Beruflich Dokumente
Kultur Dokumente
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* SECOND DIVISION.
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Same; Same; The essential requirement under article 6bis of
the Paris Convention is that the trademark to be protected must be
“well-known” in the country where protection is sought; The power
to determine whether a trademark is well-known lies in the
competent authority of the country of registration or use.—In
Mirpuri, 318 SCRA 516 (1999), the Court ruled that the essential
requirement under Article 6bis of the Paris Convention is that the
trademark to be protected must be “well-known” in the country
where protection is sought. The Court declared that the power to
determine whether a trademark is well-known lies in the
competent authority of the country of registration or use. The
Court then stated that the competent authority would either be
the registering authority if it has the power to decide this, or the
courts of the country in question if the issue comes before the
courts.
Same; Same; Section 123.1(e) does not require that the well-
known mark be used in commerce in the Philippines but only that
it be well-known in the Philippines.—Section 123.1(e) of R.A. No.
8293 now categorically states that “a mark which is considered by
the competent authority of the Philippines to be well-known
internationally and in the Philippines, whether or not it is
registered here,” cannot be registered by another in the
Philippines. Section 123.1(e) does not require that the well-known
mark be used in commerce in the Philippines but only that it be
well-known in the Philippines.
Same; Same; While under the territoriality principle a mark
must be used in commerce in the Philippines to be entitled to
protection, internationally well-known marks are the exceptions to
this rule.—Since “any combination” of the foregoing criteria is
sufficient to determine that a mark is well-known, it is clearly not
necessary that the mark be used in commerce in the Philippines.
Thus, while under the territoriality principle a mark must be
used in commerce in the Philippines to be entitled to protection,
internationally well-known marks are the exceptions to this rule.
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Cordova & Associates for petitioner.
Ortega, Del Castillo, Bacorro, Odulio, Calma &
Carbonell for respondent.
CARPIO, J.:
The Case
Before the Court is a petition for review1 assailing the
24 October 2008 Decision2 and 8 January 2009 Resolution3
of the Court of Appeals in CA-G.R. SP No. 103394.
The Antecedent Facts
On 10 August 2005, petitioner Fredco Manufacturing
Corporation (Fredco), a corporation organized and existing
under the laws of the Philippines, filed a Petition for
Cancellation of Registration No. 56561 before the Bureau of
Legal Affairs of the Intellectual Property Office (IPO)
against respondents President and Fellows of Harvard
College (Harvard University), a corporation organized and
existing under the laws of Massachusetts, United States of
America. The case was docketed as Inter Partes Case No.
14-2005-00094.
Fredco alleged that Registration No. 56561 was issued to
Harvard University on 25 November 1993 for the mark
“Harvard Veritas Shield Symbol” for decals, tote bags,
serving trays, sweatshirts, t-shirts, hats and flying discs
under Classes 16, 18, 21, 25 and 28 of the Nice
International Classi-
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1. Argentina 5. Chile
2. Benelux4 6. China P.R.
3. Brazil 7. Colombia
4. Canada 8. Costa Rica
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Harvard University alleged that in March 2002, it
discovered, through its international trademark watch
program, Fredco’s website www.harvard-usa.com. The
website advertises and promotes the brand name “Harvard
Jeans USA” without Harvard University’s consent. The
website’s main page shows an oblong logo bearing the mark
“Harvard Jeans USA®,” “Established 1936,” and
“Cambridge, Massachusetts.” On 20 April 2004, Harvard
University filed an administrative complaint against
Fredco before the IPO for trademark infringement and/or
unfair competition with damages.
Harvard University alleged that its valid and existing
certificates of trademark registration in the Philippines
are:
1. Trademark Registration No. 56561 issued on 25
November 1993 for “Harvard Veritas Shield Design”
for goods and services in Classes 16, 18, 21, 25 and 28
(decals, tote bags, serving trays, sweatshirts, t-shirts,
hats and flying discs) of the Nice International
Classification of Goods and Services;
2. Trademark Registration No. 57526 issued on 24
March 1994 for “Harvard Veritas Shield Symbol” for
services in Class 41; Trademark Registration No.
56539 issued on 25 November 1998 for “Harvard” for
services in Class 41; and
3. Trademark Registration No. 66677 issued on 8
December 1998 for “Harvard Graphics” for goods in
Class 9. Harvard University further alleged that it
filed the requisite affidavits of use for the mark
“Harvard Veritas Shield Symbol” with the IPO.
Further, on 7 May 2003 Harvard University filed
Trademark Application No. 4-2003-04090 for “Harvard
Medical International & Shield Design” for services in
Classes 41 and 44. In 1989, Harvard University established
the Harvard Trademark Licensing Program, operated by
the Office for Technology and Trademark Licensing, to
oversee and manage the worldwide licensing of the
“Harvard” name and trade-
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10 Id., at p. 133.
241
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11 G.R. No. 159938, 31 March 2006, 486 SCRA 405.
12 Rollo, p. 114.
13 Id., at pp. 115-116.
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The Issue
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have been actually used in commerce for not less than two
months in the Philippines prior to the filing of an
application for its registration. While Harvard University
had actual prior use of its marks abroad for a long time, it
did not have actual prior use in the Philippines of the mark
“Harvard Veritas Shield Symbol” before its application for
registration of the mark “Harvard” with the then
Philippine Patents Office. However, Harvard University’s
registration of the name “Harvard” is based on home
registration which is allowed under Section 37 of R.A. No.
166.15 As pointed out by Harvard University in its
Comment:
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244 SUPREME COURT REPORTS ANNOTATED
Fredco Manufacturing Corporation vs. President and
Fellows of Harvard College (Harvard University)
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19 Harvard University filed Affidavits of Use for the 5th and 10th
Anniversaries of Registration No. 56561. Decision of the Director General,
Rollo, p. 132.
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Fredco’s registration of the mark “Harvard” should not
have been allowed because Section 4(a) of R.A. No. 166
prohibits the registration of a mark “which may disparage
or falsely suggest a connection with persons, living or
dead, institutions, beliefs x x x.” Section 4(a) of R.A. No.
166 provides:
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ARTICLE 6bis
“(i) The countries of the Union undertake either
administratively if their legislation so permits, or at the request
of an interested party, to refuse or to cancel the registration and
to prohibit the use of a trademark which constitutes a
reproduction, imitation or translation, liable to create confusion or
a mark considered by the competent authority of the country as
being already the mark of a person entitled to the benefits
of the present Convention and used for identical or similar
goods. These provisions shall also apply when the essential
part of the mark constitutes a reproduction of any such
well-known mark or an imitation liable to create confusion
therewith.
ARTICLE 8
A trade name shall be protected in all the countries of the Union
without the obligation of filing or registration, whether or
not it forms part of a trademark.” (Emphasis supplied)
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23 See La Chemise Lacoste, S.A. v. Hon. Fernandez, etc., et al., 214 Phil. 332;
129 SCRA 373 (1984).
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24 The original version of R.A. No. 166 already contains this provision.
25 Mirpuri v. Court of Appeals, 376 Phil. 628; 318 SCRA 516 (1999);
Puma Sportschuhfabriken Rudolf Dassler, K.G. v. Intermedi-
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ate Appellate Court, 241 Phil. 1029; 158 SCRA 233 (1988); La Chemise
Lacoste, S.A. v. Hon. Fernandez, etc., et al., supra note 23.
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251
x x x x”38 (Emphasis supplied)
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28 Id., at pp. 658-659; pp. 545-546. Also cited in La Chemise Lacoste, S.A. v.
Hon. Fernandez, etc., et al., supra note 23.
29 Id., at p. 656; p. 543.
30 Id.
31 Id.
32 Sehwani, Incorporated v. In-N-Out Burger, Inc., G.R. No. 171053, 15 October
2007, 536 SCRA 225.
33 Id.
252
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34 Id., at p. 240.
253
(b) the market share, in the Philippines and in other
countries, of the goods and/or services to which the mark applies;
(c) the degree of the inherent or acquired distinction of the
mark;
(d) the quality-image or reputation acquired by the mark;
(e) the extent to which the mark has been registered in the
world;
(f) the exclusivity of registration attained by the mark in the
world;
(g) the extent to which the mark has been used in the world;
(h) the exclusivity of use attained by the mark in the world;
(i) the commercial value attributed to the mark in the world;
(j) the record of successful protection of the rights in the
mark;
(k) the outcome of litigations dealing with the issue of
whether the mark is a well-known mark; and
(l) the presence or absence of identical or similar marks
validly registered for or used on identical or similar goods or
services and owned by persons other than the person claiming
that his mark is a well-known mark.” (Emphasis supplied)
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36 Id., at pp. 112-113.
37 Id., at pp. 1251-1263. Penned by Bureau of Legal Affairs Director
Estrellita Beltran-Abelardo.
38 IPC No. 14-2008-00107; Decision No. 2008-232.
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