FREDCO MANUFACTURING CORPORATION Petitioner, vs.

PRESIDENT AND FELLOWS OF

HARVARD COLLEGE (HARVARD UNIVERSITY), Respondents.
(G.R. No. 185917: June 1, 2011)

FACTS OF THE CASE:

Our parties were competitors engaged in apparel markings/signs wherein they argued for the use of the
term “HARVARD”.

Fredco argued that they were the first one from their predecessor New York Garments Manufacturing
and Export Company, Incorporated which obtained the said trademark in 1982 whereas the respondent
obtained such “Harvard Veritas Shield Symbol” in 1993 for their decals, t-shirts, hats, trays, etc. In the
subsequent years, the said products were duly registered in accordance with their class pursuant to
NICE Classification (an agreement which the Philippines signed in Nice, Paris in 1957 for trademark).
Hence, actual use of the trademark shall prevail on who has a better right to use such.

On the other hand, the term “Harvard” has been used widely through several countries including the
Philippines which its nature and mark started in 1639 as the Harvard College and was used in its
commerce in 1872. Their name and brand have been rated the most popular brands in the world. In
2002, Harvard discovered in the international program that a certain “Harvard Jeans being advertised
without Harvard’s consent.

The conflict arose when the application of registration of the Harvard Veritas Symbol for Class 25 was
canceled by the Intellectual Property Office Bureau of Legal Affairs. On appeal to the Director-General,
the latter ruled in favor of the respondent on the ground that the right to register a trademark is based
on ownership and when the applicant is not the owner, he has no right to register the mark. The mark
covered by Harvard University’s Registration is not only the word "Harvard" but also the logo, emblem,
or symbol of Harvard University. The Director-General ruled that Fredco failed to explain how its
predecessor New York Garments came up with the mark "Harvard." In addition, there was no evidence
that Fredco or New York Garments was licensed or authorized by Harvard University to use its name in
commerce or for any other use. The same fate also when an appeal to the Court of Appeals
commenced.

ISSUE:
Whether the Fredco has a better possession to use the term “HARVARD”?

HELD:

No, because Fredco constitutes falsely suggests a connection with the institution Harvard University.

In Section 4 of RA 166 which is placed under our Intellectual Property Code under Sec. 123.1 (a),
the mark cannot be registered if it consists of falsely suggesting a connection with the institution.

In this case, Fredco’s use of the mark "Harvard," coupled with its claimed origin in Cambridge,
Massachusetts, obviously suggests a false connection with Harvard University. Fredco’s registration of
the mark "Harvard" and its identification of origin as "Cambridge, Massachusetts" falsely suggest that
Fredco or its goods are connected with Harvard University, which uses the same mark "Harvard" and is
also located in Cambridge, Massachusetts. This can easily be gleaned from the following oblong logo of
Fredco that it attaches to its clothing line:

Fredco does not have any affiliation or connection with Harvard University, or even with Cambridge,
Massachusetts. Fredco or its predecessor New York Garments was not established in 1936, or in the
U.S.A. as indicated by Fredco in its oblong logo. Fredco offered no explanation to the Court of Appeals
or to the IPO why it used the mark "Harvard" on its oblong logo with the words "Cambridge,
Massachusetts," "Established in 1936," and "USA." Fredco now claims before this Court that it used
these words "to evoke a ‘lifestyle’ or suggest a ‘desirable aura’ of petitioner’s clothing lines." Fredco’s
belated justification merely confirms that it sought to connect or associate its products with Harvard
University, riding on the prestige and popularity of Harvard University, and thus appropriating part of
Harvard University’s goodwill without the latter’s consent.

The case was denied.