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E.Y. Industrial Sales Inc. and Engracio Yap vs.

Shen Dar
Electricity and Machinery Co.
G.R. No. 184850, October 20, 2010

FACTS:
EYIS is a domestic corporation engaged in the production,
distribution and sale of air compressors and other industrial tools and
equipment. Petitioner Engracio Yap is the Chairman of the Board of
Directors of EYIS. Respondent Shen Dar, on the other hand, is a
Taiwan-based foreign corporation engaged in the manufacture of air
compressors. Both companies claimed to have the right to register
the trademark VESPA for air compressors. From 1997 to 2004,
EYIS imported air compressors from Shen Dar through sales
contracts. In the Sales Contract dated April 20, 2002, for example,
Shen Dar would supply EYIS in one (1) year with 24 to 30 units of
40-ft. containers worth of air compressors identified in the
Packing/Weight Lists simply as SD-23, SD-29, SD-31, SD-32, SD39, SD-67 and SD-68. In the corresponding Bill of Ladings, the
items were described merely as air compressors. There is no
documentary evidence to show that such air compressors were
marked VESPA.
On June 9, 1997, Shen Dar filed a Trademark Application with the
IPO for the mark VESPA, Chinese Characters and Device for use
on air compressors and welding machines. On July 28, 1999, EYIS
filed a Trademark Application also for the mark VESPA, for use on
air compressors. On January 18, 2004, the IPO issued COR No. 41999-005393 in favor of EYIS. Thereafter, on February 8, 2007,
Shen Dar was also issued COR No. 4-1997-121492. In the
meantime, on June 21, 2004, Shen Dar filed a Petition for

Cancellation of EYIS COR with the BLA. In the Petition, Shen Dar
primarily argued that the issuance of the COR in favor of EYIS
violated Section 123.1 paragraphs (d), (e) and (f) of Republic Act No.
(RA) 8293, otherwise known as the Intellectual Property Code (IP
Code), having first filed an application for the mark. Shen Dar further
alleged that EYIS was a mere distributor of air compressors bearing
the mark VESPA which it imported from Shen Dar. Shen Dar also
argued that it had prior and exclusive right to the use and registration
of the mark VESPA in the Philippines under the provisions of the
Paris Convention. The BLA and the IPO Director General denied
Shen Dars petition. However, the Court of Appeals reversed the
decision and ruled in favor of herein respondent. Hence, this appeal
on Certiorari.
ISSUE:
Whether or not E.Y. Indiustrial Sales is the true owner of the mark
Vespa
HELD:
YES. Under Section 123(d) of RA 8293, the registration of a
mark is prevented with the filing of an earlier application for
registration. This must not, however, be interpreted to mean that
ownership should be based upon an earlier filing date. While RA
8293 removed the previous requirement of proof of actual use prior
to the filing of an application for registration of a mark, proof of prior
and continuous use is necessary to establish ownership of a mark.
Such ownership constitutes sufficient evidence to oppose the
registration of a mark.
Sec. 134 of the IP Code provides that any person who believes that
he would be damaged by the registration of a mark x x x may file an

opposition to the application. The term any person encompasses


the true owner of the mark -- the prior and continuous user.
Notably, the Court has ruled that the prior and continuous use of a
mark may even overcome the presumptive ownership of the
registrant and be held as the owner of the mark. Here, the
incontrovertible truth, as established by the evidence submitted by
the parties, is that Petitioner E.Y. Industrial Sales is the prior user of
the mark. On the other hand, Shen Dar failed to refute the evidence
cited by the BLA in its decision. More importantly, Shen Dar failed to
present sufficient evidence to prove its own prior use of the mark
VESPA. As such, E.Y. Industrial Sales must be considered as the
prior and continuous user of the mark VESPA and its true owner.
Hence, E.Y. Industrial Sales is entitled to the registration of the mark
in its name.

Chester Uyco, Winston Uychiyong and Cherry Uyco-Ong v


Vicente Lo
G.R. No. 202423, January 28, 2013

with the IPO for use of marks, derived their authority to use from
WONDER, their predecessor-in-interest and that PBMCs licensing
agreement with Lo is ineffective for being unnotarized, among
others.
Issue:

Facts:
Petitioners in this case are the officers of Wintrade Industrial Sales
Corp (WINTRADE), seller of kerosene burners in the Philippines.
Vicente Lo, on the other hand, claims to be the asssignee of the
disputed marks "HIPOLITO & SEA HORSE & TRIANGULAR
DEVICE," "FAMA," and other related marks, service marks and trade
names Casa Hipolito S.A. Portugal, to be used in kerosene burners
as well.
Lo further alleged that the ultimate owner of said marks is the
Portuguese Company GASIREL and that the latter executed a deed
of assignment in favor of Lo to use the marks in all countries except
Europe and America.
Lo subsequently authorized his agent
Philippine Burners Manufacturing Corporation (PBMC) to
manufacture burners with the aforementioned marks and tradename
Casa Hipolito S.A. Portugal.
During a test buy, Lo was able to purchase a burner with marked
"Made in Portugal" and "Original Portugal". He noted that such
burners were manufactured by WINTRADE. As such, Lo filed a
complaint on the ground that the kerosene burners sold by
WINTRADE have caused confusion, mistake and deception on the
part of the buying public as to the origin of goods.
WINTRADE and its officers contend that the marks "Made in
Portugal" and "Original Portugal" refer to origin of the design and
not origin of the goods and that they have certificates of registration

Whether or not WINTRADE and its officers are liable for violation of
the law on trademarks, tradenames and false designation of origin?
Held:
Yes. WINTRADE and its officers are liable for violation of the law on
trademarks and tradenames and for false designation of origin. They
placed the words "Made in Portugal" and "Original Portugal" with the
disputed marks knowing fully well because of their previous
dealings with the Portuguese company that these were the marks
used in the products of another. More importantly, they used the
marks without any authority from the owner notwithstanding that their
products are, in reality, produced in the Philippines, not in Portugal.
Hence, probable cause exists to charge the petitioners with false
designation of origin. Had they intended to refer to the source of the
design or the history of the manufacture, they should have explicitly
said so in their packaging.
The Supreme Court emphasized that the law on trademarks and
trade names precisely precludes a person from profiting from the
business reputation built by another and from deceiving the public as
to the origin of products.