EMERALD GREEN vs. H.D.

LEE (June 7, 2017)

DOCTRINE:

res judicata for a case previously decided by the Court na related sa present case

Section 2-A of Republic Act No. 166 (the old law, 1947 sya)

It is a fundamental principle in Philippine Trademark Law that only the owner of a

trademark is entitled to register a mark in his[/her]/its name and that the actual use in
commerce in the Philippines is a prerequisite to the acquisition of ownership over a
trademark;

Section 123.1(d) of Republic Act No. 8293 re being confusingly similar)

FACTS

On December 21, 2001, H.D. Lee filed before the IPO an application for the registration of the trademark,
"LEE & OGIVE CURVE DESIGN." H.D. Lee claimed that the said mark was first used in the Philippines
on October 31, 1996. Relative thereto, Application No. 4-2201-009602, on outer clothing categorized under
Class 25, which includes jeans, casual pants, trousers, slacks, shorts, jackets, vests, shirts, blouses, sweaters,
tops, skirts, jumpers, caps, hats, socks, shoes, suspenders, belts and bandannas, was filed. Within three years
from the filing of the application, H.D. Lee submitted to the IPO a Declaration of Actual Use of the
mark.H.D. Lee's application was published in the Intellectual Property Philippines' Electronic Gazette for
Trademarks, which was belatedly released on January 5, 2007. Emerald opposed H.D. Lee's application.

DECISION OF IPOs BUREAU OF LEGAL AFFAIRS: denied the application

H.D. Lee established neither its ownership of the mark "LEE & OGIVE CURVE DESIGN'' nor its
international reputation. When [H.D. Lee] filed application, [Emerald's] Application for the re-registration of
the mark "DOUBLE CURVE LINES" was already pending. In addition, long before December 21, 2001,
[Emerald] adopted and has been using in commerce since January 8, 1980 the trademark " DOUBLE
CURVE LINES" together with its other registered marks x x x up to the present x x x. Thus, pursuant to
Section 2-A of Republic Act No. 166, as amended, the law then in force and effect, [Emerald] has become
the owner of the mark "DOUBLE CURVE LINES" through continuous commercial use thereof. On May 5,
1981, said "DOUBLE CURVE LINES" was registered in favor of Emerald. It is a fundamental
principle in Philippine Trademark Law that only the owner of a trademark is entitled to
register a mark in his[/her]/its name and that the actual use in commerce in the
Philippines is a prerequisite to the acquisition of ownership over a trademark. The
evidence on record clearly and convincingly shows, that [Emerald] adopted and has been using the mark
DOUBLE REVERSIBLE WAVE LINE since October 1, 1973 x x x and the mark DOUBLE CURVE
LINES since January 8, 1980 x x x. Although [H.D. Lee] claimed in its Answer that it first used the LEE &
OGIVE CURVE DESIGNB [sic] trademark in the [USA] on or about February 18, 1946 x x x, it did not
present any evidence to prove such claim of first use. The evidence presented by [H.D. Lee] shows that it
entered into a License Agreement with Authentic American Apparel, Inc., only on January 1, 1996 x x x
and its yearly sales reports started only from October 1996.

Director General: reversed the BLA, approved H.D. Lees application

[H.D. Lee] has established by substantial evidence that it is the owner of LEE & OGIVE CURVE DESIGN.
It has adduced evidence showing that it has registered and/or applied in 115 countries around the world the
mark LEE & OGIVE CURVE DESIGN and that it secured a certificate of registration for this mark in the
[USA] on April 1984. [H.D. Lee] also submitted proof of its advertising activities and sales invoices.

CA: approved H.D. Lees application

IPO's DG and CA proceeded to resolve the case unmindful of the pending applications for the registration
of "DOUBLE CURVE LINES" and "DOUBLE REVERSIBLE WAVE LINE" previously filed by Emerald
at that time.

PETITIONERS CONTENTION (Emerald):

Approval of the application will violate the exclusive use of its marks, "DOUBLE REVERSIBLE WAVE
LINE," and "DOUBLE CURVE LINES," which it has been using on a line of clothing apparel since
October 1, 1973 and 1980, respectively.

Further, Section 123.1(d) of Republic Act No. 8293, otherwise known as the Intellectual Property Code
(IPC), will likewise be breached because the "LEE & OGIVE CURVE DESIGN is confusingly similar
or identical to the "DOUBLE CURVE LINES" previously registered in Emerald's name.

There is res judicata because of the decision in GR 195415.

RESPONDENTS CONTENTION

H.D. Lee insisted that it is the owner and prior user of "LEE & OGIVE CURVE DESIGN." H.D. Lee
maintained that it initially used the said mark on February 18, 1946, and registered the same in the United
States of America (USA) on April 10, 1984 under Registration No. 1,273,602. The mark has been
commercially advertised and used all over the world as well.

TIMELINE:

In 2008, Emeralds application has been resolved with finality.

In 2009, BLA denied HD Lees application. (mindful of Emerald)
In August, 2012, IPOs DG reversed the BLA re HDLees application.

2012 and 2013 Decisions (GR 195415 )- denied HD Lees opposition to Emeralds application

GR 195415- the issue was the non-registrability of Emerald's mark "DOUBLE REVERSIBLE
WAVE LINE" based on the opposer H.D. Lee's claim that "OGIVE CURVE DESIGN" is
 internationally well-known and legally protected by the Paris Convention and other pertinent
trademark laws.

In the present case, the issue was the non-registrability of H.D. Lee's mark "LEE & OGIVE CURVE
DESIGN" for being confusingly similar to the marks "DOUBLE REVERSIBLE WAVE LINE" and
"DOUBLE CURVE LINES," which are registered in Emerald's name.

ISSUE:

w/n there is res judicata

w/n "LEE & OGIVE CURVE DESIGN is confusingly similar or identical to the "DOUBLE
CURVE LINES" previously registered in Emerald's name.

RULING:

In favor of Emerald.

RES JUDICATA

Wellsettled is the principle that a decision that has acquired finality becomes
immutable and unalterable and may no longer be modified in any respect even if the modification is
meant to correct erroneous conclusions of fact or law and whether it will be made by the court that rendered
it or by the highest court of the land.

Despite the foregoing, the IPO's DG and CA proceeded to resolve the case unmindful of the pending
applications for the registration of "DOUBLE CURVE LINES" and "DOUBLE REVERSIBLE WAVE
LINE" previously filed by Emerald. Meanwhile, in G.R. No. 195415, the Court, via the Resolutions dated
November 28, 2012 and January 28, 2013, made the following findings with finality: (1) Emerald has been
using the mark "DOUBLE REVERSIBLE WAVE LINE (Back Pocket Design)" since October 1973,
with sales invoices proving actual commercial use of the mark more than two months before the application
for its registration in 1990; (2) H.D. Lee's sale of its garments in the Philippines only began in 1996; and (3)
H.D. Lee failed to prove that the mark "OGIVE CURVE DEVICE" was well-known locally and
internationally at the time Emerald filed its application for the registration of the mark "DOUBLE
REVERSIBLE WAVE LINE (Back Pocket Design)."

On the other hand, Emerald's application for the registration of its mark "DOUBLE CURVE LINES" had
likewise been resolved with finality by the IPO DG on June 5, 2008, and the corresponding Entry of
Judgment was recorded on October 21, 2008.

According to the doctrine of res judicata, "a final judgment or decree on the merits by a court of
competent jurisdiction is conclusive of the rights of the parties or their privies in all later suits on all points
and matters determined in the former suit."

"LEE & OGIVE CURVE DESIGN" is confusingly similar to the marks "DOUBLE
REVERSIBLE WAVE
A thorough examination of the pleadings submitted by H.D. Lee itself shows that indeed, the focus of
HD Lee is the "OGIVE CURVE DESIGN," which remains to be the dominant feature of
the mark sought to be registered. The Court needs to stress that in G.R. No. 195415 and Inter Partes
Case No. 3498 before the IPO, Emerald had already established with finality its rights over the
registration of the marks "DOUBLE CURVE LINES" and "DOUBLE REVERSIBLE WAVE LINE" as
against H.D. Lee's "OGIVE CURVE DESIGN.

FOR YOUR REFERENCE sa class:

Republic Act No. 8293 IP CODE June 6, 1997

Section 123. Registrability. - 123.1. A mark cannot be registered if it:

(a) Consists of immoral, deceptive or scandalous matter, or matter which may disparage or falsely suggest a connection
with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute;

(b) Consists of the flag or coat of arms or other insignia of the Philippines or any of its political subdivisions, or of any
foreign nation, or any simulation thereof;

(c) Consists of a name, portrait or signature identifying a particular living individual except by his written consent, or
the name, signature, or portrait of a deceased President of the Philippines, during the life of his widow, if any, except by
written consent of the widow;

(d) Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date,
in respect of:

(i) The same goods or services, or

(ii) Closely related goods or services, or

(iii) If it nearly resembles such a mark as to be likely to deceive or cause confusion;

(e) Is identical with, or confusingly similar to, or constitutes a translation of a mark which is
considered by the competent authority of the Philippines to be well-known internationally and
in the Philippines, whether or not it is registered here, as being already the mark of a person
other than the applicant for registration, and used for identical or similar goods or services:
Provided, That in determining whether a mark is well-known, account shall be taken of the
knowledge of the relevant sector of the public, rather than of the public at large, including
knowledge in the Philippines which has been obtained as a result of the promotion of the mark;

(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 interests of the owner of the registered mark are likely to be damaged by such use;
(g) Is likely to mislead the public, particularly as to the nature, quality, characteristics or geographical origin of the
goods or services;

(h) Consists exclusively of signs that are generic for the goods or services that they seek to identify;

(i) Consists exclusively of signs or of indications that have become customary or usual to designate the goods or
services in everyday language or in bona fide and established trade practice;

(j) Consists exclusively of signs or of indications that may serve in trade to designate the kind, quality, quantity,
intended purpose, value, geographical origin, time or production of the goods or rendering of the services, or other
characteristics of the goods or services;

(k) Consists of shapes that may be necessitated by technical factors or by the nature of the goods themselves or factors
that affect their intrinsic value;

(l) Consists of color alone, unless defined by a given form; or

(m) Is contrary to public order or morality.

123.2. As regards signs or devices mentioned in paragraphs (j), (k), and (l), nothing shall prevent the registration of any
such sign or device which has become distinctive in relation to the goods for which registration is requested as a result
of the use that have been made of it in commerce in the Philippines. The Office may accept as prima facie evidence that
the mark has become distinctive, as used in connection with the applicant's goods or services in commerce, proof of
substantially exclusive and continuous use thereof by the applicant in commerce in the Philippines for five (5) years
before the date on which the claim of distinctiveness is made.

123.3. The nature of the goods to which the mark is applied will not constitute an obstacle to registration. (Sec. 4, R.A.
No. 166a)