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318 SUPREME COURT REPORTS ANNOTATED

Bata Industries, Ltd. vs. Court of Appeals

No. L-53672. May 31, 1982.*

BATA INDUSTRIES, LTD., petitioner, vs. THE

HONORABLE COURT OF APPEALS; TIBURCIO S.
EVALLE, DIRECTOR OF PATENTS, NEW OLYMPIAN
RUBBER PRODUCTS CO., INC., respondents.

Courts; Courts of Appeals; Judgments; There is nothing wrong

where a new set of Justices in the Court of Appeals reconsiders a
decision of the Justices they have replaced.—It should be stated
that there is nothing wrong and unusual when a decision is
reconsidered. This is so when the reconsideration is made by a
division composed of the same justices who rendered the decision
but much more so when the reconsideration is made by a different
set of justices as happened in this case. Obviously, the new set of
justices would have a fresh perspective unencumbered by the
views expressed in the decision sought to be reconsidered. Nor
should it be a cause for wonder why Justices Gutierrez, Agrava
and Nocon had replaced the original justices. Justice Cortez
resigned to become a candidate for the governorship of Cagayan
(he was elected), while Justices Serrano and Jimenez retired upon
reaching the age of 65.

Tradenames and Trademarks; A slight goodwill generated by

a foreign company before World War II can be considered an
abandoned after more than 35 years.—We are satisfied from the
evidence that any slight goodwill generated by the
Czechoslovakian product during the Commonwealth years was
completely abandoned and lost in the more than 35 years that
have passed since the liberation of Manila from the Japanese
troops.

Same; Same.—The applicant-appellee has reproduced

excerpts from the testimonies of the opposer-appellant’s witnesses
to prove that the opposer-appellant was never a user of the
trademark BATA either before or after the war, that the
appellant is not the successor-in-interest of Gerbec and Hrdina
who were not its representatives or agents, and could not have
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passed any rights to the appellant, that there was no privity of

interest between the Czechoslovakian owner and the Canadian
appellant and that the Czechoslovakian trademark has been
abandoned in Czechoslovakia.

__________________

* SECOND DIVISION.

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Bata Industries, Ltd. vs. Court of Appeals

Same; A foreign company selling a brand (BATA) of shoes

abroad but not in the Philippines has no goodwill that would be
damaged by registration of the same trademark in favor of a
domestic corporation which has been using it for years here.—The
appellant has no Philippine goodwill that would be damaged by
the registration of the mark in the appellee’s favor. We agree with
the decision of the Director of Patents which sustains, on the
basis of clear and convincing evidence, the right of the appellee to
the registration and protection of its industrial property, the
BATA trademark.

RESOLUTION

ABAD SANTOS, J.:

On October 27, 1980, the petition in this case was denied

for lack of merit. Petitioner moved to reconsider and as
required, private respondent submitted comments. A
hearing on the motion for reconsideration was held on June
7, 1982. This is Our resolution on the motion for
reconsideration.
In Inter Partes Case No. 654 of the Philippine Patent
Office, New Olympian Rubber Products Co., Inc. sought the
registration of the mark BATA for casual rubber shoes. It
alleged that it has used the mark since July 1, 1970.
Registration was opposed by Bata Industries, Ltd., a
Cana-dian corporation, which alleged that it owns and has
not abandoned the trademark BATA.
Stipulated by the parties were the following:

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1. Bata Industries, Ltd. has no license to do business

in the Philippines;
2. It is not presently selling footwear under the
trademark BATA in the Philippines; and
3. It has no licensing agreement with any local entity
or firm to sell its products in the Philippines.

Evidence received by the Philippine Patent Office showed

that Bata shoes made by Gerbec and Hrdina of
Czechoslovakia were sold in the Philippines prior to World
War II. Some shoes made by Bata of Canada were perhaps
also sold in the Philip-pines until 1948. However, the
trademark BATA was never

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320 SUPREME COURT REPORTS ANNOTATED

Bata Industries, Ltd. vs. Court of Appeals

registered in the Philippines by any foreign entity. Under

the circumstances, it was concluded that “opposer has, to
all intents and purposes, technically abandoned its
trademark BATA in the Philippines.”
Upon the other hand, the Philippine Patent Office found
that New Olympian Rubber Products Co., Inc.:

“x x x has overwhelmingly and convincingly established its right

to the trademark BATA and consequently, its use and registration
in its favor. There is no gainsaying the truth that the respondent
has spent a considerable amount of money and effort in
popularizing the trademark BATA for shoes in the Philippines
through the advertising media since it was lawfully used in
commerce on July 1, 1970. It can not be denied, therefore, that it
is the respondent-applicant’s expense that created the enormous
goodwill of the trademark BATA in the Philippines and not the
opposer as claimed, in its opposition to the registration of the
BATA mark by the respondent.
“Additionally, on evidence of record, having also secured (three)
copyright registrations for the word BATA, respondent-applicant’s
right to claim ownership of the trademark BATA in the
Philippines, which it claims to be a Tagalog word which literally
means ‘a little child’ (Exh 5), is all the more fortified.”

The Philippine Patent Office dismissed the opposition and

ordered the registration of the trademark BATA in favor of
the domestic corporation.
Appeal from the decision of the Philippine Patent Office
was made to the Court of Appeals by Bata Industries, Ltd.
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In a decision penned by Justice Justiniano P. Cortez dated

August 9, 1979, with Justices Mariano Serrano and Jose B.
Jimenez concurring, the PPO decision was reversed. A
motion for reconsideration filed by New Olympian Rubber
Products Co., Inc. was denied on October 17, 1979, by the
same justices.
However, in a resolution on a second motion for
reconsideration penned by Justice Hugo E. Gutierrez who
is now a member of this Court, to which Justices Corazon
J. Agrava and Rodolfo A. Nocon concurred (with the former
filing a separate opinion), the decision of August 9, 1979,
was set aside and that of the Director of Patents was
affirmed.
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Bata Industries, Ltd. vs. Court of Appeals

In addition to points of law, Bata Industries, Ltd. questions

“the circumstances surrounding the issuance of the
questioned resolutions of the respondent Court of Appeals.”
In effect, it insinuates that there was something wrong
when a new set of justices rendered a completely different
decision.
It should be stated that there is nothing wrong and
unusual when a decision is reconsidered. This is so when
the reconsideration is made by a division composed of the
same justices who rendered the decision but much more so
when the reconsideration is made by a different set of
justices as happened in this case. Obviously, the new set of
justices would have a fresh perspective unencumbered by
the views expressed in the decision sought to be
reconsidered. Nor should it be a cause for wonder why
Justices Gutierrez, Agrava and Nocon had replaced the
original justices. Justice Cortes resigned to become a
candidate for the governorship of Cagayan (he was elected),
while Justices Serrano and Jimenez retired upon reaching
the age of 65.
On the merits, the extended resolution penned by
Justice Gutierrez does not have to be fortified by Us. We
agree with Mr. Justice Gutierrez when he says:

“We are satisfied from the evidence that any slight goodwill
generated by the Czechoslovakian product during the
Commonwealth years was completely abandoned and lost in the
more than 35 years that have passed since the liberation of
Manila from the Japanese troops.

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“The applicant-appellee has reproduced excerpts from the

testimonies of the opposer-appellant’s witnesses to prove that the
opposer-appellant was never a user of the trademark BATA eithar
before or after the war, that the appellant is not the successor-in-
interest of Gerbec and Hrdina who were not is representatives or
agents, and could not have passed any rights to the appellant,
that there was no privity of interest between the Czechoslovakia
owner and the Canadian appellant and that the Czechoslovakian
trademark has been abandoned in Czechoslovakia.
“We agree with the applicant-appellee that more than
substantial evidence supports the findings and conclusions of the
Director of Patents. The appellant has no Philippine goodwill that
would be damaged by the registration of the mark in the
appellee’s

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Bata Industries, Ltd. vs. Court of Appeals

favor. We agree with the decision of the Director of Patents which

sustains, on the basis of clear and convincing evidence, the right;
of the appellee to the registration and protection of its industrial
property, the BATA trademark.”

WHEREFORE, the motion for reconsideration is hereby

denied for lack of merit. No special pronouncement as to
costs.
SO ORDERED.

          Barredo (Chairman), Aquino, Gurrero, De Castro

and Escolin, JJ., concur.
     Concepcion, Jr., J., on leave.

Motion for reconsideration denied.

Notes.—Nature of proceedings in the Patents Office is

procedural, not jurisdictional. (Boehringer Ingelheim
GMBH vs. CA., 84 SCRA 449.)
Fact of existence of two different substances of medicine
of which a court could not take judicial notice of nor
competent to find in the absence of evidence whether the
substance are the same or not require the presentation of
evidence. (Parke, Davis & Co. vs. Doctors’ Pharmaceuticals,
Inc., 104 SCRA 700.)
Where the word used as trademark is merely
descriptive, it is generic and hence is barred from
registration as a trademark. (Etepha vs. Dir. of Patents, 16
SCRA 495.)
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The question of infringement of a trademark is to be

primarily determined by the test of dominancy. (Operators,
Inc. vs. Dir. of Patents, 15 SCRA 147.)
Where the testimonial evidence for both parties has
been entirely disregarded, and reliance is placed solely on
the filing dates of the applicant as proof of the respective
dates of first use, then the abandoned application filed by
the junior party applicant becomes cogent evidence to show
that he first used the trademark as of the date of its filing.
(Chung Te vs. Ng Kian Giab, 18 SCRA 747.)
A company’s long and continuous sue of a trademark
does not by itself render it merely descriptive of the
product.

323

VOL. 114, MAY 31, 1982 323

Barrera vs. Militante

(Romero vs. Maiden Form Brassiere Co., 10 SCRA 556.)

A non-resident foreign corporation may sue in the
Philippines for unfair competition. (Converse Rubber
Corporation vs. Jacinto Rubber & Plastic Co., Inc., 97
SCRA 158.)
Nature of proceeding in Patents Office is procedural, not
jurisdictional in nature. (Boehringer Ingelheim GMBH vs.
Court of Appeals, 84 SCRA 449.)
Factors considered in determining the existence of
substantial, difference between two labels are; in size,
background, colors, contents, and pictorial arrangement.
(American Company vs. Director of Patents, 76 SCRA 568.)
Director of Patents has no jurisdiction over the issue of
unfair competition. (Victorias Milling Company, Inc. vs.
Ong Su, 79 SCRA 207.)
There is infringement of trademark when the use of the
mark involved would be likely to cause confusion or
mistake in the mind of the public or to deceive purchasers
as to the origin or source of the commodity. (Philippine Nut
Industry, Inc. vs. Standard Brands Incorporated, 65 SCRA
575.)
Non-use of a trademark on an article of merchandise
due to legal restrictions or circumstances beyond one’s
control is not to be considered as an abandonment.
(Philippine Nut Industry, Inc. vs. Standard Brands
Incorporated, 65 SCRA 575.)

——o0o——

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