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June 9, 2016 by jaicdn

LA CHEMISE LACOSTE V. FERNANDEZ (G.R. NO. L-

63796-97)
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. Sadhwani

decision 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.”

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This entry was posted in Case Digests, Intellectual Property Law, Mercantile Law and tagged g.r. no. l-63796-97, la
chemise lacoste v. fernandez, paris convention, well-known marks. Bookmark the permalink.

ONG ANG GUI V. DIRECTOR OF THE 246 CORPORATION V. DAWAY (G.R.

PHILIPPINE PATENT OFFICE (G.R. NO. L- NO. 157216)
6235)

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