La Chemise Lacoste v.

Fernandez
(G.R. No. L-63796-97)
Date: June 9, 2016Author: jaicdn0 Comments

Facts:

Petitioner La Chemise Lacoste is a foreign corporation and the actual owner of the
trademarks ‘Lacoste,’ ‘Chemise Lacoste,’ and ‘Crocodile Device’ used on clothing and
other goods that are sold in many parts of the world. Herein respondent Hemadas &
Co., a domestic firm, applied and was granted registration of the mark ‘Chemise
Lacoste and Crocodile Device’ for its garment products. Sometime later, petitioner
applied for the registration of its mark ‘Crocodile Device’ and ‘Lacoste’ but was
opposed by herein respondent. Later, petitioner filed a letter-complaint of unfair
competition before the NBI which led to the issuance of search warrants and the
seizure of goods of respondent Hemadas. Respondent moved to quash the warrants
alleging that its trademark was different from petitioner’s trademark. Respondent
court ruled to set aside the warrants and to return the seized goods.

Issue:

Whether or not petitioner’s trademark is a well-known mark protected under the

Paris Convention.

Ruling: YES.

In upholding the right of the petitioner to maintain the present suit before our courts
for unfair competition or infringement of trademarks of a foreign corporation, we are
moreover recognizing our duties and the rights of foreign states under the Paris
Convention for the Protection of Industrial Property to which the Philippines and
France are parties.

Pursuant to this obligation, the Ministry of Trade issued a memorandum addressed

to the Director of the Patents Office directing the latter to reject all pending
applications for Philippine registration of signature and other world famous
trademarks by applicants other than its original owners or users. The conflicting
claims over internationally known trademarks involve such name brands as Lacoste,
et. al. It is further directed that, in cases where warranted, Philippine registrants of
such trademarks should be asked to surrender their certificates of registration, if any,
to avoid suits for damages and other legal action by the trademarks’ foreign or local
owners or original users.

The Intermediate Appellate Court, in the La Chemise Lacoste S.A. v. Sadhwanidecision

which we cite with approval sustained the power of the Minister of Trade to issue the
implementing memorandum and declared La Chemise Lacoste S.A. the owner of the
disputed trademark, stating: “In the case at bar, the Minister of Trade, as ‘the
competent authority of the country of registration,’ has found that among other well-
known trademarks ‘Lacoste’ is the subject of conflicting claims. For this reason,
applications for its registration must be rejected or refused, pursuant to the treaty
obligation of the Philippines.”
La Chemise Lacoste. VS.
Fernandez
August 25, 2013

GR No. L-63796-97, May 2, 1984

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 letter-complaint alleging acts of unfair competition

committed by Hemandas and requesting the agency’s assistance.

A search warrant was issued by the trial court. Various goods and articles

were seized upon the execution of the 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 or not the trademark “Chemise Lacoste and Q Crocodile Device”

is registrable.
HELD:

No. 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.”