Republic of the Philippines

SUPREME COURT
Manila
THIRD DIVISION
G.R. No. 120900 July 20, 2000
CANON KABUSHIKI KAISHA, petitioner,
vs.
COURT OF APPEALS a! NSR RUBBER CORPORATION, respondents.
GON"AGA#RE$ES, J.%
efore us is a petition for revie! that see"s to set aside the Decision1 dated #ebruar$ %&, &''( of the )ourt of *ppeals
in )*+,R SP No. -.%.-, entitled /)anon 0abushi"i 0aisha vs. NSR Rubber )orporation/ and its Resolution dated
1une %2, &''( den$in3 the 4otion for reconsideration of herein petitioner )anon 0abushi"i 0aisha 5petitioner6.
On 1anuar$ &(, &'7(, private respondent NSR Rubber )orporation 5private respondent6 filed an application for
re3istration of the 4ar" )*NON for sandals in the ureau of Patents, Trade4ar"s, and Technolo3$ Transfer
5PTTT6. * Verified Notice of Opposition !as filed b$ petitioner, a forei3n corporation dul$ or3ani8ed and e9istin3
under the la!s of 1apan, alle3in3 that it !ill be da4a3ed b$ the re3istration of the trade4ar" )*NON in the na4e of
private respondent. The case !as doc"eted as Inter Partes )ase No. -.:-.
Petitioner 4oved to declare private respondent in default for its failure to file its ans!er !ithin the prescribed period.
The PTTT then declared private respondent in default and allo!ed petitioner to present its evidence ex-parte.
ased on the records, the evidence presented b$ petitioner consisted of its certificates of re3istration for the 4ar"
)*NON in various countries coverin3 3oods belon3in3 to class % 5paints, che4ical products, toner, and d$e stuff6.
Petitioner also sub4itted in evidence its Philippine Trade4ar" Re3istration No. -'-'7, sho!in3 its o!nership over
the trade4ar" )*NON also under class %.
On Nove4ber &., &''%, the PTTT issued its decision dis4issin3 the opposition of petitioner and 3ivin3 due course
to private respondent;s application for the re3istration of the trade4ar" )*NON. On #ebruar$ &<, &''-, petitioner
appealed the decision of the PTTT !ith public respondent )ourt of *ppeals that eventuall$ affir4ed the decision of
PTTT. Hence, this petition for revie!.
Petitioner anchors this instant petition on these 3rounds=
*6 P>TITION>R IS >NTIT?>D TO >@)?ASIV> AS> O# TH> M*R0 )*NON >)*AS> IT IS ITS
TR*D>M*R0 *ND IS AS>D *?SO #OR #OOTB>*R.
6 TO *??OB PRIV*T> R>SPOND>NT TO R>,IST>R )*NON #OR #OOTB>*R IS TO PR>V>NT
P>TITION>R #ROM ASIN, )*NON #OR V*RIOAS 0INDS O# #OOTB>*R, BH>N IN #*)T,
P>TITION>R H*S >*R?I>R AS>D S*ID M*R0 #OR S*ID ,OODS.
)6 P>TITION>R IS *?SO >NTIT?>D TO TH> RI,HT TO >@)?ASIV>?C AS> )*NON TO PR>V>NT
)ON#ASION O# ASIN>SS.
D6 P>TITION>R IS *?SO >NTIT?>D TO TH> >@)?ASIV> AS> O# )*NON >)*AS> IT #ORMS
P*RT O# ITS )ORPOR*T> N*M>, PROT>)T>D C TH> P*RIS )ONV>NTION.2
The PTTT and the )ourt of *ppeals share the opinion that the trade4ar" /)*NON/ as used b$ petitioner for its
paints, che4ical products, toner, and d$estuff, can be used b$ private respondent for its sandals because the products
of these t!o parties are dissi4ilar. Petitioner protests the appropriation of the 4ar" )*NON b$ private respondent on
the 3round that petitioner has used and continues to use the trade4ar" )*NON on its !ide ran3e of 3oods !orld!ide.
*lle3edl$, the corporate na4e or tradena4e of petitioner is also used as its trade4ar" on diverse 3oods includin3
foot!ear and other related products li"e shoe polisher and polishin3 a3ents. To lend credence to its clai4, petitioner
points out that it has branched out in its business based on the various 3oods carr$in3 its trade4ar" )*NON3,
includin3 foot!ear !hich petitioner contends covers sandals, the 3oods for !hich private respondent sou3ht to
re3ister the 4ar" )*NON. #or petitioner, the fact alone that its trade4ar" )*NON is carried b$ its other products
li"e foot!ear, shoe polisher and polishin3 a3ents should have precluded the PTTT fro4 3ivin3 due course to the
application of private respondent.
Be find the ar3u4ents of petitioner to be un4eritorious. Ordinaril$, the o!nership of a trade4ar" or tradena4e is a
propert$ ri3ht that the o!ner is entitled to protect4 as 4andated b$ the Trade4ar" ?a!.5 Ho!ever, !hen a trade4ar"
is used b$ a part$ for a product in !hich the other part$ does not deal, the use of the sa4e trade4ar" on the latter;s
product cannot be validl$ obDected to.6
* revie! of the records sho!s that !ith the order of the PTTT declarin3 private respondent in default for failure to
file its ans!er, petitioner had ever$ opportunit$ to present ex-parte all of its evidence to prove that its certificates of
re3istration for the trade4ar" )*NON cover foot!ear. The certificates of re3istration for the trade4ar" )*NON in
other countries and in the Philippines as presented b$ petitioner, clearl$ sho!ed that said certificates of re3istration
cover 3oods belon3in3 to class % 5paints, che4ical products, toner, d$estuff6. On this basis, the PTTT correctl$ ruled
that since the certificate of re3istration of petitioner for the trade4ar" )*NON covers class % 5paints, che4ical
products, toner, d$estuff6, private respondent can use the trade4ar" )*NON for its 3oods classified as class %(
5sandals6. )learl$, there is a !orld of difference bet!een the paints, che4ical products, toner, and d$estuff of
petitioner and the sandals of private respondent.
Petitioner counters that not!ithstandin3 the dissi4ilarit$ of the products of the parties, the trade4ar" o!ner is entitled
to protection !hen the use of b$ the Dunior user /forestalls the nor4al e9pansion of his business/.7Petitioner;s
opposition to the re3istration of its trade4ar" )*NON b$ private respondent rests upon petitioner;s insistence that it
!ould be precluded fro4 usin3 the 4ar" )*NON for various "inds of foot!ear, !hen in fact it has earlier used said
4ar" for said 3oods. Stretchin3 this ar3u4ent, petitioner clai4s that it is possible that the public could presu4e that
petitioner !ould also produce a !ide variet$ of foot!ear considerin3 the diversit$ of its products 4ar"eted
!orld!ide.
Be do not a3ree. >ven in this instant petition, e9cept for its bare assertions, petitioner failed to attach evidence that
!ould convince this )ourt that petitioner has also e4bar"ed in the production of foot!ear products. Be Euote !ith
approval the observation of the )ourt of *ppeals that=
/The herein petitioner has not 4ade "no!n that it intends to venture into the business of producin3 sandals.
This is clearl$ sho!n in its Trade4ar" Principal Re3ister 5>9hibit /A/6 !here the products of the said
petitioner had been clearl$ and specificall$ described as /)he4ical products, d$estuffs, pi34ents, toner
developin3 preparation, shoe polisher, polishin3 a3ent/. It !ould be ta9in3 one;s credibilit$ to aver at this
point that the production of sandals could be considered as a possible /natural or nor4al e9pansion/ of its
business operation/.8
In Faberge, Incorporated vs. Intermediate Appellate Court,9 the Director of patents allo!ed the Dunior user to use the
trade4ar" of the senior user on the 3round that the briefs 4anufactured b$ the Dunior user, the product for !hich the
trade4ar" RAT> !as sou3ht to be re3istered, !as unrelated and non+co4petin3 !ith the products of the senior user
consistin3 of after shave lotion, shavin3 crea4, deodorant, talcu4 po!der, and toilet soap. The senior user vehe4entl$
obDected and clai4ed that it !as e9pandin3 its trade4ar" to briefs and ar3ued that per4ittin3 the Dunior user to re3ister
the sa4e trade4ar" !ould allo! the latter to invade the senior user;s e9clusive do4ain. In sustainin3 the Director of
Patents, this )ourt said that since /5the senior user6 has not ventured in the production of briefs, an ite4 !hich is not
listed in its certificate of re3istration, 5the senior user6, cannot and should not be allo!ed to fei3n that 5the Dunior user6
had invaded 5the senior user;s6 e9clusive do4ain./10 Be reiterated the principle that the certificate of re3istration
confers upon the trade4ar" o!ner the e9clusive ri3ht to use its o!n s$4bol only to those goods specified in the
certificate, subDect to the conditions and li4itations stated therein.11 Thus, the e9clusive ri3ht of petitioner in this case
to use the trade4ar" )*NON is li4ited to the products covered b$ its certificate of re3istration.
Petitioner further ar3ues that the alle3ed diversit$ of its products all over the !orld 4a"es it plausible that the public
4i3ht be 4isled into thin"in3 that there is so4e supposed connection bet!een private respondent;s 3oods and
petitioner. Petitioner is apprehensive that there could be confusion as to the ori3in of the 3oods, as !ell as confusion
of business, if private respondent is allo!ed to re3ister the 4ar" )*NON. In such a case, petitioner !ould alle3edl$
be i44ensel$ preDudiced if private respondent !ould be per4itted to ta"e /a free ride on, and reap the advanta3es of,
the 3ood!ill and reputation of petitioner )anon/.12 In support of the fore3oin3 ar3u4ents, petitioner invo"es the
rulin3s in Sta. Ana vs. Maliat13 , Ang vs. !eodoro14 and Converse "ubber Corporation vs. #niversal "ubber
$roducts, Inc.15.
The li"elihood of confusion of 3oods or business is a relative concept, to be deter4ined onl$ accordin3 to the
particular, and so4eti4es peculiar, circu4stances of each case.16 Indeed, in trade4ar" la! cases, even 4ore than in
other liti3ation, precedent 4ust be studied in the li3ht of the facts of the particular case. 17 )ontrar$ to petitioner;s
supposition, the facts of this case !ill sho! that the cases of Sta. Ana vs. Maliat,, Ang vs. !eodoro and Converse
"ubber Corporation vs. #niversal "ubber $roducts, Inc. are hardl$ in point. The Dust cited cases involved 3oods that
!ere confusin3l$ si4ilar, if not identical, as in the case of Converse "ubber Corporation vs. #niversal "ubber
$roducts, Inc. Here, the products involved are so unrelated that the public !ill not be 4isled that there is the sli3htest
ne9us bet!een petitioner and the 3oods of private respondent.
In cases of confusion of business or ori3in, the Euestion that usuall$ arises is !hether the respective 3oods or services
of the senior user and the Dunior user are so related as to li"el$ cause confusion of business or ori3in, and thereb$
render the trade4ar" or tradena4es confusin3l$ si4ilar.18 ,oods are related !hen the$ belon3 to the sa4e class or
have the sa4e descriptive propertiesF !hen the$ possess the sa4e ph$sical attributes or essential characteristics !ith
reference to their for4, co4position, te9ture or Eualit$.19 The$ 4a$ also be related because the$ serve the sa4e
purpose or are sold in 3rocer$ stores.20
Thus, in %sso Standard %astern, Inc. vs. Court of Appeals, this )ourt ruled that the petroleu4 products on !hich the
petitioner therein used the trade4ar" >SSO, and the product of respondent, ci3arettes are /so forei3n to each other as
to 4a"e it unli"el$ that purchasers !ould thin" that petitioner is the 4anufacturer of respondent;s 3oods/21.
Moreover, the fact that the 3oods involved therein flo! throu3h different channels of trade hi3hli3hted their
dissi4ilarit$, a factor e9plained in this !ise=
/The products of each part$ 4ove alon3 and are disposed throu3h different channels of distribution. The
5petitioner;s6 products are distributed principall$ throu3h 3asoline service and lubrication stations, auto4otive
shops and hard!are stores. On the other hand, the 5respondent;s6 ci3arettes are sold in sari+sari stores, 3rocer$
store, and other s4all distributor outlets. 5Respondnet;s6 ci3arettes are even peddled in the streets !hile
5petitioner;s6 ;3asul; burners are not. #inall$, there is a 4ar"ed distinction bet!een oil and tobacco, as !ell as
bet!een petroleu4 and ci3arettes. >videntl$, in "ind and nature the products of 5respondent6 and of
5petitioner6 are poles apart./22
Andoubtedl$, the paints, che4ical products, toner and d$estuff of petitioner that carr$ the trade4ar" )*NON are
unrelated to sandals, the product of private respondent. Be a3ree !ith the PTTT, follo!in3 the >sso doctrine, !hen
it noted that the t!o classes of products in this case flo! throu3h different trade channels. The products of petitioner
are sold throu3h special che4ical stores or distributors !hile the products of private respondent are sold in 3rocer$
stores, sari+sari stores and depart4ent stores.23 Thus, the evident disparit$ of the products of the parties in the case at
bar renders unfounded the apprehension of petitioner that confusion of business or ori3in 4i3ht occur if private
respondent is allo!ed to use the 4ar" )*NON.
In its bid to bar the re3istration of private respondent of the 4ar" )*NON, petitioner invo"es the protective 4antle of
the Paris )onvention. Petitioner asserts that it has the e9clusive ri3ht to the 4ar" )*NON because it for4s part of its
corporate na4e or tradena4e, protected b$ *rticle 7 of the Paris )onvention, to !it=
/* tradena4e shall be protected in all the countries of the Anion !ithout the obli3ation of filin3 or
re3istration, !hether or not it for4s part of a trade4ar"./
Public respondents PTTT and the )ourt of *ppeals alle3edl$ co44itted an oversi3ht !hen the$ reEuired petitioner
to prove that its 4ar" is a !ell+"no!n 4ar" at the ti4e the application of private respondent !as filed. Petitioner
Euestions the applicabilit$ of the 3uidelines e4bodied in the Me4orandu4 of then Minister of Trade and Industr$
Roberto On3pin 5On3pin6 dated October %(, &'7- !hich accordin3 to petitioner i4ple4ents *rticle <bis of the Paris
)onvention, the provision referrin3 to the protection of trade4ar"s. The 4e4orandu4 reads=
/a6 the 4ar" 4ust be internationall$ "no!nF
b6 the subDect of the ri3ht 4ust be a trade4ar", not a patent or cop$ri3ht or an$thin3 elseF
c6 the 4ar" 4ust be for use in the sa4e or si4ilar class of 3oodsF
d6 the person clai4in3 4ust be the o!ner of the 4ar"./
*ccordin3 to petitioner, it should not be reEuired to prove that its trade4ar" is !ell+"no!n and that the products are
not si4ilar as reEuired b$ the Euoted 4e4orandu4. Petitioner e4phasi8es that the 3uidelines in the 4e4orandu4 of
On3pin i4ple4ent *rticle <bis of the Paris )onvention, the provision for the protection of trade4ar"s, not
tradena4es. *rticle <bis of the Paris )onvention states=
5&6 The countries of the Anion underta"e, either ad4inistrativel$ if their le3islation so per4its, or at the
reEuest of an interested part$, to refuse or to cancel the re3istration and to prohibit the use of a trade4ar"
!hich constitutes a reproduction, i4itation or translation, liable to create confusion, of a 4ar" considered b$
the co4petent authorit$ of the countr$ of re3istration or use to be !ell+"no!n in that countr$ as bein3 alread$
the 4ar" of a person entitled to the benefits of the present )onvention and used for identical or si4ilar 3oods.
These provisions shall also appl$ !hen the essential part of the 4ar" constitutes a reproduction of an$ such
!ell+"no!n 4ar" or an i4itation liable to create confusion there!ith.
5%6 * period of at least five $ears fro4 the date of re3istration shall be allo!ed for see"in3 the cancellation of
such a 4ar". The countries of the Anion 4a$ provide for a period !ithin !hich the prohibition of use 4ust be
sou3ht.
5-6 No ti4e li4it shall be fi9ed for see"in3 the cancellation or the prohibition of the use of 4ar"s or used in
bad faith./
Petitioner insists that !hat it see"s is the protection of *rticle 7 of the Paris )onvention, the provision that pertains to
the protection of tradena4es. Petitioner believes that the appropriate 4e4orandu4 to consider is that issued b$ the
then Minister of Trade and Industr$, ?uis Villafuerte, directin3 the Director of patents to=
/reDect all pendin3 applications for Philippine re3istration of si3nature and other !orld fa4ous trade4ar"s b$
applicants other than the ori3inal o!ners or users./
*s far as petitioner is concerned, the fact that its tradena4e is at ris" !ould call for the protection 3ranted b$ *rticle 7
of the Paris )onvention. Petitioner calls attention to the fact that *rticle 7, even as e4bodied in par. <, sec. -2 of R*
&<<, 4entions no reEuire4ent of si4ilarit$ of 3oods. Petitioner clai4s that the reason there is no 4ention of such a
reEuire4ent, is /because there is a difference bet!een the referent of the na4e and that of the 4ar"/24 and that /since
*rt. 7 protects the tradena4e in the countries of the Anion, such as 1apan and the Philippines, Petitioner;s tradena4e
should be protected here./25
Be cannot uphold petitioner;s position.
The ter4 /trade4ar"/ is defined b$ R* &<<, the Trade4ar" ?a!, as includin3 /an$ !ord, na4e, s$4bol, e4ble4,
si3n or device or an$ co4bination thereof adopted and used b$ a 4anufacturer or 4erchant to identif$ his 3oods and
distin3uish the4 for those 4anufactured, sold or dealt in b$ others./26 Tradena4e is defined b$ the sa4e la! as
includin3 /individual na4es and surna4es, fir4 na4es, tradena4es, devices or !ords used b$ 4anufacturers,
industrialists, 4erchants, a3riculturists, and others to identif$ their business, vocations, or occupationsF the na4es or
titles la!full$ adopted and used b$ natural or Duridical persons, unions, and an$ 4anufacturin3, industrial,
co44ercial, a3ricultural or other or3ani8ations en3a3ed in trade or co44erce./27Si4pl$ put, a trade na4e refers to
the business and its 3ood!illF a trade4ar" refers to the 3oods.28
The )onvention of Paris for the Protection of Industrial Propert$, other!ise "no!n as the Paris )onvention, of !hich
both the Philippines and 1apan, the countr$ of petitioner, are si3natories29, is a 4ultilateral treat$ that see"s to protect
industrial propert$ consistin3 of patents, utilit$ 4odels, industrial desi3ns, trade4ar"s, service 4ar"s, trade na4es and
indications of source or appellations of ori3in, and at the sa4e ti4e ai4s to repress unfair co4petition.30 Be a3ree
!ith public respondents that the controllin3 doctrine !ith respect to the applicabilit$ of *rticle 7 of the Paris
)onvention is that established in &abushi &aisha Isetan vs. Intermediate Appellate Court.31 *s pointed out b$ the
PTTT=
/Re3ardin3 the applicabilit$ of *rticle 7 of the Paris )onvention, this Office believes that there is no
auto4atic protection afforded an entit$ !hose tradena4e is alle3ed to have been infrin3ed throu3h the use of
that na4e as a trade4ar" b$ a local entit$.
In 0abushi"i 0aisha Isetan vs. The Inter4ediate *ppellate )ourt, et. al., ,.R. No. 2(:%., &( Nove4ber &''&,
the Honorable Supre4e )ourt held that=
;The Paris )onvention for the Protection of Industrial Propert$ does not auto4aticall$ e9clude all
countries of the !orld !hich have si3ned it fro4 usin3 a tradena4e !hich happens to be used in one
countr$. To illustrate G if a ta9icab or bus co4pan$ in a to!n in the Anited 0in3do4 or India happens
to use the tradena4e /Rapid Transportation/, it does not necessaril$ follo! that /Rapid/ can no
lon3er be re3istered in A3anda, #iDi, or the Philippines.
This office is not un4indful that in the Treat$ of Paris for the Protection of Intellectual Propert$ re3ardin3
!ell+"no!n 4ar"s and possible application thereof in this case. Petitioner, as this office sees it, is tr$in3 to
see" refu3e under its protective 4antle, clai4in3 that the subDect 4ar" is !ell "no!n in this countr$ at the
ti4e the then application of NSR Rubber !as filed.
Ho!ever, the then Minister of Trade and Industr$, the Hon. Roberto V. On3pin, issued a 4e4orandu4 dated
%( October &'7- to the Director of Patents, a set of 3uidelines in the i4ple4entation of *rticle <bis 5sic6 of
the Treat$ of Paris. These conditions are=
a6 the 4ar" 4ust be internationall$ "no!nF
b6 the subDect of the ri3ht 4ust be a trade4ar", not a patent or cop$ri3ht or an$thin3 elseF
c6 the 4ar" 4ust be for use in the sa4e or si4ilar "inds of 3oodsF and
d6 the person clai4in3 4ust be the o!ner of the 4ar" 5The Parties )onvention )o44entar$ on the
Paris )onvention. *rticle b$ Dr. o3sch, Director ,eneral of the Borld Intellectual Propert$
Or3ani8ation, ,eneva, S!it8erland, &'7(6;
#ro4 the set of facts found in the records, it is ruled that the Petitioner failed to co4pl$ !ith the third
reEuire4ent of the said 4e4orandu4 that is the 4ar" 4ust be for use in the sa4e or si4ilar "inds of 3oods.
The Petitioner is usin3 the 4ar" /)*NON/ for products belon3in3 to class % 5paints, che4ical products6
!hile the Respondent is usin3 the sa4e 4ar" for sandals 5class %(6. Hence, Petitioner;s contention that its
4ar" is !ell+"no!n at the ti4e the Respondent filed its application for the sa4e 4ar" should fail. /32
Petitioner assails the application of the case of &abushi &aisha Isetan vs. Intermediate Appellate Court to this case.
Petitioner points out that in the case of &abushi &aisha Isetan vs. Intermediate Appellate Court, petitioner therein !as
found to have never at all conducted its business in the Philippines unli"e herein petitioner !ho has e9tensivel$
conducted its business here and also had its trade4ar" re3istered in this countr$. Hence, petitioner sub4its that this
factual difference renders inapplicable our rulin3 in the case of &abushi &aisha Isetan vs. Intermediate Appellate
Court that *rticle 7 of the Paris )onvention does not auto4aticall$ e9tend protection to a tradena4e that is in dan3er
of bein3 infrin3ed in a countr$ that is also a si3nator$ to said treat$. This contention deserves scant consideration.
Suffice it to sa$ that the Dust Euoted pronounce4ent in the case of &abushi &aisha Isetan vs. Intermediate Appellate
Court, !as 4ade independent of the factual findin3 that petitioner in said case had not conducted its business in this
countr$.
&HEREFORE, in vie! of the fore3oin3, the instant petition for revie! on certiorari is D>NI>D for lac" of 4erit.
SO ORD>R>D.
Melo, 'Chairman(, )itug, $anganiban, and $ursima, **., concur.
Foo'o'()
1 Penned b$ 1ustice Serafin V.). ,uin3ona and concurred in b$ 1ustices )orona Iba$+So4era and ennie
*defuin+De la )ru8 of the for4er Special >i3hth Division.
2 "ollo, p. &:.
3 Petitioner )anon clai4s that its trade4ar" )*NON has been used and continues to be used in the
Philippines and in other parts of the !orld in its business over a !ide ran3e of 3oods such as, che4ical
products, photo3raphic and cine4ato3raphic instru4ents and parts and electrical instru4ents li"e electric
4otors and s!itchesF lenses and electrical e9posure 4etersF li3htin3 apparatus, flash 3un and flash bulbsF
electric and 4a3netic 4easurin3 instru4ents, household electric appliances, electric co44unication
4achiner$ and apparatusF industrial 4achiner$ and i4ple4ents, pri4e 4overs and i4ple4ents 5e9cludin3
4otors6, pneu4atic and h$draulic 4achiner$ and i4ple4ents, office 4achines and eEuip4ent 5e9cludin3
those belon3in3 to applied electronic 4achiner$ and apparatus6, other 4achiner$ and eEuip4ent not
belon3in3 to an$ other classF ba3s, pouchesF foot!ear, u4brellas and parasols, canes, their parts and
accessories 5e9cludin3 shoe brushes and si4ilar 3oods thereof6F to$s, dolls, recreation eEuip4ent, sportin3
3oods, fishin3 tac"les, 4usical instru4ents, 3ra4ophone 5e9cludin3 electric photo3raph6, records, their parts
and accessories, s4o"er;s articlesF tobaccos and 4atches as !ell as d$estuffs, pi34ents, toner developin3
preparation, shoe polisher and polishin3 a3ents 5Petitioner;s Me4orandu4, pp. '+&.6
4 )onverse Rubber )orporation vs. Aniversal Rubber Products, Inc. &:2 S)R* &(:, 5&'726,p. &<..
5 R* &<<, H %.. )ertificate of re3istration pri4a facie evidence of validit$.I* certificate of re3istration of a
4ar" or trade+na4e shall be pri4a facie evidence of the validity of the re3istration, the re3istrant;s o!nership
of the 4ar" or tradena4e, and of the registrant+s exclusive right to use the same in connection ith the goods,
business or services specified in the certificate, subDect to an$ conditions and li4itations stated therein.
6 >sso Standard >astern, Inc. vs. )ourt of *ppeals, &&< S)R* --<, 5&'7%6, p. -:(.
7 "ollo, p. &7, citin3 Sta. *na vs. Mali!at, %: S)R* &.&7 5&'<76, p. &.%(.
8 Ibid., p. -7.
9 #aber3e, Incorporated vs. Inter4ediate *ppellate )ourt, %&( S)R* -%< 5&''%6
10 Ibid., p. -%(.
11 Ibid., p. -%<.
12 "ollo, p. %-.
13 Supra.
14 2: Phil (. 5&':%6
15 Supra..
16 >sso Standard >astern, Inc. vs. )ourt of *ppeals, &&< S)R* --< 5&'7%6, p, -:&.
17 Ibid.
18 RA>N >. *,P*?O, TR*D>M*R0 ?*B *ND PR*)TI)> IN TH> PHI?IPPIN>S, 5&''.6, p. (:.
19 >sso Standard >astern, Inc. vs. )ourt of *ppeals, supra, p, -:%.
20 Ibid.
21 Ibid., p. -::.
22 Ibid., p. -:(.
23 Records, p. %..
24 "ollo, p. %7.
25 Ibid., p.%'.
26 H -7.
27 Ibid.
28 *,P*?O, supra, p. (.
29 0abushi 0aisha Isetan vs. Inter4ediate *ppellate )ourt, %.- S)R* (7-, p. (7<.
30 Mirpuri vs. )ourt of *ppeals, ,. R. No. &&:(.7, Nove4ber &', &'''.
31 Supra.
32 Records, pp. %&+%%.
The ?a!phil ProDect + *rellano ?a! #oundation
Republic of the Philippines
SUPREME COURT
Manila
#IRST DIVISION
,.R. No. &&&(7. 1une %&, %..&
SH*N,RI+?* INT>RN*TION*? HOT>? M*N*,>M>NT ?TD., SH*N,RI+?* PROP>RTI>S, IN)., M*0*TI
SH*N,RI+?* HOT>? *ND R>SORT, IN). and 0AO0 PHI?IPPIN> PROP>RTI>S, IN)., petitioners,
vs.
THE COURT OF APPEALS, HON. FELI* M. +E GU"MAN, a) Ju!,(, RTC o- .u(/o C0'y, B1a23 99 a!
+E4ELOPERS GROUP OF COMPANIES, INC., respondents.
++++++++++++++++++++++++++++++++++++++++
G.R. No. 115602 Ju( 21, 2001
+E4ELOPERS GROUP OF COMPANIES, INC., petitioner,
vs.
THE COURT OF APPEALS, HON. IGNACIO S. SAPALO, 0 30) 2a7a20'y a) +01(2'o1, Bu1(au o- Pa'('),
T1a!(8a19) a! T(23olo,y T1a)-(1, a! SHANGRI#LA INTERNATIONAL HOTEL MANAGEMENT,
LT+.,respondents.
$NARES#SANTIAGO, J.:
On 1une %&, &'77, the Shan3ri+?a International Hotel Mana3e4ent, ?td., Shan3ri+?a Properties, Inc., Ma"ati Shan3ri+
?a Hotel and Resort, Inc. and 0uo" Philippine Properties, Inc. 5hereinafter collectivel$ referred as the /Shan3ri+?a
,roup/6, filed !ith the ureau of Patents, Trade4ar"s and Technolo3$ Transfer 5PTTT6 a petition, doc"eted as Inter
Partes )ase No. -&:(, pra$in3 for the cancellation of the re3istration of the /Shan3ri+?a/ 4ar" and /S/ deviceJlo3o
issued to the Developers ,roup of )o4panies, Inc., on the 3round that the sa4e !as ille3all$ and fraudulentl$
obtained and appropriated for the latter;s restaurant business. The Shan3ri+?a ,roup alle3ed that it is the le3al and
beneficial o!ners of the subDect 4ar" and lo3oF that it has been usin3 the said 4ar" and lo3o for its corporate affairs
and business since March &'<% and caused the sa4e to be speciall$ desi3ned for their international hotels in &'2(,
4uch earlier than the alle3ed first use thereof b$ the Developers ,roup in &'7%.
?i"e!ise, the Shan3ri+?a ,roup filed !ith the PTTT its o!n application for re3istration of the subDect 4ar" and
lo3o. The Developers ,roup filed an opposition to the application, !hich !as doc"eted as Inter Partes )ase No. -(%'.
*l4ost three 5-6 $ears later, or on *pril &(, &''&, the Developers ,roup instituted !ith the Re3ional Trial )ourt of
Kue8on )it$, ranch '', a co4plaint for infrin3e4ent and da4a3es !ith pra$er for inDunction, doc"eted as )ivil )ase
No. K+'&+7:2<, a3ainst the Shan3ri+?a ,roup.
On 1anuar$ 7, &''%, the Shan3ri+?a ,roup 4oved for the suspension of the proceedin3s in the infrin3e4ent case on
account of the pendenc$ of the ad4inistrative proceedin3s before the PTTT.& This !as denied b$ the trial court in a
Resolution issued on 1anuar$ &<, &''%.% The Shan3ri+?a ,roup filed a Motion for Reconsideration.- Soon thereafter,
it also filed a Motion to Inhibit a3ainst Presidin3 1ud3e #eli9 M. de ,u84an.:On 1ul$ &, &''%, the trial court denied
both 4otions.(
The Shan3ri+?a ,roup filed a petition for certiorari before the )ourt of *ppeals, doc"eted as )*+,.R. SP No.
%'..<.< On #ebruar$ &(, &''-, the )ourt of *ppeals rendered its decision dis4issin3 the petition for certiorari. 2The
Shan3ri+?a ,roup filed a Motion for Reconsideration, !hich !as denied on the 3round that the sa4e presented no
ne! 4atter that !arranted consideration.7
Hence, the instant petition, doc"eted as ,.R. No. &&&(7., based on the follo!in3 3rounds=
TH> HONOR*?> )OART O# *PP>*?S ,R*V>?C *AS>D ITS DIS)R>TION *ND )OMMITT>D
* R>V>RSI?> >RROR IN NOT #INDIN, TH*T=
I. TH> IN#RIN,>M>NT )*S> SHOA?D > DISMISS>D OR *T ?>*ST SASP>ND>DF *ND
II. TH> HONOR*?> PR>SIDIN, 1AD,> SHOA?D INHIIT HIMS>?# #ROM TRCIN, TH>
IN#RIN,>M>NT )*S>.'
Mean!hile, on October %7, &''&, the Developers ,roup filed in Inter Partes )ase No. -&:( an Ar3ent Motion to
Suspend Proceedin3s, invo"in3 the pendenc$ of the infrin3e4ent case it filed before the Re3ional Trial )ourt of
Kue8on )it$.&. On 1anuar$ &., &''%, the PTTT, throu3h Director I3nacio S. Sapalo, issued an Order den$in3 the
Motion.&& * Motion for Reconsideration !as filed !hich !as, ho!ever, denied in a Resolution dated #ebruar$ &&,
&''%.&%
#ro4 the denial b$ the PTTT of its Ar3ent Motion to Suspend Proceedin3s and Motion for Reconsideration, the
Developers ,roup filed !ith the )ourt of *ppeals a petition for certiorari, 4anda4us and prohibition, doc"eted as
)*+,.R. SP No. %22:%.&- On March %', &'':, the )ourt of *ppeals dis4issed the petition for lac" of 4erit.&:
* petition for revie! !as thereafter filed, doc"eted as ,.R. No. &&:7.%, raisin3 the issue of=
BH>TH>R OR NOT, ,IV>N TH> >ST*?ISH>D #*)TS *ND )IR)AMST*N)>S ON R>)ORD *ND
TH> ?*B *ND 1ARISPRAD>N)> *PP?I)*?> TO TH> M*TT>R, TH> R>SPOND>NT )OART
>RR>D IN HO?DIN, TH*T, IN*SMA)H *S OTH TH> )IVI? *)TION *ND TH>
*DMINISTR*TIV> PRO)>>DIN,S H>R> INVO?V>D M*C )O+>@IST *ND TH> ?*B DO>S NOT
PROVID> #OR *NC PR>#>R>N)> C ON> OV>R TH> OTH>R, TH> R>SPOND>NT DIR>)TOR
H*D 1ARISDI)TION TO RA?> *S H> DID *ND H*D NOT IN)ARR>D *NC ,R*V> *AS> O#
DIS)R>TION )ORR>)TI?> C TH> >@TR*ORDIN*RC R>M>DI>S O# )>RTIOR*RI,
PROHIITION *ND M*ND*MAS.&(
On #ebruar$ %, &''7, ,.R. Nos. &&&(7. and &&:7.% !ere ordered consolidated.
The core issue is si4pl$ !hether, despite the institution of an Inter Partes case for cancellation of a 4ar" !ith the
PTTT 5no! the ureau of ?e3al *ffairs, Intellectual Propert$ Office6 b$ one part$, the adverse part$ can file a
subseEuent action for infrin3e4ent !ith the re3ular courts of Dustice in connection !ith the sa4e re3istered 4ar".
Be rule in the affir4ative.
Section &(&.% of Republic *ct No. 7%'-, other!ise "no!n as the Intellectual Propert$ )ode, provides, as follo!s G
Section &(&.%. Not!ithstandin3 the fore3oin3 provisions, the court or the ad4inistrative a3enc$ vested !ith
Durisdiction to hear and adDudicate an$ action to enforce the ri3hts to a re3istered 4ar" shall li"e!ise e9ercise
Durisdiction to deter4ine !hether the re3istration of said 4ar" 4a$ be cancelled in accordance !ith this *ct.
The filin3 of a suit to enforce the re3istered 4ar" !ith the proper court or a3enc$ shall e9clude an$ other
court or a3enc$ fro4 assu4in3 Durisdiction over a subseEuentl$ filed petition to cancel the sa4e 4ar". On
the other hand, the earlier filing of petition to cancel the mark with the Bureau of Legal Affairs shall not
constitute a prejudicial question that must be resoled before an action to enforce the rights to same
registered mark ma! be decided. 5>4phasis provided6
Si4ilarl$, Rule 7, Section 2, of the Re3ulations on Inter Partes Proceedin3s, provides to !it G
Section 2. %ffect of filing of a suit before the ,ureau or ith the proper court . + The filin3 of a suit to enforce
the re3istered 4ar" !ith the proper court or ureau shall e9clude an$ other court or a3enc$ fro4 assu4in3
Durisdiction over a subseEuentl$ filed petition to cancel the sa4e 4ar". On the other hand, the earlier filing
of petition to cancel the mark with the Bureau shall not constitute a prejudicial question that must be
resoled before an action to enforce the rights to same registered mark ma! be decided. 5>4phasis
provided6
Hence, as applied in the case at bar, the earlier institution of an Inter Partes case b$ the Shan3ri+?a ,roup for the
cancellation of the /Shan3ri+?a/ 4ar" and /S/ deviceJlo3o !ith the PTTT cannot effectivel$ bar the subseEuent
filin3 of an infrin3e4ent case b$ re3istrant Developers ,roup. The la! and the rules are e9plicit.
The rationale is plain= )ertificate of Re3istration No. -&'.:, upon !hich the infrin3e4ent case is based, re4ains valid
and subsistin3 for as lon3 as it has not been cancelled b$ the ureau or b$ an infrin3e4ent court. *s such, Developers
,roup;s )ertificate of Re3istration in the principal re3ister continues as /pri4a facie evidence of the validit$ of the
re3istration, the re3istrant;s o!nership of the 4ar" or trade+na4e, and of the re3istrant;s e9clusive ri3ht to use the
sa4e in connection !ith the 3oods, business or services specified in the certificate./&< Since the certificate still
subsists, Developers ,roup 4a$ thus file a correspondin3 infrin3e4ent suit and recover da4a3es fro4 an$ person
!ho infrin3es upon the for4er;s ri3hts.&2
#urther4ore, the issue raised before the PTTT is Euite different fro4 that raised in the trial court. The issue raised
before the PTTT !as !hether the 4ar" re3istered b$ Developers ,roup is subDect to cancellation, as the Shan3ri+?a
,roup clai4s prior o!nership of the disputed 4ar". On the other hand, the issue raised before the trial court !as
!hether the Shan3ri+?a ,roup infrin3ed upon the ri3hts of Developers ,roup !ithin the conte4plation of Section %%
of Republic *ct &<<.
The case of "onrad and "ompan!, #nc. . "ourt of Appeals&7 is in point. Be held=
Be cannot see an$ error in the above disEuisition. It 4i3ht be 4entioned that !hile an application for the
ad4inistrative cancellation of a re3istered trade4ar" on an$ of the 3rounds enu4erated in Section &2 of
Republic *ct No. &<<, as a4ended, other!ise "no!n as the Trade+Mar" ?a!, falls under the e9clusive
co3ni8ance of PTTT 5Sec. &', Trade+Mar" ?a!6, an action, ho!ever, for infrin3e4ent or unfair
co4petition, as !ell as the re4ed$ of inDunction and relief for da4a3es, is e9plicitl$ and unEuestionabl$
!ithin the co4petence and Durisdiction of ordinar$ courts.
9 9 9 9 9 9 9 9 9
Surel$, an application !ith PTTT for an ad4inistrative cancellation of a re3istered trade 4ar" cannot per se
have the effect of restrainin3 or preventin3 the courts fro4 the e9ercise of their la!full$ conferred
Durisdiction. * contrar$ rule !ould undul$ e9pand the doctrine of pri4ar$ Durisdiction !hich, si4pl$
e9pressed, !ould 4erel$ behoove re3ular courts, in controversies involvin3 speciali8ed disputes, to defer to
the findin3s or resolutions of ad4inistrative tribunals on certain technical 4atters. This rule, evidentl$, did not
escape the appellate court for it li"e!ise decreed that for /3ood cause sho!n, the lo!er court, in its sound
discretion, 4a$ suspend the action pendin3 outco4e of the cancellation proceedin3s/ before the PTTT.
Ho!ever, !hile the instant Petitions have been pendin3 !ith this )ourt, the infrin3e4ent court rendered a Decision,
dated March 7, &''<, in )ivil )ase No. K+'&+7:2<,&' the dispositive portion of !hich reads=
BH>R>#OR>, Dud34ent is hereb$ rendered in favor of plaintiff Developers ,roup of )o4panies, Inc. and
a3ainst defendants Shan3ri+?a International Hotel Mana3e4ent, ?td., Shan3ri+?a Properties, Inc., Ma"ati
Shan3ri+?a Hotel and Resort, Inc., and 0uo" Philippine Properties, Inc. G
a6 Apholdin3 the validit$ of the re3istration of the service 4ar" /Shan3ri+?a/ and /S+?o3o/ in the na4e of
plaintiffF
b6 Declarin3 defendants; use of said 4ar" and lo3o as an infrin3e4ent of plaintiff;s ri3ht theretoF
c6 Orderin3 defendants, their representatives, a3ents, licensees, assi3nees and other persons actin3 under their
authorit$ and !ith their per4ission, to per4anentl$ cease and desist fro4 usin3 andJor continuin3 to use said
4ar" and lo3o, or an$ cop$, reproduction or colorable i4itation thereof, in the pro4otion, advertise4ent,
rendition of their hotel and allied proDects and services or in an$ other 4anner !hatsoeverF
d6 Orderin3 defendants to re4ove said 4ar" and lo3o fro4 an$ pre4ises, obDects, 4aterials and paraphernalia
used b$ the4 andJor destro$ an$ and all prints, si3ns, advertise4ents or other 4aterials bearin3 said 4ar" and
lo3o in their possession andJor under their controlF and
e6 Orderin3 defendants, Dointl$ and severall$, to inde4nif$ plaintiff in the a4ounts of P%,...,...... as actual
and co4pensator$ da4a3es, P(..,...... as attorne$;s fees and e9penses of liti3ation.
?et a cop$ of this Decision be certified to the Director, ureau of Patents, Trade4ar"s and Technolo3$
Transfer, for his infor4ation and appropriate action in accordance !ith the provisions of Section %(, Republic
*ct No. &<<.
)osts a3ainst defendants.
SO ORD>R>D.%.
The said Decision is no! on appeal !ith respondent )ourt of *ppeals.%&
#ollo!in3 both la! and the Durisprudence enunciated in Conrad and Company, Inc. v. Court of Appeals,%% the
infrin3e4ent case can and should proceed independentl$ fro4 the cancellation case !ith the ureau so as to afford the
o!ner of certificates of re3istration redress and inDunctive !rits. In the sa4e li3ht, so 4ust the cancellation case !ith
the PTTT 5no! the ureau of ?e3al *ffairs, Intellectual Propert$ Office6 continue independentl$ fro4 the
infrin3e4ent case so as to deter4ine !hether a re3istered 4ar" 4a$ ulti4atel$ be cancelled. Ho!ever, the Re3ional
Trial )ourt, in 3rantin3 redress in favor of Developers ,roup, !ent further and upheld the validit$ and preference of
the latter;s re3istration over that of the Shan3ri+?a ,roup.
There can be no den$in3 that the infrin3e4ent court 4a$ validl$ pass upon the ri3ht of re3istration. Section &<& of
Republic *ct No. 7%'- provides to !it G
S>). &<&. Authority to -etermine "ight to "egistration . #n an! action inoling a registered mark the
court ma! determine the right to registration, order the cancellation of the registration, in whole or in part,
and otherwise rectif! the register with respect to the registration of an! part! to the action in the e$ercise
of this. 1ud3e4ent and orders shall be certified b$ the court to the Director, !ho shall 4a"e appropriate entr$
upon the records of the ureau, and shall be controlled thereb$. 5Sec. %(, R.*. No. &<<a6. 5>4phasis
provided6
Bith the decision of the Re3ional Trial )ourt upholdin3 the validit$ of the re3istration of the service 4ar" /Shan3ri+
?a/ and /S/ lo3o in the na4e of Developers ,roup, the cancellation case filed !ith the ureau hence beco4es 4oot.
To allo! the ureau to proceed !ith the cancellation case !ould lead to a possible result contradictor$ to that !hich
the Re3ional Trial )ourt has rendered, albeit the sa4e is still on appeal. Such a situation is certainl$ not in accord !ith
the orderl$ ad4inistration of Dustice. In an$ event, the )ourt of *ppeals has the co4petence and Durisdiction to resolve
the 4erits of the said RT) decision.
Be are not un4indful of the fact that in ,.R. No. &&:7.%, the onl$ issue sub4itted for resolution is the correctness of
the )ourt of *ppeals; decision sustainin3 the PTTT;s denial of the 4otion to suspend the proceedin3s before it. Cet,
to provide a Dudicious resolution of the issues at hand, !e find it apropos to order the suspension of the proceedin3s
before the ureau pendin3 final deter4ination of the infrin3e4ent case, !here the issue of the validit$ of the
re3istration of the subDect trade4ar" and lo3o in the na4e of Developers ,roup !as passed upon.
&HEREFORE, in vie! of the fore3oin3, Dud34ent is hereb$ rendered dis4issin3 ,.R. No. &&&(7. for bein3 4oot
and acade4ic, and orderin3 the ureau of ?e3al *ffairs, Intellectual Propert$ Office, to suspend further proceedin3s
in Inter Partes )ase No. -&:(, to a!ait the final outco4e of the appeal in )ivil )ase No. K+'&+7:2<.&L!phi&.nMt
SO OR+ERE+.
-avide, *r., C.*. $uno and $ardo, **., concur.
&apunan, *., no part.
Foo'o'(
& Rollo, ,.R. No. &&&(7., pp. ('+<:.
% Ibid., pp. 7.+7&.
- Id., pp. 7%+77.
: Id., pp. ':+''.
( Id., pp. &&7+&&'.
< Id., pp. &%.+&::.
2 Id., pp. -2+:'F penned b$ *ssociate 1ustice *lfredo Mari3o4en and concurred in b$ *ssociate 1ustices
Santia3o M. 0apunan and )ancio ). ,arcia.
7 Id., p. (&.
' Id., p. &2.
&. Rollo, ,.R. No. &&:7.%, pp. ':+'7.
&& Ibid., pp. ''+&.-.
&% Id., at p. &&..
&- Id., pp. &&&+&-..
&: Id., pp. :%+('F *ssociate 1ustice )e8ar D. #rancisco, ponente, *ssociate 1ustices Manuel ). Herrera and
uenaventura 1. ,uerrero, concurrin3.
&( Id., p. &'.
&< Republic *ct No. &<<, Section %..
&2 Id., at Sections %% and %-.
&7 ,.R. No. &&(&&(, %:< S)R* <'& N&''(O.
&' See Manifestation and Motion to Dis4iss, *nne9 /*/, Rollo, ,.R. No. &&&(., pp. -('+-<<.
%. Id., at pp. -<(+-<<.
%& Rollo, p. -%..
%% Supra.
The ?a!phil ProDect + *rellano ?a! #oundation
Republic of the Philippines
SUPREME COURT
Manila
#IRST DIVISION
G.R. No. L#:;<9:#9< May 2, 1965
LA CHEMISE LACOSTE, S. A., petitioner,
vs.
HON. OSCAR C. FERNAN+E", P1()0!0, Ju!,( o- B1a23 *LI*, R(,0oal T10al Cou1', Na'0oal Ca70'al
Ju!020al R(,0o, Ma0la a! GOBIN+RAM HEMAN+AS, respondents.
G.R. No. L#:=:=9 May 2l, 1965
GOBIN+RAM HEMAN+AS SUJANANI, petitioner,
vs.
HON. ROBERTO 4. ONGPIN, 0 30) 2a7a20'y a) M00)'(1 o- T1a!( a! I!u)'1y, a! HON. CESAR SAN
+IEGO, 0 30) 2a7a20'y a) +01(2'o1 o- Pa'('), respondents.
Castillo, /aman, !an 0 $antaleon for petitioners in 12341-43.
"amon C. Fernande5 for private respondent in 12341-43 and petitioner in 16164.

GUTIERRE", JR., J.:
It is a4on3 this )ourt;s concerns that the Philippines should not acEuire an unbeco4in3 reputation a4on3 the
4anufacturin3 and tradin3 centers of the !orld as a haven for intellectual pirates i4itatin3 and ille3all$ profitin3 fro4
trade4ar"s and tradena4es !hich have established the4selves in international or forei3n trade.
efore this )ourt is a petition for certiorari !ith preli4inar$ inDunction filed b$ ?a )he4ise ?acoste, S.*., a !ell
"no!n >uropean 4anufacturer of clothin3s and sportin3 apparels sold in the international 4ar"et and bearin3 the
trade4ar"s /?*)OST>/ /)H>MIS> ?*)OST>/, /)RO)ODI?> D>VI)>/ and a co4posite 4ar" consistin3 of the
!ord /?*)OST>/ and a representation of a crocodileJalli3ator. The petitioner as"s us to set aside as null and void, the
order of Dud3e Oscar ). #ernande8, of ranch @?I@, Re3ional Trial )ourt, National )apital 1udicial Re3ion, 3rantin3
the 4otion to Euash the search !arrants previousl$ issued b$ hi4 and orderin3 the return of the sei8ed ite4s.
The facts are not seriousl$ disputed. The petitioner is a forei3n corporation, or3ani8ed and e9istin3 under the la!s of
#rance and not doin3 business in the Philippines, It is undeniable fro4 the records that it is the actual o!ner of the
above4entioned trade4ar"s used on clothin3s and other 3oods specificall$ sportin3 apparels sold in 4an$ parts of the
!orld and !hich have been 4ar"eted in the Philippines since &'<:, The 4ain basis of the private respondent;s case
is its clai4 of alle3ed prior re3istration.
In &'2(, He4andas P )o., a dul$ licensed do4estic fir4 applied for and !as issued Re3. No. SR+%%%( 5SR stands for
Supple4ental Re3ister6 for the trade4ar" /)H>MIS> ?*)OST> P )RO)ODI?> D>VI)>/ b$ the Philippine
Patent Office for use on T+shirts, sports!ear and other 3ar4ent products of the co4pan$. T!o $ears later, it applied
for the re3istration of the sa4e trade4ar" under the Principal Re3ister. The Patent Office eventuall$ issued an order
dated March -, &'22 !hich states that=
999 999 999
... )onsiderin3 that the 4ar" !as alread$ re3istered in the Supple4ental Re3ister in favor of herein
applicant, the Office has no other recourse but to allo! the application, ho!ever, Re3. No. SR+%%%(
is no! bein3 contested in a Petition for )ancellation doc"eted as IP) No. &.:<, still re3istrant is
presu4ed to be the o!ner of the 4ar" until after the re3istration is declared cancelled.
Thereafter, He4andas P )o. assi3ned to respondent ,obindra4 He4andas all ri3hts, title, and interest in the
trade4ar" /)H>MIS> ?*)OST> P D>VI)>/.
On Nove4ber %&, &'7., the petitioner filed its application for re3istration of the trade4ar" /)rocodile Device/
5*pplication Serial No. :-%:%6 and /?acoste/ 5*pplication Serial No. :-%:&6.The for4er !as approved for
publication !hile the latter !as opposed b$ ,a4es and ,ar4ents in Inter Partes )ase No. &<(7. In &'7%, the
petitioner filed a Petition for the )ancellation of Re3. No. SR+%%%( doc"eted as Inter Partes )ase No. &<7'. oth
cases have no! been considered b$ this )ourt in 7emandas v. 7on. "oberto 8ngpin 5,.R. No. <(<('6.
On March %&, &'7-, the petitioner filed !ith the National ureau of Investi3ation 5NI6 a letter+co4plaint alle3in3
therein the acts of unfair co4petition bein3 co44itted b$ He4andas and reEuestin3 their assistance in his
apprehension and prosecution. The NI conducted an investi3ation and subseEuentl$ filed !ith the respondent court
t!o applications for the issuance of search !arrants !hich !ould authori8e the search of the pre4ises used and
occupied b$ the ?acoste Sports )enter and ,a4es and ,ar4ents both o!ned and operated b$ He4andas.
The respondent court issued Search Barrant Nos. 7-+&%7 and 7-+&%' for violation of *rticle &7' of the Revised Penal
)ode, /it appearin3 to the satisfaction of the Dud3e after e9a4inin3 under oath applicant and his !itnesses that there
are 3ood and sufficient reasons to believe that ,obindra4 He4andas ... has in his control and possession in his
pre4ises the ... properties subDect of the offense,/ 5Rollo, pp. <2 and <'6 The NI a3ents e9ecuted the t!o search
!arrants and as a result of the search found and sei8ed various 3oods and articles described in the !arrants.
He4andas filed a 4otion to Euash the search !arrants alle3in3 that the trade4ar" used b$ hi4 !as different fro4
petitioner;s trade4ar" and that pendin3 the resolution of IP) No. &<(7 before the Patent Office, an$ cri4inal or civil
action on the sa4e subDect 4atter and bet!een the sa4e parties !ould be pre4ature.
The petitioner filed its opposition to the 4otion ar3uin3 that the 4otion to Euash !as fatall$ defective as it cited no
valid 3round for the Euashal of the search !arrants and that the 3rounds alle3ed in the 4otion !ere absolutel$ !ithout
4erit. The State Prosecutor li"e!ise filed his opposition on the 3rounds that the 3oods sei8ed !ere instru4ent of a
cri4e and necessar$ for the resolution of the case on preli4inar$ investi3ation and that the release of the said 3oods
!ould be fatal to the case of the People should prosecution follo! in court.
The respondent court !as, ho!ever, convinced that there !as no probable cause to Dustif$ the issuance of the search
!arrants. Thus, in its order dated March %%, &'7-, the search !arrants !ere recalled and set aside and the NI a3ents
or officers in custod$ of the sei8ed ite4s !ere ordered to return the sa4e to He4andas. 5Rollo, p. %(6
The petitioner anchors the present petition on the follo!in3 issues=
Did respondent Dud3e act !ith 3rave abuse of discretion a4ountin3 to lac" of Durisdiction,
5i6 in reversin3 the findin3 of probable cause !hich he hi4self had 4ade in issuin3 the search
!arrants, upon alle3ations !hich are 4atters of defense and as such can be raised and resolved onl$
upon trial on the 4eritsF and
5ii6 in findin3 that the issuance of the search !arrants is pre4ature in the face of the fact that 5a6
?acoste;s re3istration of the subDect trade4ar"s is still pendin3 !ith the Patent Office !ith opposition
fro4 He4andasF and 5b6 the subDect trade4ar"s had been earlier re3istered b$ He4andas in his na4e
in the Supple4ental Re3ister of the Philippine Patent OfficeQ
Respondent, on the other hand, centers his ar3u4ents on the follo!in3 issues=
I
TH> P>TITION>R H*S NO )*P*)ITC TO SA> >#OR> PHI?IPPIN> )OARTS.
II
TH> R>SPOND>NT 1AD,> DID NOT )OMMIT * ,R*V> *AS> O# DIS)R>TION T*NT*MOANT TO
?*)0 O# 1ARISDI)TION IN ISSAIN, TH> ORD>R D*T>D *PRI? %%, &'7-.
He4andas ar3ues in his co44ent on the petition for certiorari that the petitioner bein3 a forei3n corporation failed to
alle3e essential facts bearin3 upon its capacit$ to sue before Philippine courts. He states that not onl$ is the petitioner
not doin3 business in the Philippines but it also is not licensed to do business in the Philippines. He also cites the case
of /eviton Industries v. Salvador 5&&: S)R* :%.6 to support his contention The /eviton case, ho!ever, involved a
co4plaint for unfair co4petition under Section %&+* of Republic *ct No. &<< !hich provides=
Sec. %& I *. *n$ forei3n corporation or Duristic person to !hich a 4ar" or tradena4e has been
re3istered or assi3ned under this *ct 4a$ brin3 an action hereunder for infrin3e4ent, for unfair
co4petition, or false desi3nation of ori3in and false description, !hether or not it has been licensed
to do business in the Philippines under *ct nu4bered #ourteen Hundred and #ift$+Nine, as a4ended,
other!ise "no!n as the )orporation ?a!, at the ti4e it brin3s the co4plaintF $rovided, That the
countr$ of !hich the said forei3n corporation or Duristic person is a citi8en, or in !hich it is
do4iciled, b$ treat$, convention or la!, 3rants a si4ilar privile3e to corporate or Duristic persons of
the Philippines.
Be held that it !as not enou3h for ?eviton, a forei3n corporation or3ani8ed and e9istin3 under the la!s of the State of
Ne! Cor", Anited States of *4erica, to 4erel$ alle3e that it is a forei3n corporation. It averred in Para3raph % of its
co4plaint that its action !as bein3 filed under the provisions of Section %&+* of Republic *ct No. &<<, as a4ended.
)o4pliance !ith the reEuire4ents i4posed b$ the abovecited provision !as necessar$ because Section %&+* of
Republic *ct No. &<< havin3 e9plicitl$ laid do!n certain conditions in a specific proviso, the sa4e 4ust be e9pressl$
averred before a successful prosecution 4a$ ensue. It is therefore, necessar$ for the forei3n corporation to co4pl$
!ith these reEuire4ents or aver !h$ it should be e9e4pted fro4 the4, if such !as the case. The forei3n corporation
4a$ have the ri3ht to sue before Philippine courts, but our rules on pleadin3s reEuire that the Eualif$in3 circu4stances
necessar$ for the assertion of such ri3ht should first be affir4ativel$ pleaded.
In contradistinction, the present case involves a co4plaint for violation of *rticle &7' of the Revised Penal )ode.
The /eviton case is not applicable.
*ssertin3 a distinctl$ different position fro4 the ?eviton ar3u4ent, He4andas ar3ued in his brief that the petitioner
!as doin3 business in the Philippines but !as not licensed to do so. To support this ar3u4ent, he states that the
applicable rulin3 is the case of Mentholatum Co., Inc. v. Mangaliman= 52% Phil. (%:6 !here Mentholatu4 )o. Inc., a
forei3n corporation and Philippine+*4erican Dru3 )o., the for4er;s e9clusive distributin3 a3ent in the Philippines
filed a co4plaint for infrin3e4ent of trade4ar" and unfair co4petition a3ainst the Man3ali4ans.
The ar3u4ent has no 4erit. !he Mentholatum case is distinct fro4 and inapplicable to the case at bar. Philippine
*4erican Dru3 )o., Inc., !as ad4ittedl$ sellin3 products of its principal Mentholatu4 )o., Inc., in the latter;s na4e
or for the latter;s account. Thus, this )ourt held that /!hatever transactions the Philippine+*4erican Dru3 )o., Inc.
had e9ecuted in vie! of the la!, the Mentholatu4 )o., Inc., did it itself. *nd, the Mentholatu4 )o., Inc., bein3 a
forei3n doin3 business in the Philippines !ithout the license reEuired b$ Section <7 of the )orporation ?a!, it 4a$
not prosecute this action for violation of trade4ar" and unfair co4petition./
In the present case, ho!ever, the petitioner is a forei3n corporation not doin3 business in the Philippines. The
4ar"etin3 of its products in the Philippines is done throu3h an e9clusive distributor, Rustan )o44ercial )orporation
The latter is an independent entit$ !hich bu$s and then 4ar"ets not onl$ products of the petitioner but also 4an$
other products bearin3 eEuall$ !ell+"no!n and established trade4ar"s and tradena4es. in other !ords, Rustan is not a
4ere a3ent or conduit of the petitioner.
The rules and re3ulations pro4ul3ated b$ the oard of Invest4ents pursuant to its rule+4a"in3 po!er under
Presidential Decree No. &27', other!ise "no!n as the O4nibus Invest4ent )ode, support a findin3 that the petitioner
is not doin3 business in the Philippines. Rule I, Sec. & 536 of said rules and re3ulations defines /doin3 business/ as
one/ !hich includes, inter alia9
5&6 ... * forei3n fir4 !hich does business throu3h 4iddle4en actin3 on their o!n na4es, such as
indentors, co44ercial bro"ers or co44ission 4erchants, shall not be dee4ed doin3 business in the
Philippines. ut such indentors, co44ercial bro"ers or co44ission 4erchants shall be the ones
dee4ed to be doin3 business in the Philippines.
5%6 *ppointin3 a representative or distributor !ho is do4iciled in the Philippines, unless said
representative or distributor has an independent status, i.e., it transacts business in its na4e and for its
account, and not in the na4e or for the account of a principal Thus, !here a forei3n fir4 is
represented b$ a person or local co4pan$ !hich does not act in its na4e but in the na4e of the
forei3n fir4 the latter is doin3 business in the Philippines.
999 999 999
*ppl$in3 the above provisions to the facts of this case, !e find and conclude that the petitioner is not doin3 business
in the Philippines. Rustan is actuall$ a 4iddle4an actin3 and transactin3 business in its o!n na4e and or its o!n
account and not in the na4e or for the account of the petitioner.
ut even assu4in3 the truth of the private respondent;s alle3ation that the petitioner failed to alle3e 4aterial facts in
its petition relative to capacit$ to sue, the petitioner 4a$ still 4aintain the present suit a3ainst respondent He4andas.
*s earl$ as &'%2, this )ourt !as, and it still is, of the vie! that a forei3n corporation not doin3 business in the
Philippines needs no license to sue before Philippine courts for infrin3e4ent of trade4ar" and unfair co4petition.
Thus, in :estern %;uipment and Supply Co. v. "eyes 5(& Phil. &&(6, this )ourt held that a forei3n corporation !hich
has never done an$ business in the Philippines and !hich is unlicensed and unre3istered to do business here, but is
!idel$ and favorabl$ "no!n in the Philippines throu3h the use therein of its products bearin3 its corporate and
tradena4e, has a le3al ri3ht to 4aintain an action in the Philippines to restrain the residents and inhabitants thereof
fro4 or3ani8in3 a corporation therein bearin3 the sa4e na4e as the forei3n corporation, !hen it appears that the$
have personal "no!led3e of the e9istence of such a forei3n corporation, and it is apparent that the purpose of the
proposed do4estic corporation is to deal and trade in the sa4e 3oods as those of the forei3n corporation.
Be further held=
999 999 999
... That co4pan$ is not here see"in3 to enforce an$ le3al or control ri3hts arisin3 fro4, or 3ro!in3
out of, an$ business !hich it has transacted in the Philippine Islands. The sole purpose of the action=
Is to protect its reputation, its corporate na4e, its 3ood!ill, !henever that reputation, corporate na4e
or 3ood!ill have, throu3h the natural develop4ent of its trade, established the4selves.; *nd it
contends that its ri3hts to the use of its corporate and trade na4e=
Is a propert$ ri3ht, a ri3ht in rem, !hich it 4a$ assert and protect a3ainst all the !orld, in an$ of the
courts of the !orld+even in Durisdictions !here it does not transact business+Dust the sa4e as it 4a$
protect its tan3ible propert$, real or personal, a3ainst trespass, or conversion. )itin3 sec. &., Ni4s on
Anfair )o4petition and TradeMar"s and cases citedF secs. %&+%%, Hop"ins on TradeMar"s, Trade
Na4es and Anfair )o4petition and cases cited.; That point is sustained b$ the authorities, and is !ell
stated in 7anover Star Mining Co. v. Allen and :heeler Co. 5%.7 #ed., (&-6. in !hich the s$llabus
sa$s=
Since it is the trade and not the 4ar" that is to be protected, a trade+4ar" ac"no!led3es no territorial
boundaries of 4unicipalities or states or nations, but e9tends to ever$ 4ar"et !here the trader;s 3oods
have beco4e "no!n and Identified b$ the use of the 4ar".
Our reco3ni8in3 the capacit$ of the petitioner to sue is not b$ an$ 4eans novel or precedent settin3. Our Durisprudence
is replete !ith cases illustratin3 instances !hen forei3n corporations not doin3 business in the Philippines 4a$
nonetheless sue in our courts. In %ast ,oard <avigation /td, v. =smael and Co., Inc. 5&.% Phil. &6, !e reco3ni8ed a
ri3ht of forei3n corporation to sue on isolated transactions. In >eneral >arments Corp. v. -irector of $atents 5:&
S)R* (.6, !e sustained the ri3ht of Puritan Sports!ear )orp., a forei3n corporation not licensed to do and not doin3
business in the Philippines, to file a petition for cancellation of a trade4ar" before the Patent Office.
More i4portant is the nature of the case !hich led to this petition. Bhat preceded this petition for certiorari !as a
letter co4plaint filed before the NI char3in3 He4andas !ith a cri4inal offense, i.e., violation of *rticle &7' of the
Revised Penal )ode. If prosecution follo!s after the co4pletion of the preli4inar$ investi3ation bein3 conducted b$
the Special Prosecutor the infor4ation shall be in the na4e of the People of the Philippines and no lon3er the
petitioner !hich is onl$ an a33rieved part$ since a cri4inal offense is essentiall$ an act a3ainst the State. It is the
latter !hich is principall$ the inDured part$ althou3h there is a private ri3ht violated. Petitioner;s capacit$ to sue !ould
beco4e, therefore, of not 4uch si3nificance in the 4ain case. Be cannot sno! a possible violator of our cri4inal
statutes to escape prosecution upon a far+fetched contention that the a33rieved part$ or victi4 of a cri4e has no
standin3 to sue.
In upholdin3 the ri3ht of the petitioner to 4aintain the present suit before our courts for unfair co4petition or
infrin3e4ent of trade4ar"s of a forei3n corporation, !e are 4oreover reco3ni8in3 our duties and the ri3hts of forei3n
states under the Paris )onvention for the Protection of Industrial Propert$ to !hich the Philippines and #rance are
parties. Be are si4pl$ interpretin3 and enforcin3 a sole4n international co44it4ent of the Philippines e4bodied in a
4ultilateral treat$ to !hich !e are a part$ and !hich !e entered into because it is in our national interest to do so.
The Paris )onvention provides in part that=
*RTI)?> &
5&6 The countries to !hich the present )onvention applies constitute the4selves into a Anion for the
protection of industrial propert$.
5%6 The protection of industrial propert$ is concerned !ith patents, utilit$ 4odels, industrial desi3ns,
trade4ar"s service 4ar"s, trade na4es, and indications of source or appellations of ori3in, and the
repression of unfair co4petition.
999 999 999
*RTI)?> %
5%6 Nationals of each of the countries of the Anion shall as re3ards the protection of industrial
propert$, enDo$ in all the other countries of the Anion the advanta3es that their respective la!s no!
3rant, or 4a$ hereafter 3rant, to nationals, !ithout preDudice to the ri3hts speciall$ provided b$ the
present )onvention. )onseEuentl$, the$ shall have the sa4e protection as the latter, and the sa4e
le3al re4ed$ a3ainst an$ infrin3e4ent of their ri3hts, provided the$ observe the conditions and
for4alities i4posed upon nationals.
999 999 999
*RTI)?> <
5&6 The countries of the Anion underta"e, either ad4inistrativel$ if their le3islation so per4its, or at
the reEuest of an interested part$, to refuse or to cancel the re3istration and to prohibit the use of a
trade4ar" !hich constitutes a reproduction, i4itation or translation, liable to create confusion, of a
4ar" considered b$ the co4petent authorit$ of the countr$ of re3istration or use to be !ell+"no!n in
that countr$ as bein3 alread$ the 4ar" of a person entitled to the benefits of the present )onvention
and used for Identical or si4ilar 3oods. These provisions shall also appl$ !hen the essential part of
the 4ar" constitutes a reproduction of an$ such !ell+"no!n 4ar" or an i4itation liable to create
confusion there!ith.
999 999 999
*RTI)?> 7
* trade na4e shall be protected in all the countries of the Anion !ithout the obli3ation of filin3 or
re3istration, !hether or not it for4s part of a trade4ar".
999 999 999
*RTI)?> &.bis
5&6 The countries of the Anion are bound to assure to persons entitled to the benefits of the Anion
effective protection a3ainst unfair co4petition.
999 999 999
*RTI)?> &.ter
5&6 The countries of the Anion underta"e to assure to nationals of the other countries of the Anion
appropriate le3al re4edies to repress effectivel$ all the acts referred to in *rticles ', &. and l.bis.
5%6 The$ underta"e, further, to provide 4easures to per4it s$ndicates and associations !hich
represent the industrialists, producers or traders concerned and the e9istence of !hich is not contrar$
to the la!s of their countries, to ta"e action in the )ourts or before the ad4inistrative authorities,
!ith a vie! to the repression of the acts referred to in *rticles ', &. and &.bis, in so far as the la! of
the countr$ in !hich protection is clai4ed allo!s such action b$ the s$ndicates and associations of
that countr$.
999 999 999
*RTI)?> &2
>ver$ countr$ part$ to this )onvention underta"es to adopt, in accordance !ith its constitution, the
4easures necessar$ to ensure the application of this )onvention.
It is understood that at the ti4e an instru4ent of ratification or accession is deposited on behalf of a
countr$F such countr$ !ill be in a position under its do4estic la! to 3ive effect to the provisions of
this )onvention. 5<& O.,. 7.&.6
999 999 999
In )anity Fair Mills, Inc. v. ! %aton Co. 5%-: #. %d <--6 the Anited States )ircuit )ourt of *ppeals had occasion to
co44ent on the e9traterritorial application of the Paris )onvention It said that=
N&&O The International )onvention is essentiall$ a co4pact bet!een the various 4e4ber countries to
accord in their o!n countries to citi8ens of the other contractin3 parties trade4ar" and other ri3hts
co4parable to those accorded their o!n citi8ens b$ their do4estic la!. The underl$in3 principle is
that forei3n nationals should be 3iven the sa4e treat4ent in each of the 4e4ber countries as that
countr$ 4a"es available to its o!n citi8ens. In addition, the )onvention sou3ht to create unifor4it$
in certain respects b$ obli3atin3 each 4e4ber nation ;to assure to nationals of countries of the Anion
an effective protection a3ainst unfair co4petition.;
N&%O The )onvention is not pre4ised upon the Idea that the trade+4ar" and related la!s of each
4e4ber nation shall be 3iven e9tra+territorial application, but on e9actl$ the converse principle that
each nation;s la! shall have onl$ territorial application. Thus a forei3n national of a 4e4ber nation
usin3 his trade4ar" in co44erce in the Anited States is accorded e9tensive protection here a3ainst
infrin3e4ent and other t$pes of unfair co4petition b$ virtue of Anited States 4e4bership in the
)onvention. ut that protection has its source in, and is subDect to the li4itations of, *4erican la!,
not the la! of the forei3n national;s o!n countr$. ...
$ the sa4e to"en, the petitioner should be 3iven the sa4e treat4ent in the Philippines as !e 4a"e available to our
o!n citi8ens. Be are obli3ated to assure to nationals of /countries of the Anion/ an effective protection a3ainst unfair
co4petition in the sa4e !a$ that the$ are obli3ated to si4ilarl$ protect #ilipino citi8ens and fir4s.
Pursuant to this obli3ation, the Ministr$ of Trade on Nove4ber %., &'7. issued a 4e4orandu4 addressed to the
Director of the Patents Office directin3 the latter=
999 999 999
... to reDect all pendin3 applications for Philippine re3istration of si3nature and other !orld fa4ous
trade4ar"s b$ applicants other than its ori3inal o!ners or users.
The conflictin3 clai4s over internationall$ "no!n trade4ar"s involve such na4e brands as ?acoste,
1ordache, ,loria Vanderbilt, Sasson, #ila, Pierre )ardin, ,ucci, )hristian Dior, Oscar de la Renta,
)alvin 0lein, ,ivench$, Ralph ?auren, ,eoffre$ eene, ?anvin and Ted ?apidus.
It is further directed that, in cases !here !arranted, Philippine re3istrants of such trade4ar"s should
be as"ed to surrender their certificates of re3istration, if an$, to avoid suits for da4a3es and other
le3al action b$ the trade4ar"s; forei3n or local o!ners or ori3inal users.
The 4e4orandu4 is a clear 4anifestation of our avo!ed adherence to a polic$ of cooperation and a4it$ !ith all
nations. It is not, as !ron3l$ alle3ed b$ the private respondent, a personal polic$ of Minister ?uis Villafuerte !hich
e9pires once he leaves the Ministr$ of Trade. #or a treat$ or convention is not a 4ere 4oral obli3ation to be enforced
or not at the !hi4s of an incu4bent head of a Ministr$. It creates a le3all$ bindin3 obli3ation on the parties founded
on the 3enerall$ accepted principle of international la! of pacta sunt servanda !hich has been adopted as part of the
la! of our land. 5)onstitution, *rt. II, Sec. -6. The 4e4orandu4 re4inds the Director of Patents of his le3al dut$ to
obe$ both la! and treat$. It 4ust also be obe$ed.
He4andas further contends that the respondent court did not co44it 3rave abuse of discretion in issuin3 the
Euestioned order of *pril %%, &'7-.
* revie! of the 3rounds invo"ed b$ He4andas in his 4otion to Euash the search !arrants reveals the fact that the$ are
not appropriate for Euashin3 a !arrant. The$ are 4atters of defense !hich should be ventilated durin3 the trial on the
4erits of the case. #or instance, on the basis of the facts before the 1ud3e, !e fail to understand ho! he could treat a
bare alle3ation that the respondent;s trade4ar" is different fro4 the petitioner;s trade4ar" as a sufficient basis to 3rant
the 4otion to Euash. Be !ill treat the issue of preDudicial Euestion later. ,rantin3 that respondent He4andas !as onl$
tr$in3 to sho! the absence of probable cause, !e, nonetheless, hold the ar3u4ents to be untenable.
*s a 4andator$ reEuire4ent for the issuance of a valid search !arrant, the )onstitution reEuires in no uncertain ter4s
the deter4ination of probable cause b$ the Dud3e after e9a4ination under oath or affir4ation of the co4plainant and
the !itnesses he 4a$ produce 5)onstitution, *rt. IV, Sec. -6. Probable cause has traditionall$ 4eant such facts and
circu4stances antecedent to the issuance of the !arrant that are in the4selves sufficient to induce a cautious 4an to
rel$ upon the4 and act in pursuance thereof 5People v. S$ 1uco, <: Phil. <<26.
This concept of probable cause !as a4plified and 4odified b$ our rulin3 in Stonehill v. -io?no, 5%. S)R* -7-6 that
probable cause /presupposes the introduction of co4petent proof that the part$ a3ainst !ho4 it is sou3ht has
perfor4ed particular acts, or co44itted specific o4issions, violatin3 a 3iven provision of our cri4inal la!s./
The Euestion of !hether or not probable cause e9ists is one !hich 4ust be decided in the li3ht of the conditions
obtainin3 in 3iven situations 5)entral an" v. Morfe, %. S)R* (.26. Be a3ree that there is no 3eneral for4ula or
fi9ed rule for the deter4ination of the e9istence of probable cause since, as !e have reco3ni8ed in /una v. $la5a5%<
S)R* -&.6, the e9istence depends to a lar3e de3ree upon the findin3 or opinion of the Dud3e conductin3 the
e9a4ination. Ho!ever, the findin3s of the Dud3e should not disre3ard the facts before hi4 nor run counter to the clear
dictates of reason. More so it is plain that our countr$;s abilit$ to abide b$ international co44it4ents is at sta"e.
The records sho! that the NI a3ents at the hearin3 of the application for the !arrants before respondent court
presented three !itnesses under oath, s!orn state4ents, and various e9hibits in the for4 of clothin3 apparels
4anufactured b$ He4andas but carr$in3 the trade4ar" ?acoste. The respondent court personall$ interro3ated Ra4on
>s3uerra, Sa4uel #iDi, and Ma4erto >spatero b$ 4eans of searchin3 Euestions. *fter hearin3 the testi4onies and
e9a4inin3 the docu4entar$ evidence, the respondent court !as convinced that there !ere 3ood and sufficient reasons
for the issuance of the !arrant. *nd it then issued the !arrant.
The respondent court, therefore, co4plied !ith the constitutional and statutor$ reEuire4ents for the issuance of a valid
search !arrant. *t that point in ti4e, it !as full$ convinced that there e9isted probable cause. ut after hearin3 the
4otion to Euash and the oppositions thereto, the respondent court e9ecuted a co4plete turnabout and declared that
there !as no probable cause to Dustif$ its earlier issuance of the !arrants.
True, the lo!er court should be 3iven the opportunit$ to correct its errors, if there be an$, but the rectification 4ust, as
earlier stated be based on sound and valid 3rounds. In this case, there !as no co4pellin3 Dustification for the about
face. The alle3ation that vital facts !ere deliberatel$ suppressed or concealed b$ the petitioner should have been
assessed 4ore carefull$ because the obDect of the Euashal !as the return of ite4s alread$ sei8ed and easil$ e9a4ined
b$ the court. The ite4s !ere alle3ed to be fa"e and Euite obviousl$ !ould be needed as evidence in the cri4inal
prosecution. Moreover, an application for a search !arrant is heard ex parte.It is neither a trial nor a part of the trial.
*ction on these applications 4ust be e9pedited for ti4e is of the essence. ,reat reliance has to be accorded b$ the
Dud3e to the testi4onies under oath of the co4plainant and the !itnesses. The alle3ation of He4andas that the
applicant !ithheld infor4ation fro4 the respondent court !as clearl$ no basis to order the return of the sei8ed ite4s.
He4andas relied heavil$ belo! and before us on the ar3u4ent that it is the holder of a certificate of re3istration of the
trade4ar" /)H>MIS> ?*)OST> P )RO)ODI?> D>VI)>/. Si3nificantl$, such re3istration is onl$ in the
Supple4ental Re3ister.
* certificate of re3istration in the Supple4ental Re3ister is not prima facie evidence of the validit$ of re3istration, of
the re3istrant;s e9clusive ri3ht to use the sa4e in connection !ith the 3oods, business, or services specified in the
certificate. Such a certificate of re3istration cannot be filed, !ith effect, !ith the ureau of )usto4s in order to
e9clude fro4 the Philippines, forei3n 3oods bearin3 infrin3e4ent 4ar"s or trade na4es 5Rule &%:, Revised Rules of
Practice efore the Phil. Pat. Off. in Trade4ar" )asesF Martin, Philippine )o44ercial ?a!s, &'7&, Vol. %, pp. (&-+
(&(6.
Section &'+* of Republic *ct &<< as a4ended not onl$ provides for the "eepin3 of the supple4ental re3ister in
addition to the principal re3ister but specificall$ directs that=
999 999 999
The certificates of re3istration for 4ar"s and trade na4es re3istered on the supple4ental re3ister
shall be conspicuousl$ different fro4 certificates issued for 4ar"s and trade na4es on the principal
re3ister.
999 999 999
The reason is e9plained b$ a leadin3 co44entator on Philippine )o44ercial ?a!s=
The re3istration of a 4ar" upon the supple4ental re3ister is not, as in the case of the principal
re3ister, pri4a facie evidence of 5&6 the validit$ of re3istrationF 5%6 re3istrant;s o!nership of the
4ar"F and 5-6 re3istrant;s e9clusive ri3ht to use the 4ar". It is not subDect to opposition, althou3h it
4a$ be cancelled after its issuance. Neither 4a$ it be the subDect of interference proceedin3s.
Re3istration on the supple4ental re3ister is not constructive notice of re3istrant;s clai4 of o!nership.
* supple4ental re3ister is provided for the re3istration of 4ar"s !hich are not re3istrable on the
principal re3ister because of so4e defects 5conversel$, defects !hich 4a"e a 4ar" unre3istrable on
the principal re3ister, $et do not bar the4 fro4 the supple4ental re3ister.6 5*3ba$ani, II )o44ercial
?a!s of the Philippines, &'27, p. (&:, citin3 A$ Hon3 Mo v. Tita$ P )o., et al., Dec. No. %(: of
Director of Patents, *pr. -., &'<-6F
Re3istration in the Supple4ental Re3ister, therefore, serves as notice that the re3istrant is usin3 or has appropriated
the trade4ar". $ the ver$ fact that the trade4ar" cannot as $et be entered in the Principal Re3ister, all !ho deal !ith
it should be on 3uard that there are certain defects, so4e obstacles !hich the user 4ust Still overco4e before he can
clai4 le3al o!nership of the 4ar" or as" the courts to vindicate his clai4s of an e9clusive ri3ht to the use of the sa4e.
It !ould be deceptive for a part$ !ith nothin3 4ore than a re3istration in the Supple4ental Re3ister to posture before
courts of Dustice as if the re3istration is in the Principal Re3ister.
The reliance of the private respondent on the last sentence of the Patent office action on application Serial No. -.'(:
that /re3istrant is presu4ed to be the o!ner of the 4ar" until after the re3istration is declared cancelled/ is, therefore,
4isplaced and 3rounded on sha"$ foundation, The supposed presu4ption not onl$ runs counter to the precept
e4bodied in Rule &%: of the Revised Rules of Practice before the Philippine Patent Office in Trade4ar" )ases but
considerin3 all the facts ventilated before us in the four interrelated petitions involvin3 the petitioner and the
respondent, it is devoid of factual basis. *nd even in cases !here presu4ption and precept 4a$ factuall$ be
reconciled, !e have held that the presu4ption is rebuttable, not conclusive, 5People v. ?i4 Hoa, ,.R. No. ?&.<&%,
Ma$ -., &'(7, Anreported6. One 4a$ be declared an unfair co4petitor even if his co4petin3 trade4ar" is re3istered
5Par"e, Davis P )o. v. 0iu #oo P )o., et al., <. Phil. '%7F ?a Cebana )o. v. )hua Seco P )o., &: Phil. (-:6.
$ the sa4e to"en, the ar3u4ent that the application !as pre4ature in vie! of the pendin3 case before the Patent
Office is li"e!ise !ithout le3al basis.
The proceedin3s pendin3 before the Patent Office involvin3 IP) )o. &<(7 do not parta"e of the nature of a preDudicial
Euestion !hich 4ust first be definitel$ resolved.
Section ( of Rule &&& of the Rules of )ourt provides that=
* petition for the suspension of the cri4inal action based upon the pendenc$ of a pre+Dudicial
Euestion in a civil case, 4a$ onl$ be presented b$ an$ part$ before or durin3 the trial of the cri4inal
action.
The case !hich suspends the cri4inal prosecution 4ust be a civil case !hich is deter4inative of the innocence or,
subDect to the availabilit$ of other defenses, the 3uilt of the accused. The pendin3 case before the Patent Office is an
ad4inistrative proceedin3 and not a civil case. The decision of the Patent Office cannot be finall$ deter4inative of the
private respondent;s innocence of the char3es a3ainst hi4.
In Flordelis v. Castillo 5(7 S)R* -.&6, !e held that=
*s clearl$ delineated in the aforecited provisions of the ne! )ivil )ode and the Rules of )ourt, and
as unifor4l$ applied in nu4erous decisions of this )ourt, 5erbari v. )oncepcion, :. Phil. 7-2
5&'%.6F *leria v. Mendo8a, 7- Phil. :%2 5&':'6F People v. *ra3on, ': Phil. -(2 5&'(:6F rito+S$ v.
Malate Ta9icab P ,ara3e, Inc., &.% Phil :7% 5&'(26F Mendiola v. Macadael, & S)R* ('-F enite8 v.
)oncepcion, % S)R* &27F Rapante v. Montesa, : S)R* (&.F 1i4ene8 v. *veria, %% S)R* &-7..6 In
uenaventura v. Oca4po 5(( S)R* %2&6 the doctrine of preDudicial Euestion !as held inapplicable
because no cri4inal case but 4erel$ an ad4inistrative case and a civil suit !ere involved. The )ourt,
ho!ever, held that, in vie! of the peculiar circu4stances of that case, the respondents; suit for
da4a3es in the lo!er court !as pre4ature as it !as filed durin3 the pendenc$ of an ad4inistrative
case a3ainst the respondents before the PO?)OM. ;The possibilit$ cannot be overloo"ed,; said the
)ourt, ;that the PO?)OM 4a$ hand do!n a decision adverse to the respondents, in !hich case the
da4a3e suit !ill beco4e unfounded and baseless for !antin3 in cause of action.;6 the doctrine of pre+
Dudicial Euestion co4es into pla$ 3enerall$ in a situation !here a civil action and a cri4inal action
both penned and there e9ists in the for4er an issue !hich 4ust be pree4ptivel$ resolved before the
cri4inal action 4a$ proceed, because ho!soever the issue raised in the civil action is resolved !ould
be deter4inative @uris et de @ure of the 3uilt or innocence of the accused in the cri4inal case.
In the present case, no civil action pends nor has an$ been instituted. Bhat !as pendin3 !as an ad4inistrative case
before the Patent Office.
>ven assu4in3 that there could be an ad4inistrative proceedin3 !ith e9ceptional or special circu4stances !hich
render a cri4inal prosecution pre4ature pendin3 the pro4ul3ation of the ad4inistrative decision, no such peculiar
circu4stances are present in this case.
Moreover, !e ta"e note of the action ta"en b$ the Patents Office and the Minister of Trade and affir4ed b$ the
Inter4ediate *ppellate )ourt in the case of /a Chemise /acoste S. A. v. "am Sadhani 5*)+,.R. No. SP+&--(<, 1une
&2, &'7-6.
The sa4e Nove4ber %., &'7. 4e4orandu4 of the Minister of Trade discussed in this decision !as involved in the
appellate court;s decision. The Minister as the /i4ple4entin3 authorit$/ under *rticle <bis of the Paris )onvention for
the protection of Industrial Propert$ instructed the Director of Patents to reDect applications for Philippine re3istration
of si3nature and other !orld fa4ous trade4ar"s b$ applicants other than its ori3inal o!ners or users. The brand
/?acoste/ !as specificall$ cited to3ether !ith 1ordache, ,loria Vanderbilt, Sasson, #ila, Pierre )ardin, ,ucci,
)hristian Dior, Oscar dela Renta, )alvin 0lein, ,ivench$, Ralph ?aurence, ,eoffre$ eene, ?anvin, and Ted ?apidus.
The Director of Patents !as li"e!ise ordered to reEuire Philippine re3istrants of such trade4ar"s to surrender their
certificates of re3istration. )o4pliance b$ the Director of Patents !as challen3ed.
The Inter4ediate *ppellate )ourt, in the ?a )he4ise /acoste S.A. v. Sadhani decision !hich !e cite !ith approval
sustained the po!er of the Minister of Trade to issue the i4ple4entin3 4e4orandu4 and, after 3oin3 over the
evidence in the records, affirmed the decision of the -irector of $atents declaring /a Chemise /acoste 0A. the oner
of the disputed trade4ar" and crocodile or alligator device. The Inter4ediate *ppellate )ourt spea"in3 throu3h Mr.
1ustice Vicente V. Mendo8a stated=
In the case at bar, the Minister of Trade, as ;the co4petent authorit$ of the countr$ of re3istration,; has
found that a4on3 other !ell+"no!n trade4ar"s ;?acoste; is the subDect of conflictin3 clai4s. #or this
reason, applications for its re3istration 4ust be reDected or refused, pursuant to the treat$ obli3ation
of the Philippines.
*part fro4 this findin3, the anne9es to the opposition, !hich ?a )he4ise ?acoste S.*. filed in the
Patent Office, sho! that it is the o!ner of the trade4ar" ;?acoste; and the device consistin3 of a
representation of a crocodile or alli3ator b$ the prior adoption and use of such 4ar" and device on
clothin3, sports apparel and the li"e. ?a )he4ise ?acoste S.*, obtained re3istration of these 4ar"
and device and !as in fact issued rene!al certificates b$ the #rench National Industr$ Propert$
Office.
999 999 999
Indeed, due process is a rule of reason. In the case at bar the order of the Patent Office is based not
onl$ on the undisputed fact of o!nership of the trade4ar" b$ the appellee but on a prior
deter4ination b$ the Minister of Trade, as the co4petent authorit$ under the Paris )onvention, that
the trade4ar" and device sou3ht to be re3istered b$ the appellant are !ell+"no!n 4ar"s !hich the
Philippines, as part$ to the )onvention, is bound to protect in favor of its o!ners. it !ould be to e9alt
for4 over substance to sa$ that under the circu4stances, due process reEuires that a hearin3 should
be held before the application is acted upon.
The appellant cites section ' of Republic *ct No. &<<, !hich reEuires notice and hearin3 !henever
an opposition to the re3istration of a trade4ar" is 4ade. This provision does not appl$, ho!ever, to
situations covered b$ the Paris )onvention, !here the appropriate authorities have deter4ined that a
!ell+"no!n trade4ar" is alread$ that of another person. In such cases, the countries si3natories to the
)onvention are obli3ed to refuse or to cancel the re3istration of the 4ar" b$ an$ other person or
authorit$. In this case, it is not disputed that the trade4ar" ?acoste is such a !ell+"no!n 4ar" that a
hearin3, such as that provided in Republic *ct No. &<<, !ould be superfluous.
The issue of due process !as raised and full$ discussed in the appellate court;s decision. The court ruled that due
process !as not violated.
In the li3ht of the fore3oin3 it is Euite plain that the preDudicial Euestion ar3u4ent is !ithout 4erit.
Be have carefull$ 3one over the records of all the cases filed in this )ourt and find 4ore than enou3h evidence to
sustain a findin3 that the petitioner is the o!ner of the trade4ar"s /?*)OST>/, /)H>MIS> ?*)OST>/, the
crocodile or alli3ator device, and the co4posite 4ar" of ?*)OST> and the representation of the crocodile or
alli3ator. *n$ pretensions of the private respondent that he is the o!ner are absolutel$ !ithout basis. *n$ further
ventilation of the issue of o!nership before the Patent Office !ill be a superfluit$ and a dilator$ tactic.
The issue of !hether or not the trade4ar" used b$ the private respondent is different fro4 the petitioner;s trade 4ar"
is a 4atter of defense and !ill be better resolved in the cri4inal proceedin3s before a court of Dustice instead of raisin3
it as a preli4inar$ 4atter in an ad4inistrative proceedin3.
The purpose of the la! protectin3 a trade4ar" cannot be overe4phasi8ed. The$ are to point out distinctl$ the ori3in or
o!nership of the article to !hich it is affi9ed, to secure to hi4, !ho has been instru4ental in brin3in3 into 4ar"et a
superior article of 4erchandise, the fruit of his industr$ and s"ill, and to prevent fraud and i4position 5>tepha v.
Director of Patents, &< S)R* :'(6.
The le3islature has enacted la!s to re3ulate the use of trade4ar"s and provide for the protection thereof. Modern trade
and co44erce de4ands that depredations on le3iti4ate trade 4ar"s of non+nationals includin3 those !ho have not
sho!n prior re3istration thereof should not be countenanced. The la! a3ainst such depredations is not onl$ for the
protection of the o!ner of the trade4ar" but also, and 4ore i4portantl$, for the protection of purchasers fro4
confusion, 4ista"e, or deception as to the 3oods the$ are bu$in3. 5*sari Co"o )o., ?td. v. 0ee oc, & S)R* &F
,eneral ,ar4ents )orporation v. Director of Patents, :& S)R* (.6.
The la! on trade4ar"s and tradena4es is based on the principle of business inte3rit$ and co44on Dustice; This la!,
both in letter and spirit, is laid upon the pre4ise that, !hile it encoura3es fair trade in ever$ !a$ and ai4s to foster,
and not to ha4per, co4petition, no one, especiall$ a trader, is Dustified in da4a3in3 or Deopardi8in3 another;s business
b$ fraud, deceipt, tric"er$ or unfair 4ethods of an$ sort. This necessaril$ precludes the tradin3 b$ one dealer upon the
3ood na4e and reputation built up b$ another 5alti4ore v. Moses, &7% Md %%', -: * 5%d6 --76.
The records sho! that the 3ood!ill and reputation of the petitioner;s products bearin3 the trade4ar" ?*)OST> date
bac" even before &'<: !hen ?*)OST> clothin3 apparels !ere first 4ar"eted in the Philippines. To allo! He4andas
to continue usin3 the trade4ar" ?acoste for the si4ple reason that he !as the first re3istrant in the Supple4ental
Re3ister of a trade4ar" used in international co44erce and not belon3in3 to hi4 is to render nu3ator$ the ver$
essence of the la! on trade4ar"s and tradena4es.
Be no! proceed to the consideration of the petition in >obindram 7emandas Suianani u. 7on. "oberto V On3pin, et
al. 5,.R. No. <(<('6.
*ctuall$, three other petitions involvin3 the sa4e trade4ar" and device have been filed !ith this )ourt.
In 7emandas 0 Co. v. Intermediate Appellate Court, et al. 5,.R. No. <-(.:6 the petitioner as"ed for the follo!in3
relief=
IN VI>B O# *?? TH> #OR>,OIN,, it is respectfull$ pra$ed 5a6 that the Resolutions of the
respondent )ourt of 1anuar$ -, &'7- and #ebruar$ %:, &'7- be nullifiedF and that the Decision of the
sa4e respondent )ourt of 1une -., &'7- be declared to be the la! on the 4atterF 5b6 that the Director
of Patents be directed to issue the correspondin3 re3istration certificate in the Principal Re3isterF and
5c6 3rantin3 upon the petitioner such other le3al and eEuitable re4edies as are Dustified b$ the
pre4ises.
On Dece4ber (, &'7-, !e issued the follo!in3 resolution=
)onsiderin3 the alle3ations contained, issues raised and the ar3u4ents adduced in the petition for
revie!, the respondent;s co44ent thereon, and petitioner;s repl$ to said co44ent, the )ourt
Resolved to D>NC the petition for lac" of 4erit.
The )ourt further Resolved to )*?? the attention of the Philippine Patent Office to the pendenc$ in
this )ourt of ,.R. No. (<-2'<+'2 entitled ;?a )he4ise ?acoste, S.*. v. Hon. Oscar ). #ernande8 and
,obindra4 He4andas; !hich !as 3iven due course on 1une &:, &'7- and to the fact that ,.R. No.
<-'%7+%' entitled ;,obindra4 He4andas v. ?a )he4ise ?acoste, S.*., et al.; filed on Ma$ ', &'7-
!as dis4issed for lac" of 4erit on Septe4ber &%, &'7-. oth petitions involve the sa4e dispute over
the use of the trade4ar" ;)he4ise ?acoste;.
The second case of >obindram 7emandas vs. /a Chemise /acoste, S.A., et al. 5,.R. No. <-'%7+%'6 pra$ed for the
follo!in3=
I. On the petition for issuance of !rit of preli4inar$ inDunction, an order be issued after due hearin3=
l. >nDoinin3 and restrainin3 respondents )o4pan$, attorne$s+in+fact, and >stanislao ,ranados fro4
further proceedin3s in the unfair co4petition char3es pendin3 !ith the Ministr$ of 1ustice filed
a3ainst petitionerF
%. >nDoinin3 and restrainin3 respondents )o4pan$ and its attorne$s+in+fact fro4 causin3 undue
publication in ne!spapers of 3eneral circulation on their un!arranted clai4 that petitioner;s products
are #*0> pendin3 proceedin3s hereofF and
-. >nDoinin3 and restrainin3 respondents )o4pan$ and its attorne$s+in+fact fro4 sendin3 further
threatenin3 letters to petitioner;s custo4ers unDustl$ statin3 that petitioner;s products the$ are dealin3
in are #*0> and threatenin3 the4 !ith confiscation and sei8ure thereof.
II. On the 4ain petition, Dud34ent be rendered=
l. *!ardin3 and 3rantin3 the issuance of the Brit of Prohibition, prohibitin3, stoppin3, and
restrainin3 respondents fro4 further co44ittin3 the acts co4plained ofF
%. *!ardin3 and 3rantin3 the issuance of the Brit of Manda4us, orderin3 and co4pellin3
respondents National ureau of Investi3ation, its aforena4ed a3ents, and State Prosecutor >stanislao
,ranados to i44ediatel$ co4pl$ !ith the Order of the Re3ional Trial )ourt, National )apital
1udicial Re3ion, ranch @?I@, Manila, dated *pril %%, &'7-, !hich directs the i44ediate return of
the sei8ed ite4s under Search Barrants Nos. 7-+&%7 and 7-+&%'F
-. Ma"in3 per4anent an$ !rit of inDunction that 4a$ have been previousl$ issued b$ this Honorable
)ourt in the petition at bar= and
:. *!ardin3 such other and further relief as 4a$ be Dust and eEuitable in the pre4ises.
*s earlier stated, this petition !as dis4issed for lac" of 4erit on Septe4ber &%, &'7-. *ctin3 on a 4otion for
reconsideration, the )ourt on Nove4ber %-, &'7- resolved to den$ the 4otion for lac" of 4erit and declared the
denial to be final.
He4andas v. 7on. "oberto 8ngpin 5,.R. No. <(<('6 is the third petition.
In this last petition, the petitioner pra$s for the settin3 aside as null and void and for the prohibitin3 of the enforce4ent
of the follo!in3 4e4orandu4 of respondent Minister Roberto On3pin=
M>MOR*NDAM=
#OR= TH> DIR>)TOR O# P*T>NTS
Philippine Patent Office
999 999 999
Pursuant to >9ecutive Order No. '&- dated 2 October &'7- !hich stren3thens the rule+4a"in3 and adDudicator$
po!ers of the Minister of Trade and Industr$ and provides inter alia, that ;such rule+4a"in3 and adDudicator$ po!ers
should be revitali8ed in order that the Minister of Trade and Industr$ can ...appl$ 4ore s!ift and effective solutions
and re4edies to old and ne! proble4s ... such as the infrin3e4ent of internationall$+"no!n tradena4es and
trade4ar"s ...;and in vie! of the decision of the Inter4ediate *ppellate )ourt in the case of /A C7%MIS% /AC8S!%,
S.A., versus "AM SA-:7A<I N*)+,.R. Sp. No. &--(' 5&26 1une &'7-O !hich affir4s the validit$ of the
M>MOR*NDAM of then Minister ?uis R. Villafuerte dated %. Nove4ber &'7. confir4in3 our obli3ations under the
P*RIS )ONV>NTION #OR TH> PROT>)TION O# INDASTRI*? PROP>RTC to !hich the Republic of the
Philippines is a si3nator$, $ou are hereb$ directed to i4ple4ent 4easures necessar$ to effect co4pliance !ith our
obli3ations under said convention in 3eneral, and, 4ore specificall$, to honor our co44it4ent under Section 1
bis thereof, as follo!s=
&. Bhether the trade4ar" under consideration is !ell+"no!n in the Philippines or is a 4ar" alread$
belon3in3 to a person entitled to the benefits of the )ONV>NTION, this should be established,
pursuant to Philippine Patent Office procedures in inter partes and e9 parte cases, accordin3 to an$ of
the follo!in3 criteria or an$ co4bination thereof=
5a6 a declaration b$ the Minister of Trade and Industr$ that; the trade4ar" bein3 considered is alread$
!ell+"no!n in the Philippines such that per4ission for its use b$ other than its ori3inal o!ner !ill
constitute a reproduction, i4itation, translation or other infrin3e4entF
5b6 that the trade4ar" is used in co44erce internationall$, supported b$ proof that 3oods bearin3 the
trade4ar" are sold on an international scale, advertise4ents, the establish4ent of factories, sales
offices, distributorships, and the li"e, in different countries, includin3 volu4e or other 4easure of
international trade and co44erceF
5c6 that the trade4ar" is dul$ re3istered in the industrial propert$ office5s6 of another countr$ or
countries, ta"in3 into consideration the dates of such re3istrationF
5d6 that the trade4ar" has been lon3 established and obtained 3ood!ill and 3eneral international
consu4er reco3nition as belon3in3 to one o!ner or sourceF
5e6 that the trade4ar" actuall$ belon3s to a part$ clai4in3 o!nership and has the ri3ht to re3istration
under the provisions of the aforestated P*RIS )ONV>NTION.
%. The !ord trade4ar", as used in this M>MOR*NDAM, shall include tradena4es, service 4ar"s,
lo3os, si3ns, e4ble4s, insi3nia or other si4ilar devices used for Identification and reco3nition b$
consu4ers.
-. The Philippine Patent Office shall refuse all applications for, or cancel the re3istration of,
trade4ar"s !hich constitute a reproduction, translation or i4itation of a trade4ar" o!ned b$ a
person, natural or corporate, !ho is a citi8en of a countr$ si3nator$ to the P*RIS )ONV>NTION
#OR TH> PROT>)TION O# INDASTRI*? PROP>RTC.
:. The Philippine Patent Office shall 3ive due course to the Opposition in cases alread$ or hereafter
filed a3ainst the re3istration of trade4ar"s entitled to protection of Section 1 bis of said P*RIS
)ONV>NTION as outlined above, b$ re4andin3 applications filed b$ one not entitled to such
protection for final disallo!ance b$ the >9a4ination Division.
(. *ll pendin3 applications for Philippine re3istration of si3nature and other !orld fa4ous
trade4ar"s filed b$ applicants other than their ori3inal o!ners or users shall be reDected forth!ith.
Bhere such applicants have alread$ obtained re3istration contrar$ to the above4entioned P*RIS
)ONV>NTION andJor Philippine ?a!, the$ shall be directed to surrender their )ertificates of
Re3istration to the Philippine Patent Office for i44ediate cancellation proceedin3s.
<. )onsistent !ith the fore3oin3, $ou are hereb$ directed to e9pedite the hearin3 and to decide
!ithout dela$ the follo!in3 cases pendin3 before $our Office=
&. INT>R P*RT>S )*S> NO. &<7'+Petition filed b$ ?a )he4ise ?acoste, S.*. for the cancellation
of )ertificate of Re3istration No. SR+%%%( issued to ,obindra4 He4andas, assi3nee of He4andas
and )o4pan$F
%. INT>R P*RT>S )*S> NO. &<(7+Opposition filed b$ ,a4es and ,ar4ents )o. a3ainst the
re3istration of the trade4ar" ?acoste sou3ht b$ ?a )he4ise ?acoste, S.*.F
-. INT>R P*RT>S )*S> NO. &27<+Opposition filed b$ ?a )he4ise ?acoste, S.*. a3ainst the
re3istration of trade4ar" )rocodile Device and S"iva sou3ht b$ one Bilson )hua.
)onsiderin3 our discussions in ,.R. Nos. <-2'<+'2, !e find the petition in ,.R. No. <(<(' to be patentl$ !ithout
4erit and accordin3l$ den$ it due course.
In co4pl$in3 !ith the order to decide !ithout dela$ the cases specified in the 4e4orandu4, the Director of Patents
shall li4it hi4self to the ascertain4ent of facts in issues not resolved b$ this decision and appl$ the la! as e9pounded
b$ this )ourt to those facts.
One final point. It is essential that !e stress our concern at the see4in3 inabilit$ of la! enforce4ent officials to ste4
the tide of fa"e and counterfeit consu4er ite4s floodin3 the Philippine 4ar"et or e9ported abroad fro4 our countr$.
The 3reater victi4 is not so 4uch the 4anufacturer !hose product is bein3 fa"ed but the #ilipino consu4in3 public
and in the case of e9portations, our i4a3e abroad. No less than the President, in issuin3 >9ecutive Order No. '&-
dated October 2, &'7- to stren3then the po!ers of the Minister of Trade and Industr$ for the protection of consu4ers,
stated that, a4on3 other acts, the du4pin3 of substandard, i4itated, ha8ardous, and cheap 3oods, the infrin3e4ent of
internationall$ "no!n tradena4es and trade4ar"s, and the unfair trade practices of business fir4s has reached such
proportions as to constitute econo4ic sabota3e. Be bu$ a "itchen appliance, a household tool, perfu4e, face po!der,
other toilet articles, !atches, brand$ or !his"$, and ite4s of clothin3 li"e Deans, T+shirts, nec", ties, etc. I the list is
Euite len3th I and pa$ 3ood 4one$ rel$in3 on the brand na4e as 3uarantee of its Eualit$ and 3enuine nature onl$ to
e9plode in bitter frustration and 3enuine nature on helpless an3er because the purchased ite4 turns out to be a shodd$
i4itation, albeit a clever loo"in3 counterfeit, of the Eualit$ product. 1ud3es all over the countr$ are !ell advised to
re4e4ber that court processes should not be used as instru4ents to, un!ittin3l$ or other!ise, aid counterfeiters and
intellectual pirates, tie the hands of the la! as it see"s to protect the #ilipino consu4in3 public and frustrate e9ecutive
and ad4inistrative i4ple4entation of sole4n co44it4ents pursuant to international conventions and treaties.
BH>R>#OR>, the petition in ,.R. NOS. <-2'2+'2 is hereb$ ,R*NT>D. The order dated *pril %%, &'7- of the
respondent re3ional trial court is R>V>RS>D and S>T *SID>. Our Te4porar$ Restrainin3 Order dated *pril %',
&'7- is 4a5i.e. P>RM*N>NT. The petition in ,.R. NO. <(<(' is D>NI>D due course for lac" of 4erit. Our
Te4porar$ Restrainin3 Order dated Dece4ber (, &'7- is ?I#T>D and S>T *SID>, effective i44ediatel$.
SO ORD>R>D.
!eehan?ee 'Chairman(, Melencio-7errera, $lana, "elova and -e la Fuente, **., concur.