ECOLE DE CUISINE MANILLE (CORDON BLEU OF THE PHILIPPINES), INC Under the Paris Convention, the Philippines is obligated to

vs. RENAUD COINTREAU & CIE and LE CORDON BLEU INT’L., B.V. assure nationals of the signatory-countries that they are afforded an
effective protection against violation of their intellectual property rights
G.R. No. 185830. June 5, 2013 in the Philippines in the same way that their own countries are
obligated to accord similar protection to Philippine nationals. Thus,
Doctrine: Under Section 2 of R.A. No. 166, in order to register a under Philippine law, a trade name of a national of a State that is a
trademark, one must be the owner thereof and must have actually party to the Paris Convention, whether or not the trade name forms
used the mark in commerce in the Philippines for two (2) months prior part of a trademark, is protected “without the obligation of filing or
to the application for registration. The present law on trademarks, registration.”
Republic Act No. 8293, otherwise known as the Intellectual Property IN THIS CASE: Cointreau has been using the subject mark in France
since 1895, prior to Ecole’s averred first use of the same in the
Code of the Philippines, as amended, has already dispensed with the
Philippines in 1948, of which the latter was fully aware thereof.
requirement of prior actual use at the time of registration.
Cointreau was likewise the first registrant of the said mark under
various classes, both abroad and in the Philippines, having secured
Trademark Infringement; Foreign marks which are not registered are
Home Registration dated November 25, 1986 from its country of origin,
still accorded protection against infringement and/or unfair
as well as several trademark registrations in the Philippines.
competition
Ecole also has no certificate of registrastion over the subject
Facts:
mark but only a pending application covering services limited to Class
Cointreau, a partnership registered under the laws of 41.
France, filed before BPTTT a trademark application for the mark “LE The function of a trademark is to point out distinctly the
CORDON BLEU & DEVICE” for goods falling under classes origin or ownership of the goods (or services) to which it is affixed; to
8,9,16,21,24,25,29, and 30 of Nice Classification. secure to him, who has been instrumental in bringing into the market a
Ecole De Cuisine Manille, Inc. filed an opposition to the superior article of merchandise, the fruit of his industry and skill; to
subject application averring that a) it is the owner of the mark “LE assure the public that they are procuring the genuine article; to prevent
CORDON BLEU, ECOLE DE CUISINE MANILLE,” which it has been using fraud and imposition; and to protect the manufacturer against
since 1948 in cooking and other culinary activities; b) it has earned substitution and sale of an inferior and different article as his product.
immense and invaluable goodwill such that Cointreau’s use of the mark
will create confusion, mistake and deception to the public as to the
origin and sponsorship of the goods, and cause great and irreparable
injury and damage to Ecole’s business reputation and goodwill as a
senior user of the same.
Cointreau answered that (a) it has filed applications for the subject
mark’s registration in various jurisdictions, including the Philippines; (b)
Le Cordon Bleu is a culinary school of worldwide acclaim which was
established in Paris, France in 1895; (c) Le Cordon Bleu was the first
cooking school to have set the standard for the teaching of classical
French cuisine and pastry making; and (d) it has trained students from
more than eighty (80) nationalities, including Ecole’s directress, Ms.
Lourdes L. Dayrit, who was also an alumna of the culinary school in
Paris
During pendency of case, Cointreau was issued Cert. of Reg
for the marks “CORDON BLEU & DEVICE” and “LE CORDON BLEU PARIS
1895 & DEVICE” for goods and services under classes 21 and 41 of the
Nice Classification.
The IPO Bureau of Legal Affairs sustained petitioner’s
opposition stating that Cointreau had no prior use of the mark in the
Philippines to be entitled to a proprietary right over it. The IPO Director
General reversed the decision and allowed the mark’s registration
holding that under RA No. 166, actual use in the Philippines is not
necessary to acquire ownership of the mark. The CA affirmed the
decision of the IPO Director General.

Issue: Whether or not the CA was correct in upholding the IPO

Director General’s ruling that Cointreau is the true and lawful owner of
the subject mark and thus, entitled to have the same registered under
its name.

Held:
Yes. Under Section 2 of R.A. No. 166, in order to register a trademark,
one must be the owner thereof and must have actually used the mark
in commerce in the Philippines for two (2) months prior to the
application for registration. Section 2-A of the same law sets out to
define how one goes about acquiring ownership thereof. Under Section
2-A, it is clear that actual use in commerce is also the test of ownership
but the provision went further by saying that the mark must not have
been so appropriated by another. Additionally, it is significant to note
that Section 2-A does not require that the actual use of a trademark
must be within the Philippines. One may be an owner of a mark due to
its actual use but may not yet have the right to register such
ownership here due to the owner’s failure to use the same in the
Philippines for two (2) months prior to registration.