ECOLE DE CUISINE MANILLE (CORDON BLEU OF THE PHILIPPINES), INC., v.

RENAUIL COINTREAU
& CIE AND LE CORDON BLEU INT'L.,

OVERVIEW:

Assailed in this petition for review on certiorari is the decision of the CA which affirmed in toto the IPO Director
General's Decision that declared respondent Renaud Cointreau & Cie (Cointreau) as the true and lawful owner
of the mark "LE CORDON BLEU & DEVICE" and thus, is entitled to register the same under its name.

FACTS:

Cointreau filed before the (now defunct) Bureau of Patents, Trademarks, and Technology Transfer
(BPTTT) of the Department of Trade and Industry a trademark application for the mark "LE CORDON BLEU
& DEVICE".
Application was filed pursuant to Section 37 of Republic Act No. 166 and such application was
published for opposition

Petitioner Ecole filed an opposition to the subject application, averring that:

It is the owner of the mark "LE CORDON BLEU, ECOLE DE CUISINE MANILLE," which it has been using since
1948 in cooking and other culinary activities, including in its restaurant business; and
Cointreaus use of the subject mark will actually create confusion, mistake, and deception to the
buying public as to the origin and sponsorship of the goods, and cause great and irreparable injury and
damage to Ecoles business reputation and goodwill as a senior user

Cointreau filed its answer claiming to be the true and lawful owner of the subject mark. It averred that:

It has filed applications for the subject marks registration in various jurisdictions, including the
Philippines;
Le Cordon Bleu is a culinary school which was established in Paris, France in 1895; and
it has trained students from more than eighty (80) nationalities, including Ecoles directress, Ms. Lourdes
L. Dayrit. Thus, Cointreau concluded that Ecoles claim of being the exclusive owner of the subject mark
is a fraudulent misrepresentation.

During the pendency of the proceedings, Cointreau was issued Certificates of Registration for the marks
"CORDON BLEU & DEVICE" and "LE CORDON BLEU PARIS 1895 & DEVICE"

THE RULING OF THE BLA

BLA sustained Ecoles opposition to the subject mark, resulting in the rejection of Cointreaus
application. It emphasized that the adoption and use of trademark must be in commerce in the
Philippines and not abroad.
Aggrieved, Cointreau filed an appeal with the IPO Director General.

THE RULING OF THE IPO DIRECTOR GENERAL

The IPO Director General reversed and set aside the BLAs decision, thus, granting Cointreaus
appeal and allowing the registration of the subject mark.
He considered Cointreaus undisputed use of such mark since 1895 for its culinary school in Paris,
France (in which petitioners own directress, Ms. Lourdes L. Dayrit, had trained in 1977).
He also added that Ecole may have prior use of the subject mark in the Philippines since 1948, but it
failed to explain how it came up with such name and mark.
Hence, the Petition for Review with the CA.

THE RULING OF THE CA

CA affirmed the IPO Director Generals Decision in toto. It declared Cointreau as the true and actual
owner of the subject mark with a right to register the same in the Philippines, having registered such
mark in its country of origin.
The CA likewise held that Cointreaus right to register the subject mark cannot be barred by Ecoles prior
use because its appropriation of the mark was done in bad faith. Furthermore, Ecole had no certificate
of registration that would put Cointreau on notice that the former had appropriated or has been using
 the subject mark. In fact, its application for trademark registration for the same which was just filed is still
pending with the IPO.
Hence, this petition.

ISSUE:

Whether the CA was correct in upholding the IPO Director Generals ruling that Cointreau is the true and lawful
owner of the subject mark and thus, entitled to have the same registered.

RULING:

In denying the opposition, the Supreme Court explained that only the owner of a mark has the right to
register the mark, and a prior user of the mark in the Philippines is not necessarily the owner. A Prior user
of a mark in commerce can prove ownership only when the mark has not been validly appropriated by
another. In this case, the Supreme Court noted, Cointreau had been using the subject mark in France
well before Ecole started using it in the Philippines.
It is worthy to emphasize that the Philippines and France are both signatories to the Paris Convention for
the Protection of Industrial Property. Thus, Cointreaus mark, even if not registered in the Philippines, was
also afforded protection against infringement and/or unfair competition.
The court found that prior use of the mark in France effectively barred it subsequent registration by
another party in the Philippines. That being the case, even if Ecole was the first to use the mark in the
Philippines, it could not be to have legally appropriated the mark, and hence was not entitled to
registration.
In view of the obligations under the Paris Convention, the Philippines is obligated to assure nationals of
the signatory-countries that they are afforded an effective protection against violation of their
intellectual property rights in the Philippines in the same way that their own countries are obligated to
accord similar protection to Philippine nationals.
It is undisputed that Cointreau has been using the subject mark in France since 1895, prior to Ecoles
averred first use of the same in the Philippines in 1948, of which the latter was fully aware thereof. In fact,
Ecoles present directress, Ms. Lourdes L. Dayrit had trained as a student in Cointreaus Le Cordon Bleu
culinary school in Paris, France.
Cointreau was likewise the first registrant of the said mark under various classes, both abroad and in the
Philippines, having secured Home Registration from its country of origin, as well as several trademark
registrations in the Philippines.
On the other hand, Ecole has no certificate of registration over the subject mark but only a pending
application. Its application was filed only after Cointreau filed its trademark application for goods and
services.
Ecoles directress was fully aware, being an alumna of the latters culinary school in Paris, France.
Hence, Ecole cannot claim any tinge of ownership whatsoever over the subject mark. As such, IPO and
the CA were correct in declaring Cointreau as the true and lawful owner of the subject mark and is
entitled to have the same registered under its name.
In any case, the present law on trademarks, Republic Act No. 8293, has already dispensed with the
requirement of prior actual use at the time of registration. Thus, there is more reason to allow the
registration of the subject mark under the name of Cointreau as its true and lawful owner.

WHEREFORE, the petition is DENIED. Decision of the Court of Appeals is hereby AFFIRMED in toto. SO
ORDERED.