Case Digest: Sehwani, Incorporated and/or Benitas Fries,

Inc. vs. In-n-out Burger, Inc.

Petitioners Claims:

Petitioners alleged that the Respondent lack the legal

capacity to sue because it was not doing business in the
Philippines and that it has no cause of action because its
mark is not registered or used in the Philippines.a.
Sehwani, Inc. also claimed that as the registered owner of
the IN N OUT mark, it enjoys the presumption that the
same was validly acquired and that it has the exclusiveb.
right to use the mark. Moreover, petitioners argued that
other than the bare allegation of fraud in the registration
of the mark, respondent failed to show the existence of
any grounds of cancellation thereof under Section 151 of
the IP Code of the Philippines. It also alleged that the
action is barred by laches.
Respondents Claims:
Respondent, In-n-out Burger, Inc., alleged that it is the
owner of the tradename IN-N-OUT and trademarks IN-
N-OUT, IN-N-OUT Burger & Arrow Design and IN-NOUT Burger Logo which are used in its business since
1948 up to the present.
These tradename and
trademarks were registered in the United States as well as
in other parts of the world. Petitioner Sehwani allegedly
had obtained a trademark registration for the mark IN N
OUT (with the inside letter O formed like a star) without
its authority.

Issue/s:
Whether or not the Respondent has the legal
capacity to sue for the protection of its trademarks albeit
it is not doing business in the Philippines
Whether or not a ground exists for the cancellation
of the Petitioners registration

Ruling:
Yes. Section 160 RA No. 8293 provides for the right
of foreign corporations to sue in trademark or service
mark enforcement action, provided that it meets the
requirements under Section 3 thereof, which are:
Any convention, treaty or agreement relation to
intellectual property right or the repression of unfair
competition wherein Philippines is also a party; and
An extension therein of reciprocal rights.
Moreoever, Article 6bis of The Paris Convention, which
governs the protection of well-known trademarks, is a selfexecuting provision and does not require legislative
enactment to give it effect in the member country. The
essential requirement therein is that the trademark must
be well-known in the country where protection is sought.
In this case, Director Beltran-Abelardo found that In-n-out
Burger and Arrow Design is an internationally well0known
mark as evidenced by its trademark registrations around
the world and its comprehensive advertisements therein.
Yes. Section 151(b) of RA 8293 provides that a
petition to cancel a registration of a mark may be filed
with the Bureau of Legal Affairs by any person who
believes that he is or will be damaged by the registration
of a mark at any time, if the registered mark becomes the
generic name for the goods or services, or a portion
thereof, for which it is registered, or has been abandoned,
or its registration was fraudulently or contrary to the
provisions of this Act, or if the registered mark is being
used by or with the permission of, the registrant so as to
misrepresent the source of goods or services on or in
connection with which the mark is used. The evidence
showed that not only did the petitioners use the IN-N-OUT
Burger trademark for the name of their restaurant, but
they also used identical or confusingly similar mark for
their hamburger wrappers and French-fries receptacles,

thereby effectively misrepresenting the source of the

goods and services.

denied petitioners motion for preliminary hearing on

affirmative
defenses
with
motion
to
dismiss

CA:
affirmed
ISSUE: W/N RTC performed a grave abuse of discretion

246
G.R.

Corporation
No.

157216

v.
November

Daway
20,

2003

Lessons Applicable: Jurisdiction of Trial court,

special affirmative defences on infringement
Laws

Applicable:

FACTS:

Montres Rolex S.A. and Rolex Centre Phil., Limited,

owners/proprietors of Rolex and Crown Device, filed
against 246 Corporation the instant suit for trademark
infringement and damages with prayer for the issuance of
a restraining order or writ of preliminary injunctionbefore
the
RTC
of
QC
o
July 1996: 246 adopted and , since then, has been
using without authority the mark Rolex in its business
name Rolex Music Lounge as well as in its newspaper
advertisements as Rolex Music Lounge, KTV, Disco &
Party
Club.

246 answered special affirmative defences: no

confusion would arise from the use by petitioner of the
mark Rolex considering that its entertainment business
is totally unrelated to the items catered by respondents
such as watches, clocks, bracelets and parts thereof

RTC: quashed the subpoena ad testificandum and

HELD:
NO.
petition
denied.
RTC
affirmed
The issue of whether or not a trademark infringement
exists, is a question of fact that could best be determined
by
the
trial
court.

Section 123.1(f) of the Intellectual Property Code

(Republic
Act
No.
8293)
o
(f)
Is identical with, or confusingly similar to, or
constitutes a translation of a mark considered well-known
in accordance with the preceding paragraph, which is
registered in the Philippines with respect to goods or
services which are not similar to those with respect to
which registration is applied for: Provided, That use of the
mark in relation to those goods or services would indicate
a connection between those goods or services, and the
owner of the registered mark: Provided, further, That the
interest of the owner of the registered mark are likely to
be
damaged
by
such
use
Section 123.1(f) is clearly in point because the Music
Lounge of petitioner is entirely unrelated to respondents
business involving watches, clocks, bracelets, etc.
However, the Court cannot yet resolve the merits of the
present controversy considering that the requisites for the
application of Section 123.1(f), which constitute the kernel
issue at bar, clearly require determination facts of which
need to be resolved at the trial court. The existence or
absence of these requisites should be addressed in a full
blown hearing and not on a mere preliminary hearing.
The respondent must be given ample opportunity to prove
its claim, and the petitioner to debunk the same.

warrants. Hemandas filed motion to quash the warrants,

which the court granted. The search warrants were
recalled, and the goods ordered to be returned. La
Chemise Lacoste filed a petition for certiorari.
Issue: Whether the proceedings before the patent office is
a prejudicial question that need to be resolved before the
criminal action for unfair competition may be pursued.

La Chemise Lacoste vs. Fernandez GR 63796-97, 21

May 1984; First Division, Gutierrez Jr. (J)
Facts: La chemise Lacoste is a French corporation and the
actual owner of the trademarks Lacoste, Chemise
Lacoste, Crocodile Device and a composite mark
consisting of the word Lacoste and a representation of a
crocodile/alligator, used on clothings and other goods sold
in many parts of the world and which has been marketed
in the Philippines (notably by Rustans) since 1964. In 1975
and 1977, Hemandas Q. Co. was issued certificate of
registration for the trademark Chemise Lacoste and Q
Crocodile Device both in the supplemental and Principal
Registry. In 1980, La Chemise Lacoste SA filed for the
registration of the Crocodile device and Lacoste.
Games and Garments (Gobindram Hemandas, assignee of
Hemandas Q.Co.) opposed the registration of Lacoste. In
1983, La Chemise Lacoste filed with the NBI a lettercomplaint alleging acts of unfair competition committed
by Hemandas and requesting the agencys assistance. A
search warrant was issued by the trial court. Various
goods and articles were seized upon the execution of the

Held: No. The proceedings pending before the Patent

Office do not partake of the nature of a prejudicial
question which must first be definitely resolved. The case
which suspends the criminal action must be a civil case,
not a mere administrative case, which is determinative of
the innocence or guilt of the accused. The issue whether a
trademark used is different from anothers trademark is a
matter of defense and will be better resolved in the
criminal proceedings before a court of justice instead of
raising it as a preliminary matter in an administrative
proceeding. Inasmuch as the goodwill and reputation of La
Chemise Lacoste products date back even before 1964,
Hemandas cannot be allowed to continue the trademark
Lacoste for the reason that he was the first registrant in
the Supplemental Register of a trademark used in
international commerce. Registration in the Supplemental
Register cannot be given a posture as if the registration is
in the Principal Register. It must be noted that one may be
declared an unfair competitor even if his competing
trademark is registered. La Chemise Lacoste is world
renowned mark, and by virtue of the 20 November 1980
Memorandum of the Minister of Trade to the director of
patents in compliance with the Paris Convention for the
protection of industrial property, effectively cancels the
registration of contrary claimants to the enumerated
marks, which include Lacoste.

2. Armed with the resolution of the Court, petitioner

instituted before the SEC to compel private respondents,
which are also educational institutions, to delete word
Lyceum from their corporate names and permanently to
enjoin them from using such as part of their respective
names.
3. Hearing officer sustained the claim of petitioner and
held that the word Lyceum was capable of appropriation
and that petitioner had acquired an enforceable right to
the use of that word.
4. In an appeal, the decision was reversed by the SEC En
Banc. They held that the word Lyceum to have become
identified with petitioner as to render use thereof of other
institutions as productive of consfusion about the identity
of the schools concerned in the mind of the general
public.

LYCEUM OF THE PHILS. V. CA

219 SCRA 610
FACTS:
1. Petitioner had sometime commenced before in the SEC
a complaint against Lyceum of Baguio, to require it to
change its corporate name and to adopt another name
not similar or identical with that of petitioner. SEC decided
in favor of petitioner. Lyceum of Baguio filed petition for
certiorari
but
was
denied
for
lack of merit.

5. Petitioner went to appeal with the CA but the latter just

affirmed the decision of the SEC En Banc.
HELD:
Under the corporation code, no corporate name may be
allowed by the SEC if the proposed name is identical or
deceptively or confusingly similar to that of any existing
corporation or to any other name already protected by
law or is patently deceptive, confusing or contrary to
existing laws. The policy behind this provision is to avoid
fraud upon the public, which would have the occasion to
deal with the entity concerned, the evasion of legal
obligations and duties, and the reduction of difficulties of
administration and supervision over corporations.

The corporate names of private respondents are not

identical or deceptively or confusingly similar to that of
petitioners. Confusion and deception has been precluded
by the appending of geographic names to the word
Lyceum. Furthermore, the word Lyceum has become
associated in time with schools and other institutions
providing public lectures, concerts, and public discussions.
Thus, it generally refers to a school or an institution of
learning.
Petitioner claims that the word has acquired a secondary
meaning in relation to petitioner with the result that the
word,
although
originally
generic,
has
become
appropriable by petitioner to the exclusion of other
institutions.
The doctrine of secondary meaning is a principle used in
trademark law but has been extended to corporate names
since the right to use a corporate name to the exclusion of
others is based upon the same principle, which underlies
the right to use a particular trademark or tradename.
Under this doctrine, a word or phrase originally incapable
of exclusive appropriation with reference to an article in
the market, because geographical or otherwise
descriptive might nevertheless have been used for so long
and so exclusively by one producer with reference to this
article that, in that trade and to that group of purchasing
public, the word or phrase has come to mean that the
article was his produce. The doctrine cannot be made to
apply where the evidence didn't prove that the business
has continued for so long a time that it has become of
consequence and acquired good will of considerable value
such that its articles and produce have acquired a well
known reputation, and confusion will result by the use of
the disputed name.

Petitioner didn't present evidence, which provided that

the word Lyceum acquired secondary meaning. The
petitioner failed to adduce evidence that it had exclusive
use of the word. Even if petitioner used the word for a
long period of time, it hadnt acquired any secondary
meaning in its favor because the appellant failed to prove
that it had been using the same word all by itself to the
exclusion of others.

CASE DIGEST: Etepha A.G. vs. Director of Patents

16 SCRA 495 (1966)

FACTS:
On April 23, 1959, private respondent Westmont
Pharmaceuticals, Inc. sought registration of trademark
Atussin This was objected to by petitioner Etepha, A.G.
alleging that it will be detrimental on their part as it is
confusingly similar to its Pertussin. Both products deal
with the treatment of cough.

ISSUE:
Whether or not Attusin may be registered as a
trademark.

HELD:
Yes. x x x The validity of a cause for infringment is
predicated upon colorable imitation. The phrase
colorable imitaion denotes such a close or ingenious
imitation as to be calculated to deceive ordinary persons,
or such a resemblance to the original as to deceive an
ordinary purchaser giving such attention as a purchaser
usually gives, and to cause him to purchase the one
supposing it to be the other.

While tussin by itself cannot thus be used

exclusively to identify ones goods, it may properly
become the subject of a trademark by combination with
another word or phrase.

The two labels are entirely different in colors,

contents, arrangement of words theeon, sizes, shapes and
general appearance. The contrasts in pictorial effects and
appeals to the eye is so pronounced that the label of one
cannot be mistaken for that of the other, not even by
persons unfamiliar with the two trademarks.

We cannot escape notice of the fact that the two

words do not sound alike when pronounced.

CASE DIGEST: COMPAIA GENERAL DE TABACOS DE

FILIPINAS vs. ALHAMBRA CIGAR AND CIGARETTE
MANUFACTURING CO.
FACTS:

It is admitted that plaintiffs trade name as

evidenced by the certificate issued under the Spanish
regime, consists solely of the words La Flor de la
Isabela. Plaintiff does not claim that the word Isabela
has been registered by it as a trade name or that it has a
title from any source conferring on it the exclusive right to
use that word.

Defendant began the manufacture of cigarettes,

offering them to the public in packages on the front side
of each of which appeared the words Alhambra Isabelas.

Action is brought to enjoin the defendant from

using the word Isabelas.

The exclusive right to use this name, plaintiff claim

arises from two causes: First, the contraction of the
phrase La Flor de la Isabela into the word Isabela by
popular expression and use; and second, the use for more
than twenty years of the word Isabela.

Judgment
appealed.

was

for

plaintiff

and

defendant

ISSUE:

Whether defendants use of the word Alhambra

Isabela is an infringement to the use of trade name.

HELD:

The statute prohibits the registration of a trade

name when the trade name represents the geographical
place of production or origin of the products or goods to
which the trade name refers, or when it is merely the
name, quality or description of the merchandise with
respect to which the trade name is to be used. In such
cases, therefore, no trade name can exist.

The two claims of the plaintiff are identical; for,

there could have been no contraction brought about by
popular expression except after long lapse of time. The

contraction of the phrase in to the word would create no

rights, there being no registration, unless it resulted from
long use.

The opinion of the plaintiff must fail. It shows that

in not a single instance in the history of the plaintiff
corporation, so far as is disclosed by the record, has a
package of its cigarettes gone into the market, either at
wholesale or retail with the word Isabela alone on the
package as a separate or distinct word or name.

Even admitting that the word Isabela may have

been appropriable by plaintiff as a trade name at the time
it began to use it, the evidence showing that it had been
exclusively appropriated by the plaintiff would have to be
very strong to establish the fact of appropriation and the
right to exclusive use. The law as it stands and has stood
since the Royal Decree of 1888 prohibits the use of a
geographical name as a trade name.

The judgment appealed from is reversed.

PHILIP MORRIS, INC. VS. FORTUNE TOBACCO

CORPORATION (Equal Standing of International Law
and Municipal Law)
Penned by: GARCIA, J.:
Petition for review under Rule 45 of the Rules of
Court, petitioners Philip Morris, Inc., Benson & Hedges
(Canada) Inc., and Fabriques de Tabac Reunies, S.A. (now
Philip Morris Products S.A.) seek the reversal and
setting aside of the following issuances of the
Court of Appeals (CA) in CA-G.R. CV No. 66619:
PETITION DENIED
1. Decision dated January 21, 20031 affirming an earlier
decision of the Regional Trial Court of Pasig City,
Branch 166, in its Civil Case No. 47374

Dismissed
the
complaint
for
trademark
infringement and damages thereat commenced
by the petitioners against respondent Fortune
Tobacco Corporation; and
2. Resolution dated May 30, 20032 denying petitioners
motion for reconsideration.
FACTS OF THE CASE:
Petitioner Philip Morris, Inc., a corporation
(State of Virginia, U.S.A), is the registered owner
of the trademark MARK VII for cigarettes.
(per Certificate of Registration No. 18723 issued on
April 26, 1973 by the Philippine Patents Office (PPO)
Similarly, petitioner Benson & Hedges (Canada),
Inc., a subsidiary of Philip Morris, Inc., is the
registered owner of the trademark MARK TEN for
cigarettes (PPO Certificate of Registration No.
11147)
Fabriques de Tabac Reunies, S.A. (Swiss
company), another subsidiary of Philip Morris, Inc.,
is the assignee of the trademark LARK,
(Trademark Certificate of Registration No. 19053)
(originally registered in 1964 by Ligget and Myers
Tobacco Company)
Respondent Fortune Tobacco Corporation, a
company organized in the Philippines, manufactures
and sells cigarettes using the trademark MARK.

Petitioners, on the claim that an infringement of

their respective trademarks had been committed,
filed, on August 18, 1982, a Complaint for
Infringement of Trademark and Damages
against respondent Fortune Tobacco Corporation,
docketed as Civil Case No. 47374 of the Regional
Trial Court of Pasig, Branch 166.
The decision under review summarized what
happened next, as follows:

o Prayer for the issuance of a preliminary

injunction, [petitioners] alleged that they are
foreign corporations not doing business in the
Philippines and are suing on an isolated transaction.
o Countries in which they are domiciled grant to
corporate or juristic persons of the Philippines
the privilege to bring action for infringement,
without need of a license to do business in
those countries.
o [Petitioners] likewise manifested [being registered
owners of the trademark MARK VII and MARK
TEN
o registered the trademarks in their respective
countries of origin
by virtue of the long and extensive
usage of the same, these trademarks
have already gained international fame
and acceptance
[respondent], without any previous
consent from any of the [petitioners],
manufactured
and
sold
cigarettes
bearing the identical and/or confusingly
similar trademark MARK
have caused and is likely to cause
confusion or mistake, or would deceive
purchasers and the public in general
into buying these products under the
impression and mistaken belief that
they are buying [petitioners] products.
o
Invoked provisions of the Paris Convention
for
the
Protection
of
Industrial
and
Intellectual Property (Paris Convention)
o Philippines is a signatory, [petitioners] pointed
out that upon the request of an interested
party, a country of the Union may prohibit the
use of a trademark which constitutes a
reproduction, imitation, or translation of a
mark already belonging to a person entitled to

the benefits of the said Convention. In

accordance with Section 21-A in relation
to Section 23 of Republic Act 166, as
amended, they are entitled to relief in the
form of damages [and] the issuance of a writ
of preliminary injunction which should be
made permanent.
o
[Respondent] filed its Answer denying
[petitioners] material allegations and averred
[among other things] that MARK is a common
word, which cannot particularly identify a
product to be the product of the [petitioners]
o After the termination of the trial on the merits trial
court rendered its Decision dated November 3, 1999
dismissing the complaint and counterclaim after
making a finding that the [respondent] did not
commit trademark infringement against the
[petitioners].
o
The issue of whether or not there was
infringement of the [petitioners] trademarks
by the [respondent] was likewise answered in
the negative. It expounded that in order for a
name, symbol or device to constitute a trademark, it
must, either by itself or by association, point
distinctly to the origin or ownership of the article to
which it is applied and be of such nature as to
permit an exclusive appropriation by one person.

Maintaining to have the standing to sue in the

local forum and that respondent has committed
trademark infringement, petitioners went on
appeal to the CA. (Appellate recourse docket CAG.R. CV No. 66619)
o CA decision on January 21, 2003 (while ruling
for petitioners on the matter of their legal

capacity to sue in this country for trademark

infringement) affirmed the trial courts
decision on the underlying issue of
respondents liability for infringement.
Motion for reconsideration denied by the CA
(Resolution of May 30, 2003)

ISSUES
Petitioners seek petition for review (Court of
Appeals):
o (1) whether or not petitioners, as
Philippine registrants of trademarks, are
entitled to enforce trademark rights in
this country;
o (2) whether or not respondent has committed
trademark infringement against petitioners by
its use of the mark MARK for its cigarettes,
hence liable for damages.

Respondent: issue the propriety of the petition as

it allegedly raises questions of fact.
The petition is bereft of merit.
Petition raises both questions of fact and law
o question of law exists when the doubt or
difference arises as to what the law is on a
certain state of facts
o question of fact when the doubt or
difference arises as to the truth or falsity of
alleged facts
Court is not the proper venue to
consider factual issues as it is not a trier
of facts
Unless the factual findings of the
appellate court are mistaken, absurd,
speculative, conflicting, tainted with
grave abuse of discretion, or contrary to

the findings culled by the court of origin,

we will not disturb them
Petitioners: contentions should be treated as
purely legal since they are assailing erroneous
conclusions deduced from a set of undisputed facts
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 in by others.
o A trademark deserves protection.

PETITIONER:
Petitioners assert that, as corporate nationals
of member-countries of the Paris Union, they
can sue
before Philippine courts for
infringement
of
trademarks,
or
for
unfair
competition,
without
need
of
obtaining
registration or a license to do business in the
Philippines, and without necessity of actually
doing business in the Philippines.
o Right and mechanism are accorded by
Section 21-A of Republic Act (R.A.)
No. 166 or the Trademark Law, as
amended
Article 2 of the Paris Convention for
the
Protection
of
Industrial
Property, aka Paris Convention.
Not doing business in the Philippines does not mean
that cigarettes bearing their trademarks are not
available and sold locally. Citing Converse Rubber
Corporation v. Universal Rubber Products,
Inc., such availability and sale may be effected
through the acts of importers and distributors.

Entitlement to protection even in the absence

of actual use of trademarks in the country
o Philippines adherence to the Trade Related
Aspects of Intellectual Property Rights or
the TRIPS Agreement
o enactment of R.A. No. 8293, or the
Intellectual Property Code (IP Code)
o fame of a trademark may be acquired through
promotion or advertising with no explicit
requirement of actual use in local trade or
commerce

Before discussing petitioners claimed entitlement

to enforce trademark rights in the Philippines, it
must be emphasized that their standing to
sue in Philippine courts had been recognized,
and rightly so, by the CA
o such right to sue does not necessarily
mean protection of their registered
marks in the absence of actual use in the
Philippines.

Thus clarified, what petitioners now harp about is their

entitlement to protection on the strength of
registration of their trademarks in the Philippines.
HELD/RATIO:
As we ruled in G.R. No. 91332,18 :
1. RECIPROCITY REQUIREMENT
Registration of a trademark gives the registrant
(petitioners) advantages denied non-registrants
or ordinary users (respondent)
o validity of the registration
o ownership and the exclusive right to use the
registered marks

they may not successfully sue on the basis

alone of their respective certificates of
registration of trademarks.
o Petitioners: still foreign corporations
o condition to availment of the rights and
privileges & their trademarks in this
country:

On top of Philippine registration, their

country grants substantially similar
rights and privileges to Filipino
citizens pursuant to Section 21-A20 of
R.A. No. 166.
In Leviton Industries v. Salvador
o Court: reciprocity requirement is a
condition sine qua non to filing a suit by a
foreign corporation
Unless alleged in the complaint, would
justify dismissal
o complainant is a national of a Paris
Conventionadhering
country,
its
allegation that it is suing under said
Section 21-A would suffice, because the
reciprocal agreement between the two
countries is embodied and supplied by
the Paris Convention
being considered part of Philippine
municipal laws, can be taken
judicial notice of in infringement
suits.

2. REGISTRATION VERSUS ACUAL USE!!

members of the Paris Union does not

automatically entitle petitioners to the
protection of their trademarks in this country
ABSENT ACTUAL USE OF THE MARKS IN LOCAL
COMMERCE AND TRADE.

Philippines adherence to the Paris Convention

effectively obligates the country to honor and
enforce its provisions( as regards the protection
of industrial property of foreign nationals in this
country)
o However, any protection accorded has to
be made subject to the limitations of
Philippine laws.
o Hence, despite Article 2 of the Paris
Convention which substantially provides
that:
(1) nationals of member-countries shall
have in this country rights specially
provided by the Convention as are
consistent with Philippine laws, and
enjoy the privileges that Philippine laws
now grant or may hereafter grant to its
national
(2) while no domicile requirement in the
country where protection is claimed
shall be required of persons entitled to
the benefits of the Union for the
enjoyment of any industrial property
rights
foreign nationals must still observe
and comply with the conditions
imposed by Philippine law on its
nationals.

R.A. No. 166 (as amended, specifically Sections

228 and 2-A29), mandates actual use of the
marks and/or emblems in local commerce and
trade before they may be registered and
ownership thereof acquired
o
the petitioners cannot, therefore,
dispense with the element of actual use.

Their being nationals of member-countries of

the Paris Union does not alter the legal
situation.

In Emerald Garment Mfg. Corporation v. Court of

Appeals, the Court reiterated its rulings in Sterling
Products International, Inc. v. Farbenfabriken Bayer
Aktiengesellschaft, Kabushi Kaisha Isetan v.
Intermediate Appellate Court, and Philip Morris v.
Court of Appeals and Fortune Tobacco Corporation
on the importance of ACTUAL COMMERCIAL
USE OF A TRADEMARK in the Philippines
notwithstanding the Paris Convention:
o The
provisions
of
the
1965
Paris
Convention relied upon by private
respondent
and
Sec.
21-A
of
the
Trademark Law were sufficiently expounded
upon and qualified in the recent case of Philip
Morris, Inc., et. al. vs. Court of Appeals:
Following universal acquiescence and
comity,
our
municipal
law
on
trademarks regarding the requirements
of actual use in the Philippines must
subordinate an international agreement
inasmuch as the apparent clash is being
decided by a municipal tribunal.
Withal, the fact that international law
has been made part of the law of the
land does NOT by any means imply
the primacy of international law
over national law in the municipal
sphere.

Under
the
DOCTRINE
OF
INCORPORATION as applied in most
countries, rules of International
Law are given a standing EQUAL,
not superior, to national legislative
enactments.

A foreign corporation) may have the

capacity to sue for infringement but
whether they have an exclusive right
over their symbol as to justify issuance
of the controversial writ will depend on
actual use of their trademarks in
the Philippines in line with Sections 2
and 2-A of the same law.
It is thus incongruous for petitioners to
claim that when a foreign corporation
not licensed to do business in the
Philippines files a complaint for
infringement, the entity need not be
actually
using
its
trademark
in
commerce in the Philippines.
Such a foreign corporation may
have the personality to file a suit
for infringement but it may not
necessarily
be
entitled
to
protection due to absence of actual
use of the emblem in the local
market.

Registration of trademark cannot be deemed

conclusive as to the actual use of such trademark
in local commerce.
o registration does not confer upon the
registrant an absolute right to the registered
mark.
o merely constitutes prima facie evidence that
the registrant is the owner of the registered
mark.
o Evidence of non-usage of the mark
rebuts the presumption of trademark
ownership

We stress that registration in the Philippines of

trademarks does not ipso facto convey an
absolute right or exclusive ownership thereof.
o Shangri-La
International
Hotel
Management, Ltd. v. Development Group
of Companies, Inc.
Trademark is a creation of use
Actual use is a pre-requisite to
exclusive ownership
Registration is only an administrative
confirmation of the existence of the
right of ownership of the mark
does not perfect such right;
actual
use thereof is the
perfecting ingredient.

Petitioners reliance on Converse Rubber

Corporation is quite misplaced
o different factual milieu
o
foreign owner of a Philippine trademark,
albeit not licensed to do, and not so engaged
in, business in the Philippines, may actually
earn reputation or goodwill for its goods in
the country.
o But unlike in the instant case, evidence of
actual sales of Converse rubber shoes,
such as sales invoices, receipts and the
testimony of a legitimate trader, was
presented in Converse.
This Court also finds the IP Code and the TRIPS
Agreement to be inapplicable
o
the infringement complaint filed in August
1982 and tried under the aegis of R.A. No.
166, as amended.
o The IP Code (January 1, 1998) no provision on
retroactivity; TRIPS Agreement (December
16, 1994)

registration of a trademark unaccompanied by

actual use thereof in the country accords the
registrant only the standing to sue for
infringement in Philippine courts. Entitlement
to protection of such trademark in the country
is entirely a different matter.

Mirpuri vs CA, GR No. 114508, 19 November

1999, 318 SCRA 516
FACTS
Lolita Escobar applied with the Bureau of Patents for
the registration of the trademark Barbizon, alleging that
she had been manufacturing and selling these products
since 1970. private respondent Barbizon Corp opposed
the application in IPC No. 686. The Bureau granted the
application and a certificate of registration was issued for
the trademark Barbizon. Escobar later assigned all her
rights and interest over the trademark to petitioner
Mirpuri. In 1979, Escobar failed to file with the Bureau the
Affidavit of Use of the trademark. Due to his failure, the
Bureau cancelled the certificate of registration. Escobar
reapplied and Mirpuri also applied and this application
was also opposed by private respondent in IPC No. 2049,
claiming that it adopted said trademark in 1933 and has
been using it. It obtained a certificate from the US Patent
Office in 1934. Then in 1991, DTI cancelled petitioners

registration and declared private respondent the owner

and prior user of the business name Barbizon
International.

ISSUE
Whether or not the treaty (Paris Convention) affords
protection to a foreign corporation against a Philippine
applicant for the registration of a similar trademark.

HELD
The Court held in the affirmative. RA 8293 defines
trademark as any visible sign capable of distinguishing
goods. The Paris Convention is a multilateral treaty that
seeks to protect industrial property consisting of patents,
utility models, industrial designs, trademarks, service
marks, trade names and indications of source or
appellations of origin, and at the same time aims to
repress unfair competition. In short, foreign nationals are
to be given the same treatment in each of the member
countries as that country makes available to its own
citizens. Nationals of the various member nations are thus
assured of a certain minimum of international protection
of their industrial property.

CASE DIGEST: Ana Ang vs. Toribio Teodoro

G.R. No. L-48226

December 14, 1942

Facts:
Respondent Toribio Teodoro has continuously used "Ang
Tibay," both as a trade-mark and as a trade-name, in the

manufacture and sale of slippers, shoes, and indoor

baseballs since 1910. On September 29, 1915, he formally
registered it as trade-mark and as trade-name on January
3,
1933.
Petitioner Ana Ang registered the same trade-mark "Ang
Tibay" for pants and shirts on April 11, 1932, and
established a factory for the manufacture of said articles
in
the
year
1937.
The Court of First Instance of Manila absolved the
defendant (Ms. Ang) on the grounds that the two
trademarks are dissimilar and are used on different and
non-competing goods; that there had been no exclusive
use of the trade-mark by the plaintiff; and that there had
been no fraud in the use of the said trade-mark by the
defendant because the goods on which it is used are
essentially different from those of the plaintiff.
The Court of Appeals reversed said judgment, directing
the Director of Commerce to cancel the registration of the
trade-mark "Ang Tibay" in favor of petitioner, and
perpetually enjoining the latter from using said trademark on goods manufactured and sold by her.
Thus,

this

case,

petition

for

certiorari.

Issue:
Whether or not the trademark already acquired secondary
meaning
G.R. No. L-28554 February 28, 1983
Ruling:
UNNO COMMERCIAL ENTERPRISES, INCORPORATED,
petitioner,
vs.

GENERAL MILLING CORPORATION and TIBURCIO S.

EVALLE, in his capacity as Director of Patents,
respondents.

The Director of Patents, after hearing, ruled in favor of

respondent General Milling Corporation. and rendered its
decision as follows:

FACTS : The Court affirms respondent Director of Patent's

decision declaring respondent General Milling Corporation
as the prior user of the trademark "All Montana" on wheat
flour in the Philippines and ordering the cancellation of the
certificate of registration for the same trademark
previously issued in favor of petitioner Unno Commercial
Enterprises, Incorporated, it appearing that Unno
Commercial Enterprises, Inc. merely acted as exclusive
distributor of All Montana wheat flour in the Philippines.
Only the owner of a trademark, trade name or service
mark may apply for its registration and an importer,
broker, indentor or distributor acquires no rights to the
trademark of the goods he is dealing with in the absence
of a valid transfer or assignment of the trade mark.

ISSUE : Whether or not director of patents can issue

cancellation of the certification of registration?

On December 11, 1962, respondent General Milling

Corporation filed an application for the registration of the
trademark "All Montana" to be used in the sale of wheat
flour. In view of the fact that the same trademark was
previously, registered in favor of petitioner Unno
Commercial Enterprises, Inc.. Respondent General Milling
Corporation, in its application for registration, alleged that
it started using the trademark "All Montana" on August
31, 1955 and subsequently was licensed to use the same
by Centennial Mills, Inc. by virtue of a deed of assignment
executed on September 20, 1962. On the other hand
petitioner Unno Commercial Enterprises, Inc. argued that
the same trademark had been registered in its favor on
March 8, 1962 asserting that it started using the
trademark on June 30, 1956, as indentor or broker for S.H.
Huang Bros. & Co., a local firm.

The right to register trademark is based on ownership. 4

When the applicant is not the owner of the trademark
being applied for, he has no right to apply for the
registration of the same. 5 Under the Trademark Law only
the owner of the trademark, trade name or service mark
used to distinguish his goods, business or service from the
goods, business or service of others is entitled to register
the same. 6

HELD : The Court finds without merit petitioner's

argument that the Director of Patents could not order the
cancellation of' its certificate of registration in an
interference proceeding and that the question of whether
or not a certificate of registration is to be cancelled should
have been brought in cancellation proceedings. Under
Rule 178 of the Rules of the Patent Office in Trademark
Cases, 14 the Director of Patents is expressly authorized to
order the cancellation of a registered mark or trade name
or name or other mark of ownership in an inter partes
case, such as the interference proceeding at bar.

The term owner does not include the importer of the

goods bearing the trademark, trade name, service mark,
or other mark of ownership, unless such importer is
actually the owner thereof in the country from which the
goods are imported. A local importer, however, may make
application for the registration of a foreign trademark,
trade name or service mark if he is duly authorized by the
actual owner of the name or other mark of ownership. 7

Thus, petitioner's contention that it is the owner of the

mark "All Montana" because of its certificate of
registration issued by the Director of Patents, must fail,
since ownership of a trademark is not acquired by the
mere fact of registration alone. 9 Registration merely
creates a prima facie presumption of the validity of the
registration, of the registrant's ownership of the
trademark and of the exclusive right to the use thereof. 10
Registration does not perfect a trademark right. 11 As
conceded itself by petitioner, evidence may be presented
to overcome the presumption. Prior use by one will
controvert a claim of legal appropriation, by subsequent
users. In the case at bar, the Director of Patents found
that "ample evidence was presented in the record that
Centennial Mills, Inc. was the owner and prior user in the
Philippines of the trademark 'All Montana' through a local
importer and broker. Use of a trademark by a mere
importer, indentor or exporter (the Senior Party herein)
inures to the benefit of the foreign manufacturer whose
goods are Identified by the trademark. The Junior Party
has hereby established a continuous chain of title and,
consequently, prior adoption and use" and ruled that
"based on the facts established, it is safe to conclude that
the Junior Party has satisfactorily discharged the burden of
proving priority of adoption and use and is entitled to
registration." It is well-settled that we are precluded from
making further inquiry, since the findings of fact of the
Director of Patents in the absence of any showing that
there was grave abuse of discretion is binding on us 12 and
the findings of facts by the Director of Patents are deemed
conclusive in the Supreme Court provided that they are
supported by substantial evidence. 13 Petitioner has failed
to show that the findings of fact of the Director of Patents
are not substantially supported by evidence nor that any
grave abuse of discretion was committed.

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.

Bata Industries v CA Digest

G.R. No. L-53672, May 31, 1982

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?

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

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.