Final Digest Ipl.docx

Fredco Manufacturing Corporation Fellows of Harvard College

v.

President

and

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

months in the Philippines prior to the filing of an application 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 PCOGENOLS 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 PCOGENOLS, 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 "ShangriLa 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 ShangriLa 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 "ShangriLa" 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.