MIRPURI VS COURT OF APPEALS
KG (formerly
Facts:
Lolita Escobar applied for the registration of the
trademark ‘Barbizon’ for her products such as brassieres
and ladies undergarments. Respondent Barbizon
Corporation, an American corporation, opposed alleging
that petitioner’s mark is confusingly similar to its own
trademark ‘Barbizon.’ Escobar’s application was given
due course and her trademark was registered. Later,
Escobar assigned all her rights to petitioner Mirpuri who
failed to file an Affidavit of Use resulting in the
cancellation of the trademark. Petitioner then applied
for registration of the trademark to which respondent
Barbizon again opposed, now invoking the protection
under Article 6bis of the Paris Convention. The Director
of Patents declaring respondent’s opposition was
already barred, petitioner’s application was given due
course. CA reversed the judgment.
Issue:
Whether or not respondent may invoke the protection
under Article 6bis of the Paris Convention.
Ruling: YES.
The Convention of Paris for the Protection of Industrial
Property, otherwise known as 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. The
Convention is essentially a compact among various
countries which, as members of the Union, have
pledged to accord to citizens of the other member
countries trademark and other rights comparable to
those accorded their own citizens by their domestic
laws for an effective protection against unfair
competition. Art. 6bis is a self-executing provision and
does not require legislative enactment to give it effect
in the member country. It may be applied directly by
the tribunals and officials of each member country by
the mere publication or proclamation of the
Convention, after its ratification according to the public
law of each state and the order for its execution.
The Philippines and the United States of America have
acceded to the WTO Agreement. Conformably, the
State must reaffirm its commitment to the global
community and take part in evolving a new
international economic order at the dawn of the new
millennium.
Birkenstock Orthopaedie GMBH and Co.
Birkenstock Orthopaedie GMBH) vs. Philippine Stock
Expo Marketing Corporation
15 SCRA 469
FACTS:
Petitioner, a corporation duly organized and
existing under the laws of Germany applied for various
trademark registrations before the Intellectual Property
Office (IPO). However, the applications were suspended
in view of the existing registration of the mark
“BIRKENSTOCK AND DEVICE” under Registration No.
56334 dated October 21, 1993 in the name of Shoe
Town International and Industrial Corporation, the
predecessor-in-interest of respondent Philippine Shoe
Expo Marketing Corporation.
On May 27, 1997, petitioner filed a petition
(Cancellation Case) for cancellation of Registration No.
564334 on the ground that it is the lawful and rightful
owner of the Birkenstock marks. During its pendency,
however, respondent and/or it predecessor-in-interest
failed to file the required 10th Year Declaration of
Actual Use (10th Year DAU) for Registration No. 56334
on or before October 21, 2004, thereby resulting the
cancellation of such mark. Accordingly, the cancellation
case was dismissed for being moot and academic
thereby paving the way for the publication of the
subject applications.
In response, respondent filed with the Bureau
of Legal Affairs (BLA) of the IPO three separate verified
notices of opposition to the subject applications
docketed as Inter Partes Cases claiming, among others,
it, together with its predecessor-in-interest, has been
using the Birkenstock marks in the Philippines for more
than 16 years through the mark “BIRKENSTOCK AND
DEVICE”. In its Decision, the BLA of the IPO sustained
respondent’s opposition, thus ordering the rejection of
the subject applications. Aggrieved, petitioner appealed
to the IPO Director General whereby in its decision, the
latter reversed and set aside the ruling of the BLA thus
allowing the registration of the subject applications.
Finding the IPO Director General’s reversal of
the BLA unacceptable, respondent filed a petition for
review with the Court of Appeals. In its decision dated
June 25, 2010, the CA reversed and set aside the ruling
of the IPO Director General and reinstated that of the
BLA. The petitioner filed a Motion for Reconsideration
but was denied by the CA. Hence , this petition to the
Supreme Court.
ISSUE:
1. Whether or not the petitioner’s documentary
evidence, although photocopies, are admissible in
court?
2. Whether or not the subject marks should be
allowed registration in the name of the petitioner?
HELD:
1. The court ruled yes. It is a well-settled principle
that the rules of procedure are mere tools aimed at
facilitating the attainment of justice, rather than its
frustration. A strict and rigid application of the rules
must always be eschewed when it would subvert the
primary objective of the rules, that is, to enhance fair
trials and expedite justice. In the light of this, Section 5
of the Rules on Inter Partes Proceedings provides that,
“The Bureau shall not be bound by strict technical rules
of procedure and evidence but may adopt, in the
absence of any applicable rule herein, such mode of
proceedings which is consistent with the requirements
of fair play and conducive to the just, speedy and
inexpensive disposition of cases, and which will the
Bureau the greatest possibility to focus on the
contentious issues before it.
In the case at bar, it should be noted that the IPO had
already obtained the originals of such documentary
evidence in the related Cancellation Case earlier before
it. Under the circumstance and the merits of the instant
case as will be subsequently discussed, the Court holds
that the IPO Director General’s relaxation of procedure
was a valid exercise of his discretion in the interest of
substantial justice.
2. The court ruled in favour of the petitioner.
Under Section 12 of Republic Act 166, it provides that,
“Each certificate of registration shall remain in force for
twenty years: Provided, that the registration under the
provisions of this Act shall be cancelled by the Director,
unless within one year following the fifth, tenth and
fifteenth anniversaries of the date of issue of the
certificate of registration, the registrant shall file in the
Patent Office an affidavit showing that the mark or
trade-name is still in use or showing that its non-use is
due to special circumstance which excuse such non-use
and is not due to any intention to abandon the same,
and pay the required fee.”
In the case at bar, respondent admitted that it failed to
file the 10th Year DAU for Registration No. 56334 within
the requisite period, or on or before October 21, 2004.
As a consequence, it was deemed to have abandoned or
withdrawn any right or interest over the mark
“BIRKENSTOCK”. It must be emphasized that
registration of a trademark, by itself, is not a mode of
acquiring ownership. If the applicant is not the owner of
the trademark, he has no right to apply for its
registration. Registration merely creates a prima facie
presumption of the validity of the registration. Such
presumption, just like the presumptive regularity in the
performance of official functions, is rebuttable and
must give way to evidence to the contrary. Besides,
petitioner has duly established its true and lawful
ownership of the mark “BIRKENSTOCK”. It submitted
evidence relating to the origin and history of
“BIRKENSTOCK” and it use in commerce long before
respondent was able to register the same here in the
Philippines. Petitioner also submitted various
certificates of registration of the mark “BIRKENSTOCK”
in various countries and that it has used such mark in
different countries worldwide, including the Philippines.
EY INDUSTRIAL VS SHEN DAR
Facts:
EY Industrial Sales is a domestic corporation engaged in
the production, distribution and sale of air compressors.
Shen Dar is a Taiwan-based foreign corporation
engaged in the manufacture of compressors.
From 1997-2004, EY Industrial imported air compressors
from Shen Dar.
In 1997, Shen Dar filed a Trademark Application with
the Intellectual Property Office (IPO) for the mark
“Vespa” for the use of air compressors. It was approved
in 2007.
In 1999, EY Industrial filed a Trademark Application also
for the mark “VESPA” for the use of air compressors. It
was approved in 2004.
Shen Dar filed a Petition for Cancellation of the
Industrial’s EYES COR with the Bureau of Legal Affairs
contending that: a. there was a violation of Section
123.1 (D) of the Intellectual Property Code which
provides that: A mark cannot be registered if it is
identical to a mark with an earlier filing or priority date.
b. EY Industrial is only a distributor of the air
compressors
On the other hand, EY Industrial alleged that it is the
sole assembler and fabricator of VESPA air compressors
since the early 1990s and that Shen Dar supplied them
air compressors with the mark “SD” and not “VESPA”
Issues:
1. Who between EY Industrial and Shen Dar is entitled
to the trademark “VESPA”. EY INDUSTRIAL SALES
2. WON the Bureau of Legal Affairs has the power to
cancel the application of Shen Dar even if it is Shen Dar
who filed the case? YES
Held:
1st: EY INDUSTRIAL has the right to the trademark.
Based on the evidence, EYIS owns the “VESPA”
trademark; it has prior use, as shown by various sales
invoices.
Ownership of a mark or trade name may be acquired
not necessarily by registration but by adoption and use
in trade or commerce. As between actual use of a mark
without registration, and registration of the mark
without actual use thereof, the former prevails over the
latter.
For a rule widely accepted and firmly entrenched,
because it has come down through the years, is that
actual use in commerce or business is a pre-requisite to
the acquisition of the right of ownership. It is non
sequitur to hold that porque EYIS is a distributor, it is no
longer the owner.
FIRST-TO-FILE RULE
Under Section 123.1 of IPO provision, the registration of
a mark is prevented with the filing of an earlier
application for registration.
This must not, however, be interpreted to mean that
ownership should be based upon an earlier filing
date. While RA 8293 (IPC) removed the previous
requirement of proof of actual use prior to the filing of
an application for registration of a mark, proof of prior
and continuous use is necessary to establish ownership
of a mark. Such ownership constitutes sufficient
evidence to oppose the registration of a mark.
When we talk about trademark, we are just talking
about the mark. It does not include the product. Shen
Dar is the manufacturer of the product, but they did not
name the product as VESPA. It was EY that named the
VESPA, and used the VESPA, even though they were
only the distributors.
It was EY that actually used the
trademark through the use of receipts, and other
documents.
The first to file rule – According to the SC that Shen Dar
filed under the old IPC where prior use is the one
applied.

2nd: BLA has the power to cancel the application.
Shen Dar challenges the propriety of such cancellation
on the ground that there was no petition for
cancellation as required under Sec. 151 of RA 8293.
The IPO Director General stated that, despite the fact
that the instant case was for the cancellation of the COR
issued in favor of EYIS, the interests of justice dictate,
and in view of its findings, that the COR of Shen Dar
must be cancelled.
The above rule reflects the oft-repeated legal principle
that quasi-judicial and administrative bodies are not
bound by technical rules of procedure. Such principle,
however, is tempered by fundamental evidentiary rules,
including due process.
The fact that no petition for cancellation was filed
against the COR issued to Shen Dar does not preclude
the cancellation of Shen Dar’s COR. It must be
emphasized that, during the hearing for the cancellation
of EYIS’ COR before the BLA, Shen Dar tried to establish
that it, not EYIS, was the true owner of the mark
“VESPA” and, thus, entitled to have it registered. Shen
Dar had more than sufficient opportunity to present its
evidence and argue its case, and it did. It was given its
day in court and its right to due process was
respected. The IPO Director General’s disregard of the
procedure for the cancellation of a registered mark was
a valid exercise of his discretion.
Remember, EY’s application was the one granted, and it
is Shen Dar’s application that was cancelled.
It does not
mean that even you were the one who filed, it your
application cannot be cancelled. The BLA, who has
jurisdiction over the case, were able to determine that it
is Shen Dar’s trademark that should not have been
issued with registration, even it is the plaintiff.
COCA COLA BOTTLERS INC. VS GOMEZ
Facts:
Petitioner Coca-Cola applied for a search warrant
against Pepsi for hoarding empty Coke bottles in Pepsi’s
yard, an act allegedly penalized as unfair competition
under the IP Code. MTC issued the search warrants and
the local police seized the goods. Later, a complaint
against respondents was filed for violation of the IP
Code. Respondent contended that the hoarding of
empty Coke bottles did not involve fraud and deceit for
them to be liable for unfair competition. MTC upheld
the validity of the warrants. RTC voided the warrant for
lack of probable cause of the commission of unfair
competition.
Issue:
Whether or not respondent’s hoarding of Coke bottles
constitute unfair competition.
Ruling: NO.
From jurisprudence, unfair competition has been
defined as the passing off (or palming off) or attempting
to pass off upon the public the goods or business of one
person as the goods or business of another with the end
and probable effect of deceiving the public. One of the
essential requisites in an action to restrain unfair
competition is proof of fraud; the intent to deceive
must be shown before the right to recover can exist.
The advent of the IP Code has not significantly changed
these rulings as they are fully in accord with what
Section 168 of the Code in its entirety
provides. Deception, passing off and fraud upon
the public are still the key elements that must be
present for unfair competition to exist.
As basis for this interpretative analysis, we note
that Section 168.1 speaks of a person who has
earned goodwill with respect to his goods and services
and who is entitled to protection under the Code, with
or without a registered mark. Section 168.2, as
previously discussed, refers to the general definition of
unfair competition. Section 168.3, on the other
hand, refers to the specific instances of unfair
competition, with Section 168.3(a) referring to the
sale of goods given the appearance of the goods of
another; Section 168.3(b), to the inducement of
belief that his or her goods or services are that of
another who has earned goodwill; while the
disputed Section 168.3(c) being a “catch all” clause
whose coverage the parties now dispute.
Under all the above approaches, we conclude that the
“hoarding” – as defined and charged by the petitioner –
does not fall within the coverage of the IP Code and of
Section 168 in particular. It does not relate to any
patent, trademark, trade name or service mark that the
respondents have invaded, intruded into or used
without proper authority from the petitioner. Nor are
the respondents alleged to be fraudulently “passing off”
their products or services as those of the petitioner. The
respondents are not also alleged to be undertaking any
representation or misrepresentation that would
confuse or tend to confuse the goods of the petitioner
with those of the respondents, or vice versa. What in
fact the petitioner alleges is an act foreign to the Code,
to the concepts it embodies and to the acts it regulates;
as alleged, hoarding inflicts unfairness by seeking to
limit the opposition’s sales by depriving it of the bottles
it can use for these sales. In this light, hoarding for
purposes of destruction is closer to what another law,
R.A. No. 623 covers.
ABS-CBN PUBLISHING v. DIRECTOR OF BUREAU
OF TRADEMARKS, GR No. 217916, 2018-06-20
Facts:
petitioner... filed with the Intellectual Property Office of
the Philippines (IPO) its application for the registration
of its trademark "METRO" (applicant mark) under class
16
(Examiner Icban), who, after a judicious examination of
the application, refused the applicant mark's
registration.
the applicant mark is identical with three other cited
marks
The cited marks were identified as (1) "Metro" (word)
by applicant Metro International S.A.
"Metro" (logo) also by applicant Metro International
S.A.
and (3) "Inquirer Metro" by applicant Philippine Daily
Inquirer, Inc.
The fallo of the Bureau Director's decision
reads:WHEREFORE, premises considered, the instant
appeal is hereby DENIED... the ODG, on September 19,
2013, rendered a Decision which upheld Examiner
Icban's assessment and the Bureau Director's decision.
the Court of Appeals issued a Resolution which granted
the petitioner's first motion praying for an extension of
time to file its petition for review... the Court of Appeals
rendered the assailed Resolution. It ruled that the
petitioner violated its October 25, 2013 Resolution, as
well as Section 4, Rule 43 of the Rules of Court, which
provides for the period of appeal.
the appellate court denied the petitioner's motion for
reconsideration.
Issues:
whether or not the ODG was correct in refusing to
register the applicant mark for being identical and
confusingly similar with the cited marks already
registered with the IPO.
Ruling:
In using this test, focus is to be given to the dominant
features of the marks in question.
In other words, in committing the infringing act, the
infringer merely introduces negligible changes in an
already registered mark, and then banks on these slight
differences to state that there was no identity or reveal, however, that the cited marks "METRO" (word)
confusing similarity, which would result in no and "METRO" (logo) are also both classified under
infringement. This kind of act, which leads to confusion magazines.
in the eyes of the public, is exactly the evil that the The Court cannot emphasize enough that the cited
dominancy test refuses to accept. The small deviations marks "METRO" (word) and "METRO" (logo) are
from a registered mark are insufficient to remove the identical with the registrant mark "METRO" both in
applicant mark from the ambit of infringement. spelling and in sound. In fact, it is the same exact word.
In the present case, the dominant feature of the Considering that both marks are used in goods which
applicant mark is the word "METRO" which is identical, are classified as magazines, it requires no stretch of
both visually and aurally, to the cited marks already imagination that a likelihood of confusion may occur.
registered with the IPO. A perusal of the records, however, would reveal that
The findings of Examiner Icban, reviewed first by the these alleged de-registration and cancellation all
Director of the Bureau of Trademarks, and again by the allegedly occurred after the ODG has already ruled on
Director General of the IPO, are the result of a judicious the instant case. Considering that the Court is not a trier
study of the case by no less than the government of facts, the Court could therefore not make a
agency duly empowered to examine applications for the determination of the validity and accuracy of the
registration of marks.[54] These findings deserve great statements made in the petitioner's manifestation. As
respect from the Court. Absent any strong justification such, the Court, through the limited facts extant in the
for the reversal thereof-as in this case-the Court shall records, could not give weight and credence thereto.
not reverse and set aside the same. As such, the prior Nonetheless, not all is lost for the petitioner. Should it
findings remain: the applicant mark, "METRO," is be true that the cited marks, which were the basis of
identical to and confusingly similar with the other cited the IPO in refusing to register the applicant mark, were
marks already registered. By authority of the Sec. already de-registered and cancelled, nothing prevents
123.l(d) of the IPC, the applicant mark cannot be the petitioner from once again applying for the
registered. The ODG is correct in upholding the Decision registration of the applicant mark before the IPO.
of both the Director of the Bureau of Trademarks and
Examiner Icban.
there is no question that the petitioner's predecessor
already applied for the registration of the applicant
mark "METRO" on November 3, 1994... however, the
petitioner itself admitted in its petition that its
application/registration with the IPO under Application
No. 4-1994-096162 was already "deemed abandoned."
While it is quite noticeable that the petitioner failed to
discuss the implications of this abandonment, it remains
a fact that once a trademark is considered abandoned,
the protection accorded by the IPC, or in this case the
old Trademark Law, is also withdrawn. The petitioner, in
allowing this abandonment, cannot now come before
the Court to cry foul if another entity has, in the time
that it has abandoned its trademark and in full
cognizance of the IPC and the IPO rules, registered its
own.
Also, as correctly pointed out by the ODG, this
abandonment is the very reason why the petitioner lost
its rights over its trademark, and that it is also the
reason why, after twenty years (20) from the initial
application and after actual use of the applicant mark,
the petitioner once again came before the IPO to apply
for registration.
In the present case, the applicant mark is classified
under "magazines," which is found in class 16 of the
Nice classification. A perusal of the records would