZ Philippine registrants of such trademarks should be asked to surrender their

certificates of registration, if any, to avoid suits for damages and other legal
Facts: action by the trademarks’ foreign or local owners or original users.

Petitioner La Chemise Lacoste is a foreign corporation and the actual owner
of the trademarks ‘Lacoste,’ ‘Chemise Lacoste,’ and ‘Crocodile Device’ used
on clothing and other goods that are sold in many parts of the world. Herein
respondent Hemadas & Co., a domestic firm, applied and was granted
registration of the mark ‘Chemise Lacoste and Crocodile Device’ for its
garment products. Sometime later, petitioner applied for the registration of its
mark ‘Crocodile Device’ and ‘Lacoste’ but was opposed by herein
respondent. Later, petitioner filed a letter-complaint of unfair competition
before the NBI which led to the issuance of search warrants and the seizure
of goods of respondent Hemadas. Respondent moved to quash the warrants
alleging that its trademark was different from petitioner’s trademark.
Respondent court ruled to set aside the warrants and to return the seized
goods.
The Intermediate Appellate Court, in the La Chemise Lacoste S.A. v.
Sadhwani decision which we cite with approval sustained the power of the
Minister of Trade to issue the implementing memorandum and declared La
Chemise Lacoste S.A. the owner of the disputed trademark, stating: “In the
case at bar, the Minister of Trade, as ‘the competent authority of the country
of registration,’ has found that among other well-known trademarks ‘Lacoste’
is the subject of conflicting claims. For this reason, applications for its
registration must be rejected or refused, pursuant to the treaty obligation of
the Philippines.”

Issue:

Whether or not petitioner’s trademark is a well-known mark protected under

the Paris Convention.

Ruling: YES.

In upholding the right of the petitioner to maintain the present suit before our
courts for unfair competition or infringement of trademarks of a foreign
corporation, we are moreover recognizing our duties and the rights of foreign
states under the Paris Convention for the Protection of Industrial Property to
which the Philippines and France are parties.

Pursuant to this obligation, the Ministry of Trade issued a memorandum

addressed to the Director of the Patents Office directing the latter to reject all
pending applications for Philippine registration of signature and other world
famous trademarks by applicants other than its original owners or users. The
conflicting claims over internationally known trademarks involve such name
brands as Lacoste, et. al. It is further directed that, in cases where warranted,