INP

trademark BARBIZON, of respondent Lolita R. Escobar, is given due

course.

G.R. No. 114508 November 19, 1999

IT IS SO ORDERED.
PRIBHDAS J. MIRPURI, petitioner,
vs.
COURT OF APPEALS, DIRECTOR OF PATENTS and the BARBIZON
CORPORATION, respondents.

This decision became final and on September 11, 1974, Lolita Escobar was
issued a certificate of registration for the trademark "Barbizon." The
trademark was "for use in "brassieres and lady's underwear garments like
panties." 3
Escobar later assigned all her rights and interest over the trademark to petitioner
Pribhdas J. Mirpuri who, under his firm name then, the "Bonito Enterprises," was the
sole and exclusive distributor of Escobar's "Barbizon" products.

PUNO, J.:
The Convention of Paris for the Protection of Industrial Property is a multi-lateral
treaty which the Philippines bound itself to honor and enforce in this country. As to
whether or not the treaty affords protection to a foreign corporation against a
Philippine applicant for the registration of a similar trademark is the principal issue
in this case.
On June 15, 1970, one Lolita Escobar, the predecessor-in-interest of petitioner
Pribhdas J. Mirpuri, filed an application with the Bureau of Patents for the registration
of the trademark "Barbizon" for use in brassieres and ladies undergarments. Escobar
alleged that she had been manufacturing and selling these products under the firm
name "L & BM Commercial" since March 3, 1970.
Private respondent Barbizon Corporation, a corporation organized and doing
business under the laws of New York, U.S.A., opposed the application. It claimed
that:
The mark BARBIZON of respondent-applicant is confusingly similar
to the trademark BARBIZON which opposer owns and has not
abandoned.
That opposer will be damaged by the registration of the mark
BARBIZON and its business reputation and goodwill will suffer
great and irreparable injury.
That the respondent-applicant's use of the said mark BARBIZON
which resembles the trademark used and owned by opposer,
constitutes an unlawful appropriation of a mark previously used in
the Philippines and not abandoned and therefore a statutory
violation of Section 4 (d) of Republic Act No. 166, as amended. 1
This was docketed as Inter Partes Case No. 686 (IPC No. 686). After filing of
the pleadings, the parties submitted the case for decision.
On June 18, 1974, the Director of Patents rendered judgment dismissing the
opposition and giving due course to Escobar's application, thus:
WHEREFORE, the opposition should be, as it is hereby, DISMISSED.
Accordingly, Application Serial No. 19010 for the registration of the

In 1979, however, Escobar failed to file with the Bureau of Patents the Affidavit of
Use of the trademark required under Section 12 of Republic Act (R.A.) No. 166, the
Philippine Trademark Law. Due to this failure, the Bureau of Patents cancelled
Escobar's certificate of registration.
On May 27, 1981, Escobar reapplied for registration of the cancelled trademark.
Mirpuri filed his own application for registration of Escobar's trademark. Escobar
later assigned her application to herein petitioner and this application was opposed
by private respondent. The case was docketed as Inter Partes Case No. 2049 (IPC
No. 2049).
In its opposition, private respondent alleged that:
(a) The Opposer has adopted the trademark BARBIZON (word),
sometime in June 1933 and has then used it on various kinds of
wearing apparel. On August 14, 1934, Opposer obtained from the
United States Patent Office a more recent registration of the said
mark under Certificate of Registration No. 316,161. On March 1,
1949, Opposer obtained from the United States Patent Office a
more recent registration for the said trademark under Certificate
of Registration No. 507,214, a copy of which is herewith attached
as Annex "A." Said Certificate of Registration covers the following
goods wearing apparel: robes, pajamas, lingerie, nightgowns
and slips;
(b) Sometime in March 1976, Opposer further adopted the
trademark BARBIZON and Bee design and used the said mark in
various kinds of wearing apparel. On March 15, 1977, Opposer
secured from the United States Patent Office a registration of the
said mark under Certificate of Registration No. 1,061,277, a copy
of which is herein enclosed as Annex "B." The said Certificate of
Registration covers the following goods: robes, pajamas, lingerie,
nightgowns and slips;
(c) Still further, sometime in 1961, Opposer adopted the
trademark BARBIZON and a Representation of a Woman and
thereafter used the said trademark on various kinds of wearing
apparel. Opposer obtained from the United States Patent Office
registration of the said mark on April 5, 1983 under Certificate of

Registration No. 1,233,666 for the following goods: wearing

apparel: robes, pajamas, nightgowns and lingerie. A copy of the
said certificate of registration is herewith enclosed as Annex "C."

1983 [sic], 4 Executive Order No. 913 dated October 7, 1963 and
the Memorandum of the Minister of Trade and Industry to the
Honorable Director of Patents dated October 25, 1983.

(d) All the above registrations are subsisting and in force and
Opposer has not abandoned the use of the said trademarks. In
fact, Opposer, through a wholly-owned Philippine subsidiary, the
Philippine Lingerie Corporation, has been manufacturing the goods
covered by said registrations and selling them to various
countries, thereby earning valuable foreign exchange for the
country. As a result of respondent-applicant's misappropriation of
Opposer's BARBIZON trademark, Philippine Lingerie Corporation is
prevented from selling its goods in the local market, to the
damage and prejudice of Opposer and its wholly-owned subsidiary.

(i) The trademark applied for by respondent applicant is identical

to Opposer's BARBIZON trademark and constitutes the dominant
part of Opposer's two other marks namely, BARBIZON and Bee
design and BARBIZON and a Representation of a Woman. The
continued use by respondent-applicant of Opposer's trademark
BARBIZON on goods belonging to Class 25 constitutes a clear case
of commercial and criminal piracy and if allowed registration will
violate not only the Trademark Law but also Article 189 of the
Revised Penal Code and the commitment of the Philippines to an
international treaty. 5

(e) The Opposer's goods bearing the trademark BARBIZON have

been used in many countries, including the Philippines, for at least
40 years and has enjoyed international reputation and good will
for their quality. To protect its registrations in countries where the
goods covered by the registrations are being sold, Opposer has
procured the registration of the trademark BARBIZON in the
following countries: Australia, Austria, Abu Dhabi, Argentina,
Belgium, Bolivia, Bahrain, Canada, Chile, Colombia, Denmark,
Ecuador, France, West Germany, Greece, Guatemala, Hongkong,
Honduras, Italy, Japan, Jordan, Lebanon, Mexico, Morocco, Panama,
New Zealand, Norway, Sweden, Switzerland, Syria, El Salvador,
South Africa, Zambia, Egypt, and Iran, among others;
(f) To enhance its international reputation for quality goods and to
further promote goodwill over its name, marks and products,
Opposer has extensively advertised its products, trademarks and
name in various publications which are circulated in the United
States and many countries around the world, including the
Philippines;
(g) The trademark BARBIZON was fraudulently registered in the
Philippines by one Lolita R. Escobar under Registration No. 21920,
issued on September 11, 1974, in violation of Article 189 (3) of the
Revised Penal Code and Section 4 (d) of the Trademark Law. Herein
respondent applicant acquired by assignment the "rights" to the
said mark previously registered by Lolita Escobar, hence
respondent-applicant's title is vitiated by the same fraud and
criminal act. Besides, Certificate of Registration No. 21920 has
been cancelled for failure of either Lolita Escobar or herein
respondent-applicant, to seasonably file the statutory affidavit of
use. By applying for a re-registration of the mark BARBIZON
subject of this opposition, respondent-applicant seeks to
perpetuate the fraud and criminal act committed by Lolita Escobar.

Replying to private respondent's opposition, petitioner raised the defense

of res judicata.
On March 2, 1982, Escobar assigned to petitioner the use of the business name
"Barbizon International." Petitioner registered the name with the Department of
Trade and Industry (DTI) for which a certificate of registration was issued in 1987.
Forthwith, private respondent filed before the Office of Legal Affairs of the DTI a
petition for cancellation of petitioner's business name.
On November 26, 1991, the DTI, Office of Legal Affairs, cancelled petitioner's
certificate of registration, and declared private respondent the owner and prior user
of the business name "Barbizon International." Thus:
WHEREFORE, the petition is hereby GRANTED and petitioner is
declared the owner and prior user of the business name
"BARBIZON INTERNATIONAL" under Certificate of Registration No.
87-09000 dated March 10, 1987 and issued in the name of
respondent, is [sic] hereby ordered revoked and cancelled. . . . . 6
Meanwhile, in IPC No. 2049, the evidence of both parties were received by the
Director of Patents. On June 18, 1992, the Director rendered a decision declaring
private respondent's opposition barred by res judicata and giving due course to
petitioner's application for registration, to wit:
WHEREFORE, the present Opposition in Inter Partes Case No. 2049
is hereby DECLARED BARRED by res judicata and is hereby
DISMISSED. Accordingly, Application Serial No. 45011 for
trademark BARBIZON filed by Pribhdas J. Mirpuri is GIVEN DUE
COURSE.
SO ORDERED.

(h) Opposer's BARBIZON as well as its BARBIZON and Bee Design

and BARBIZON and Representation of a Woman trademarks qualify
as well-known trademarks entitled to protection under Article
6bis of the Convention of Paris for the Protection of Industrial
Property and further amplified by the Memorandum of the Minister
of Trade to the Honorable Director of Patents dated October 25,

Private respondent questioned this decision before the Court of Appeals in CA-G.R.
SP No. 28415. On April 30, 1993, the Court of Appeals reversed the Director of
Patents finding that IPC No. 686 was not barred by judgment in IPC No. 2049 and

ordered that the case be remanded to the Bureau of Patents for further
proceedings, viz:
WHEREFORE, the appealed Decision No. 92-13 dated June 18,
1992 of the Director of Patents in Inter Partes Case No. 2049 is
hereby SET ASIDE; and the case is hereby remanded to the Bureau
of Patents for further proceedings, in accordance with this
pronouncement. No costs. 8
In a Resolution dated March 16, 1994, the Court of Appeals denied
reconsideration of its decision. 9 Hence, this recourse.
Before us, petitioner raises the following issues:
1. WHETHER OR NOT THE DECISION OF THE DIRECTOR OF
PATENTS IN INTER PARTES CASE NO. 686 RENDERED ON JUNE 18,
1974, ANNEX C HEREOF, CONSTITUTED RES JUDICATA IN SO FAR
AS THE CASE BEFORE THE DIRECTOR OF PATENTS IS CONCERNED;
2. WHETHER OR NOT THE DIRECTOR OF PATENTS CORRECTLY
APPLIED THE PRINCIPLE OFRES JUDICATA IN DISMISSING PRIVATE
RESPONDENT BARBIZON'S OPPOSITION TO PETITIONER'S
APPLICATION FOR REGISTRATION FOR THE TRADEMARK BARBIZON,
WHICH HAS SINCE RIPENED TO CERTIFICATE OF REGISTRATION NO.
53920 ON NOVEMBER 16, 1992;
3. WHETHER OR NOT THE REQUISITE THAT A "JUDGMENT ON THE
MERITS" REQUIRED A "HEARING WHERE BOTH PARTIES ARE
SUPPOSED TO ADDUCE EVIDENCE" AND WHETHER THE JOINT
SUBMISSION OF THE PARTIES TO A CASE ON THE BASIS OF THEIR
RESPECTIVE PLEADINGS WITHOUT PRESENTING TESTIMONIAL OR
DOCUMENTARY EVIDENCE FALLS WITHIN THE MEANING OF
"JUDGMENT ON THE MERITS" AS ONE OF THE REQUISITES TO
CONSTITUTERES JUDICATA;
4. WHETHER A DECISION OF THE DEPARTMENT OF TRADE AND
INDUSTRY CANCELLING PETITIONER'S FIRM NAME "BARBIZON
INTERNATIONAL" AND WHICH DECISION IS STILL PENDING
RECONSIDERATION NEVER OFFERED IN EVIDENCE BEFORE THE
DIRECTOR OF PATENTS IN INTER PARTES CASE NO. 2049 HAS THE
RIGHT TO DECIDE SUCH CANCELLATION NOT ON THE BASIS OF
THE BUSINESS NAME LAW (AS IMPLEMENTED BY THE BUREAU OF
DOMESTIC TRADE) BUT ON THE BASIS OF THE PARIS CONVENTION
AND THE TRADEMARK LAW (R.A. 166) WHICH IS WITHIN THE
ORIGINAL AND EXCLUSIVE JURISDICTION OF THE DIRECTOR OF
PATENTS. 10
Before ruling on the issues of the case, there is need for a brief background on the
function and historical development of trademarks and trademark law.
A "trademark" is defined under R.A. 166, the Trademark Law, as including "any word,
name, symbol, emblem, sign or device or any combination thereof adopted and
used by a manufacturer or merchant to identify his goods and distinguish them from

those manufactured, sold or dealt in by others. 11 This definition has been simplified
in R.A. No. 8293, the Intellectual Property Code of the Philippines, which defines a
"trademark" as "any visible sign capable of distinguishing goods." 12 In Philippine
jurisprudence, the function of a trademark is to point out distinctly the origin or
ownership of the goods to which it is affixed; to secure to him, who has been
instrumental in bringing into the market a superior article of merchandise, the fruit
of his industry and skill; to assure the public that they are procuring the genuine
article; to prevent fraud and imposition; and to protect the manufacturer against
substitution and sale of an inferior and different article as his product. 13
Modern authorities on trademark law view trademarks as performing three distinct
functions: (1) they indicate origin or ownership of the articles to which they are
attached; (2) they guarantee that those articles come up to a certain standard of
quality; and (3) they advertise the articles they symbolize. 14
Symbols have been used to identify the ownership or origin of articles for several
centuries. 15 As early as 5,000 B.C., markings on pottery have been found by
archaeologists. Cave drawings in southwestern Europe show bison with symbols on
their flanks. 16 Archaeological discoveries of ancient Greek and Roman inscriptions
on sculptural works, paintings, vases, precious stones, glassworks, bricks, etc. reveal
some features which are thought to be marks or symbols. These marks were affixed
by the creator or maker of the article, or by public authorities as indicators for the
payment of tax, for disclosing state monopoly, or devices for the settlement of
accounts between an entrepreneur and his workmen. 17
In the Middle Ages, the use of many kinds of marks on a variety of goods was
commonplace. Fifteenth century England saw the compulsory use of identifying
marks in certain trades. There were the baker's mark on bread, bottlemaker's marks,
smith's marks, tanner's marks, watermarks on paper, etc. 18 Every guild had its own
mark and every master belonging to it had a special mark of his own. The marks
were not trademarks but police marks compulsorily imposed by the sovereign to let
the public know that the goods were not "foreign" goods smuggled into an area
where the guild had a monopoly, as well as to aid in tracing defective work or poor
craftsmanship to the artisan. 19 For a similar reason, merchants also used merchants'
marks. Merchants dealt in goods acquired from many sources and the marks
enabled them to identify and reclaim their goods upon recovery after shipwreck or
piracy. 20
With constant use, the mark acquired popularity and became voluntarily adopted. It
was not intended to create or continue monopoly but to give the customer an index
or guarantee of quality. 21 It was in the late 18th century when the industrial
revolution gave rise to mass production and distribution of consumer goods that the
mark became an important instrumentality of trade and commerce. 22 By this time,
trademarks did not merely identify the goods; they also indicated the goods to be of
satisfactory quality, and thereby stimulated further purchases by the consuming
public. 23 Eventually, they came to symbolize the goodwill and business reputation of
the owner of the product and became a property right protected by law. 24 The
common law developed the doctrine of trademarks and tradenames "to prevent a
person from palming off his goods as another's, from getting another's business or
injuring his reputation by unfair means, and, from defrauding the
public." 25 Subsequently, England and the United States enacted national legislation
on trademarks as part of the law regulating unfair trade. 26 It became the right of the
trademark owner to exclude others from the use of his mark, or of a confusingly
similar mark where confusion resulted in diversion of trade or financial injury. At the

same time, the trademark served as a warning against the imitation or faking of
products to prevent the imposition of fraud upon the public. 27
Today, the trademark is not merely a symbol of origin and goodwill; it is often the
most effective agent for the actual creation and protection of goodwill. It imprints
upon the public mind an anonymous and impersonal guaranty of satisfaction,
creating a desire for further satisfaction. In other words, the mark actually sells the
goods. 28 The mark has become the "silent salesman," the conduit through which
direct contact between the trademark owner and the consumer is assured. It has
invaded popular culture in ways never anticipated that it has become a more
convincing selling point than even the quality of the article to which it refers. 29 In
the last half century, the unparalleled growth of industry and the rapid development
of communications technology have enabled trademarks, tradenames and other
distinctive signs of a product to penetrate regions where the owner does not actually
manufacture or sell the product itself. Goodwill is no longer confined to the territory
of actual market penetration; it extends to zones where the marked article has been
fixed in the public mind through advertising. 30Whether in the print, broadcast or
electronic communications medium, particularly on the Internet, 31 advertising has
paved the way for growth and expansion of the product by creating and earning a
reputation that crosses over borders, virtually turning the whole world into one vast
marketplace.
This is the mise-en-scene of the present controversy. Petitioner brings this action
claiming that "Barbizon" products have been sold in the Philippines since 1970.
Petitioner developed this market by working long hours and spending considerable
sums of money on advertisements and promotion of the trademark and its products.
Now, almost thirty years later, private respondent, a foreign corporation, "swaggers
into the country like a conquering hero," usurps the trademark and invades
petitioner's market. 32 Justice and fairness dictate that private respondent be
prevented from appropriating what is not its own. Legally, at the same time, private
respondent is barred from questioning petitioner's ownership of the trademark
because of res judicata. 33
Literally, res judicata means a matter adjudged, a thing judicially acted upon or
decided; a thing or matter settled by judgment. 34 In res judicata, the judgment in
the first action is considered conclusive as to every matter offered and received
therein, as to any other admissible matter which might have been offered for that
purpose, and all other matters that could have been adjudged therein. 35 Res
judicata is an absolute bar to a subsequent action for the same cause; and its
requisites are: (a) the former judgment or order must be final; (b) the judgment or
order must be one on the merits; (c) it must have been rendered by a court having
jurisdiction over the subject matter and parties; (d) there must be between the first
and second actions, identity of parties, of subject matter and of causes of action. 36
The Solicitor General, on behalf of respondent Director of Patents, has joined cause
with petitioner. Both claim that all the four elements of res judicata have been
complied with: that the judgment in IPC No. 686 was final and was rendered by the
Director of Patents who had jurisdiction over the subject matter and parties; that the
judgment in IPC No. 686 was on the merits; and that the lack of a hearing was
immaterial because substantial issues were raised by the parties and passed upon
by the Director of Patents. 37
The decision in IPC No. 686 reads as follows:

xxx xxx xxx.

Neither party took testimony nor adduced documentary evidence.
They submitted the case for decision based on the pleadings
which, together with the pertinent records, have all been carefully
considered.
Accordingly, the only issue for my disposition is whether or not the
herein opposer would probably be damaged by the registration of
the trademark BARBIZON sought by the respondent-applicant on
the ground that it so resembles the trademark BARBIZON allegedly
used and owned by the former to be "likely to cause confusion,
mistake or to deceive purchasers."
On record, there can be no doubt that respondent-applicant's
sought-to-be-registered trademark BARBIZON is similar, in fact
obviously identical, to opposer's alleged trademark BARBIZON, in
spelling and pronunciation. The only appreciable but very
negligible difference lies in their respective appearances or
manner of presentation. Respondent-applicant's trademark is in
bold letters (set against a black background), while that of the
opposer is offered in stylish script letters.
It is opposer's assertion that its trademark BARBIZON has been
used in trade or commerce in the Philippines prior to the date of
application for the registration of the identical mark BARBIZON by
the respondent-applicant. However, the allegation of facts in
opposer's verified notice of opposition is devoid of such material
information. In fact, a reading of the text of said verified opposition
reveals an apparent, if not deliberate, omission of the date (or
year) when opposer's alleged trademark BARBIZON was first used
in trade in the Philippines (see par. No. 1, p. 2, Verified Notice of
Opposition, Rec.). Thus, it cannot here and now be ascertained
whether opposer's alleged use of the trademark BARBIZON could
be prior to the use of the identical mark by the herein respondentapplicant, since the opposer attempted neither to substantiate its
claim of use in local commerce with any proof or evidence.
Instead, the opposer submitted the case for decision based merely
on the pleadings.
On the other hand, respondent-applicant asserted in her amended
application for registration that she first used the trademark
BARBIZON for brassiere (or "brasseire") and ladies underwear
garments and panties as early as March 3, 1970. Be that as it may,
there being no testimony taken as to said date of first use,
respondent-applicant will be limited to the filing date, June 15,
1970, of her application as the date of first use (Rule 173, Rules of
Practice in Trademark Cases).
From the foregoing, I conclude that the opposer has not made out
a case of probable damage by the registration of the respondentapplicant's mark BARBIZON.

WHEREFORE, the opposition should be, as it is hereby, DISMISSED.

Accordingly, Application Serial No. 19010, for the registration of
the trademark BARBIZON of respondent Lolita R. Escobar, is given
due course. 38
The decision in IPC No. 686 was a judgment on the merits and it was error for the
Court of Appeals to rule that it was not. A judgment is on the merits when it
determines the rights and liabilities of the parties based on the disclosed facts,
irrespective of formal, technical or dilatory objections. 39 It is not necessary that a
trial should have been conducted. If the court's judgment is general, and not based
on any technical defect or objection, and the parties had a full legal opportunity to
be heard on their respective claims and contentions, it is on the merits although
there was no actual hearing or arguments on the facts of the case. 40 In the case at
bar, the Director of Patents did not dismiss private respondent's opposition on a
sheer technicality. Although no hearing was conducted, both parties filed their
respective pleadings and were given opportunity to present evidence. They,
however, waived their right to do so and submitted the case for decision based on
their pleadings. The lack of evidence did not deter the Director of Patents from ruling
on the case, particularly on the issue of prior use, which goes into the very
substance of the relief sought by the parties. Since private respondent failed to
prove prior use of its trademark, Escobar's claim of first use was upheld.
The judgment in IPC No. 686 being on the merits, petitioner and the Solicitor General
allege that IPC No. 686 and IPC No. 2049 also comply with the fourth requisite of res
judicata, i.e., they involve the same parties and the same subject matter, and have
identical causes of action.
Undisputedly, IPC No. 686 and IPC No. 2049 involve the same parties and the same
subject matter. Petitioner herein is the assignee of Escobar while private respondent
is the same American corporation in the first case. The subject matter of both cases
is the trademark "Barbizon." Private respondent counter-argues, however, that the
two cases do not have identical causes of action. New causes of action were
allegedly introduced in IPC No. 2049, such as the prior use and registration of the
trademark in the United States and other countries worldwide, prior use in the
Philippines, and the fraudulent registration of the mark in violation of Article 189 of
the Revised Penal Code. Private respondent also cited protection of the trademark
under the Convention of Paris for the Protection of Industrial Property, specifically
Article 6bis thereof, and the implementation of Article 6bis by two Memoranda dated
November 20, 1980 and October 25, 1983 of the Minister of Trade and Industry to
the Director of Patents, as well as Executive Order (E.O.) No. 913.
The Convention of Paris for the Protection of Industrial Property, otherwise known as
the Paris Convention, is a multilateral treaty that seeks to protect industrial property
consisting of patents, utility models, industrial designs, trademarks, service marks,
trade names and indications of source or appellations of origin, and at the same
time aims to repress unfair competition. 41 The Convention is essentially a compact
among various countries which, as members of the Union, have pledged to accord to
citizens of the other member countries trademark and other rights comparable to
those accorded their own citizens by their domestic laws for an effective protection
against unfair competition. 42 In short, foreign nationals are to be given the same
treatment in each of the member countries as that country makes available to its
own citizens. 43 Nationals of the various member nations are thus assured of a
certain minimum of international protection of their industrial property. 44

The Convention was first signed by eleven countries in Paris on March 20, 1883. 45 It
underwent several revisions at Brussels in 1900, at Washington in 1911, at The
Hague in 1925, at London in 1934, at Lisbon in 1958, 46and at Stockholm in 1967.
Both the Philippines and the United States of America, herein private respondent's
country, are signatories to the Convention. The United States acceded on May 30,
1887 while the Philippines, through its Senate, concurred on May 10, 1965. 47 The
Philippines' adhesion became effective on September 27, 1965, 48 and from this
date, the country obligated itself to honor and enforce the provisions of the
Convention. 49
In the case at bar, private respondent anchors its cause of action on the first
paragraph of Article 6bis of the Paris Convention which reads as follows:
Article 6bis
(1) The countries of the Union undertake, either administratively if
their legislation so permits, or at the request of an interested
party, to refuse or to cancel the registration and to prohibit the
use, of a trademark which constitutes a reproduction, an imitation,
or a translation, liable to create confusion, of a mark considered by
the competent authority of the country of registration or use to be
well-known in that country as being already the mark of a person
entitled to the benefits of this Convention and used for identical or
similar goods. These provisions shall also apply when the essential
part of the mark constitutes a reproduction of any such well-known
mark or an imitation liable to create confusion therewith.
(2) A period of at least five years from the date of registration shall
be allowed for seeking the cancellation of such a mark. The
countries of the Union may provide for a period within which the
prohibition of use must be sought.
(3) No time limit shall be fixed for seeking the cancellation or the
prohibition of the use of marks registered or used in bad faith. 50
This Article governs protection of well-known trademarks. Under the first
paragraph, each country of the Union bound itself to undertake to refuse or
cancel the registration, and prohibit the use of a trademark which is a
reproduction, imitation or translation, or any essential part of which
trademark constitutes a reproduction, liable to create confusion, of a mark
considered by the competent authority of the country where protection is
sought, to be well-known in the country as being already the mark of a
person entitled to the benefits of the Convention, and used for identical or
similar goods.
Art. 6bis was first introduced at The Hague in 1925 and amended in Lisbon in
1952. 51 It is a self-executing provision and does not require legislative enactment to
give it effect in the member country. 52 It may be applied directly by the tribunals
and officials of each member country by the mere publication or proclamation of the
Convention, after its ratification according to the public law of each state and the
order for its execution. 53

The essential requirement under Article 6bis is that the trademark to be protected
must be "well-known" in the country where protection is sought. The power to
determine whether a trademark is well-known lies in the "competent authority of the
country of registration or use." This competent authority would be either the
registering authority if it has the power to decide this, or the courts of the country in
question if the issue comes before a court. 54
Pursuant to Article 6bis, on November 20, 1980, then Minister Luis Villafuerte of the
Ministry of Trade issued a Memorandum to the Director of Patents. The Minister
ordered the Director that:
Pursuant to the Paris Convention for the Protection of Industrial
Property to which the Philippines is a signatory, you are hereby
directed to reject all pending applications for Philippine
registration of signature and other world-famous trademarks by
applicants other than its original owners or users.
The conflicting claims over internationally known trademarks
involve such name brands as Lacoste, Jordache, Vanderbilt,
Sasson, Fila, Pierre Cardin, Gucci, Christian Dior, Oscar de la Renta,
Calvin Klein, Givenchy, Ralph Lauren, Geoffrey Beene, Lanvin and
Ted Lapidus.
It is further directed that, in cases where warranted, Philippine
registrants of such trademarks should be asked to surrender their
certificates of registration, if any, to avoid suits for damages and
other legal action by the trademarks' foreign or local owners or
original users.
You are also required to submit to the undersigned a progress
report on the matter.
For immediate compliance.

55

Three years later, on October 25, 1983, then Minister Roberto Ongpin issued another
Memorandum to the Director of Patents, viz:
Pursuant to Executive Order No. 913 dated 7 October 1983 which
strengthens the rule-making and adjudicatory powers of the
Minister of Trade and Industry and provides inter alia, that "such
rule-making and adjudicatory powers should be revitalized in order
that the Minister of Trade and Industry can . . . apply more swift
and effective solutions and remedies to old and new problems . . .
such as infringement of internationally-known tradenames and
trademarks . . ." and in view of the decision of the Intermediate
Appellate Court in the case of LA CHEMISE LACOSTE, S.A., versus
RAM SADWHANI [AC-G.R. SP NO. 13359 (17) June 1983] 56which
affirms the validity of the MEMORANDUM of then Minister Luis R.
Villafuerte dated 20 November 1980 confirming our obligations
under the PARIS CONVENTION FOR THE PROTECTION OF
INDUSTRIAL PROPERTY to which the Republic of the Philippines is a
signatory, you are hereby directed to implement measures
necessary to effect compliance with our obligations under said

Convention in general, and, more specifically, to honor our

commitment under Section 6bis 57 thereof, as follows:
1. Whether the trademark under consideration is
well-known in the Philippines or is a mark
already belonging to a person entitled to the
benefits of the CONVENTION, this should be
established, pursuant to Philippine Patent Office
procedures in inter partesand ex parte cases,
according to any of the following criteria or any
combination thereof:
(a) a declaration by the
Minister of Trade and Industry
that the trademark being
considered is already wellknown in the Philippines such
that permission for its use by
other than its original owner
will constitute a reproduction,
imitation, translation or other
infringement;
(b) that the trademark is used
in commerce internationally,
supported by proof that goods
bearing the trademark are sold
on an international scale,
advertisements, the
establishment of factories,
sales offices, distributorships,
and the like, in different
countries, including volume or
other measure of international
trade and commerce;
(c) that the trademark is duly
registered in the industrial
property office(s) of another
country or countries, taking
into consideration the date of
such registration;
(d) that the trademark has
long been established and
obtained goodwill and
international consumer
recognition as belonging to
one owner or source;
(e) that the trademark actually
belongs to a party claiming
ownership and has the right to
registration under the

provisions of the aforestated

PARIS CONVENTION.
2. The word trademark, as used in this
MEMORANDUM, shall include tradenames,
service marks, logos, signs, emblems, insignia or
other similar devices used for identification and
recognition by consumers.
3. The Philippine Patent Office shall refuse all
applications for, or cancel the registration of,
trademarks which constitute a reproduction,
translation or imitation of a trademark owned by
a person, natural or corporate, who is a citizen of
a country signatory to the PARIS CONVENTION
FOR THE PROTECTION OF INDUSTRIAL
PROPERTY.
4. The Philippine Patent Office shall give due
course to the Opposition in cases already or
hereafter filed against the registration of
trademarks entitled to protection of Section
6bis of said PARIS CONVENTION as outlined
above, by remanding applications filed by one
not entitled to such protection for final
disallowance by the Examination Division.
5. All pending applications for Philippine
registration of signature and other world-famous
trademarks filed by applicants other than their
original owners or users shall be rejected
forthwith. Where such applicants have already
obtained registration contrary to the
abovementioned PARIS CONVENTION and/or
Philippine Law, they shall be directed to
surrender their Certificates of Registration to the
Philippine Patent Office for immediate
cancellation proceedings.
xxx xxx xxx.

58

In the Villafuerte Memorandum, the Minister of Trade instructed the Director of

Patents to reject all pending applications for Philippine registration of signature and
other world-famous trademarks by applicants other than their original owners or
users. The Minister enumerated several internationally-known trademarks and
ordered the Director of Patents to require Philippine registrants of such marks to
surrender their certificates of registration.
In the Ongpin Memorandum, the Minister of Trade and Industry did not enumerate
well-known trademarks but laid down guidelines for the Director of Patents to
observe in determining whether a trademark is entitled to protection as a wellknown mark in the Philippines under Article 6bis of the Paris Convention. This was to
be established through Philippine Patent Office procedures in inter partes and ex
parte cases pursuant to the criteria enumerated therein. The Philippine Patent Office

was ordered to refuse applications for, or cancel the registration of, trademarks
which constitute a reproduction, translation or imitation of a trademark owned by a
person who is a citizen of a member of the Union. All pending applications for
registration of world-famous trademarks by persons other than their original owners
were to be rejected forthwith. The Ongpin Memorandum was issued pursuant to
Executive Order No. 913 dated October 7, 1983 of then President Marcos which
strengthened the rule-making and adjudicatory powers of the Minister of Trade and
Industry for the effective protection of consumers and the application of swift
solutions to problems in trade and industry. 59
Both the Villafuerte and Ongpin Memoranda were sustained by the Supreme Court in
the 1984 landmark case ofLa Chemise Lacoste, S.A. v. Fernandez. 60 This court ruled
therein that under the provisions of Article 6bis of the Paris Convention, the Minister
of Trade and Industry was the "competent authority" to determine whether a
trademark is well-known in this country. 61
The Villafuerte Memorandum was issued in 1980, i.e., fifteen (15) years after the
adoption of the Paris Convention in 1965. In the case at bar, the first inter
partes case, IPC No. 686, was filed in 1970, before the Villafuerte Memorandum but
five (5) years after the effectivity of the Paris Convention. Article 6bis was already in
effect five years before the first case was instituted. Private respondent, however,
did not cite the protection of Article 6bis, neither did it mention the Paris Convention
at all. It was only in 1981 when IPC No. 2049 was instituted that the Paris
Convention and the Villafuerte Memorandum, and, during the pendency of the case,
the 1983 Ongpin Memorandum were invoked by private respondent.
The Solicitor General argues that the issue of whether the protection of Article
6bis of the Convention and the two Memoranda is barred by res judicata has already
been answered in Wolverine Worldwide, Inc. v. Court of
Appeals. 62 In this case, petitioner Wolverine, a foreign corporation, filed with the
Philippine Patent Office a petition for cancellation of the registration certificate of
private respondent, a Filipino citizen, for the trademark "Hush Puppies" and "Dog
Device." Petitioner alleged that it was the registrant of the internationally-known
trademark in the United States and other countries, and cited protection under the
Paris Convention and the Ongpin Memorandum. The petition was dismissed by the
Patent Office on the ground of res judicata. It was found that in 1973 petitioner's
predecessor-in-interest filed two petitions for cancellation of the same trademark
against respondent's predecessor-in-interest. The Patent Office dismissed the
petitions, ordered the cancellation of registration of petitioner's trademark, and gave
due course to respondent's application for registration. This decision was sustained
by the Court of Appeals, which decision was not elevated to us and became final and
executory. 63
Wolverine claimed that while its previous petitions were filed under R.A. No. 166, the
Trademark Law, its subsequent petition was based on a new cause of action, i.e., the
Ongpin Memorandum and E.O. No. 913 issued in 1983, after finality of the previous
decision. We held that the said Memorandum and E.O. did not grant a new cause of
action because it did "not amend the Trademark Law," . . . "nor did it indicate a new
policy with respect to the registration in the Philippines of world-famous
trademarks." 64 This conclusion was based on the finding that Wolverine's two
previous petitions and subsequent petition dealt with the same issue of ownership of
the trademark. 65 In other words, since the first and second cases involved the same
issue of ownership, then the first case was a bar to the second case.

In the instant case, the issue of ownership of the trademark "Barbizon" was not
raised in IPC No. 686. Private respondent's opposition therein was merely anchored
on:
(a) "confusing similarity" of its trademark with that of Escobar's;
(b) that the registration of Escobar's similar trademark will cause
damage to private respondent's business reputation and goodwill;
and
(c) that Escobar's use of the trademark amounts to an unlawful
appropriation of a mark previously used in the Philippines which
act is penalized under Section 4 (d) of the Trademark Law.
In IPC No. 2049, private respondent's opposition set forth several issues
summarized as follows:
(a) as early as 1933, it adopted the word "BARBIZON" as
trademark on its products such as robes, pajamas, lingerie,
nightgowns and slips;
(b) that the trademark "BARBIZON" was registered with the United
States Patent Office in 1934 and 1949; and that variations of the
same trademark, i.e., "BARBIZON" with Bee design and
"BARBIZON" with the representation of a woman were also
registered with the U.S. Patent Office in 1961 and 1976;
(c) that these marks have been in use in the Philippines and in
many countries all over the world for over forty years. "Barbizon"
products have been advertised in international publications and
the marks registered in 36 countries worldwide;
(d) Escobar's registration of the similar trademark "BARBIZON" in
1974 was based on fraud; and this fraudulent registration was
cancelled in 1979, stripping Escobar of whatsoever right she had
to the said mark;
(e) Private respondent's trademark is entitled to protection as a
well-known mark under Article 6bis of the Paris Convention,
Executive Order No. 913, and the two Memoranda dated
November 20, 1980 and October 25, 1983 of the Minister of Trade
and Industry to the Director of Patents;
(f) Escobar's trademark is identical to private respondent's and its
use on the same class of goods as the latter's amounts to a
violation of the Trademark Law and Article 189 of the Revised
Penal Code.
IPC No. 2049 raised the issue of ownership of the trademark, the first
registration and use of the trademark in the United States and other
countries, and the international recognition and reputation of the
trademark established by extensive use and advertisement of private

respondent's products for over forty years here and abroad. These are
different from the issues of confusing similarity and damage in IPC No. 686.
The issue of prior use may have been raised in IPC No. 686 but this claim
was limited to prior use in the Philippines only. Prior use in IPC No. 2049
stems from private respondent's claim as originator of the word and symbol
"Barbizon," 66 as the first and registered user of the mark attached to its
products which have been sold and advertised worldwide for a considerable
number of years prior to petitioner's first application for registration of her
trademark in the Philippines. Indeed, these are substantial allegations that
raised new issues and necessarily gave private respondent a new cause of
action. Res judicata does not apply to rights, claims or demands, although
growing out of the same subject matter, which constitute separate or
distinct causes of action and were not put in issue in the former action. 67
Respondent corporation also introduced in the second case a fact that did not exist
at the time the first case was filed and terminated. The cancellation of petitioner's
certificate of registration for failure to file the affidavit of use arose only after IPC No.
686. It did not and could not have occurred in the first case, and this gave
respondent another cause to oppose the second application. Res judicata extends
only to facts and conditions as they existed at the time judgment was rendered and
to the legal rights and relations of the parties fixed by the facts so
determined. 68 When new facts or conditions intervene before the second suit,
furnishing a new basis for the claims and defenses of the parties, the issues are no
longer the same, and the former judgment cannot be pleaded as a bar to the
subsequent action. 69
It is also noted that the oppositions in the first and second cases are based on
different laws. The opposition in IPC No. 686 was based on specific provisions of the
Trademark Law, i.e., Section 4 (d) 70 on confusing similarity of trademarks and
Section 8 71 on the requisite damage to file an opposition to a petition for
registration. The opposition in IPC No. 2049 invoked the Paris Convention,
particularly Article 6bis thereof, E.O. No. 913 and the two Memoranda of the Minister
of Trade and Industry. This opposition also invoked Article 189 of the Revised Penal
Code which is a statute totally different from the Trademark Law. 72 Causes of action
which are distinct and independent from each other, although arising out of the
same contract, transaction, or state of facts, may be sued on separately, recovery
on one being no bar to subsequent actions on others. 73 The mere fact that the same
relief is sought in the subsequent action will not render the judgment in the prior
action operative as res judicata, such as where the two actions are based on
different statutes. 74 Res judicata therefore does not apply to the instant case and
respondent Court of Appeals did not err in so ruling.
Intellectual and industrial property rights cases are not simple property cases.
Trademarks deal with the psychological function of symbols and the effect of these
symbols on the public at large. 75 Trademarks play a significant role in
communication, commerce and trade, and serve valuable and interrelated business
functions, both nationally and internationally. For this reason, all agreements
concerning industrial property, like those on trademarks and tradenames, are
intimately connected with economic development. 76 Industrial property encourages
investments in new ideas and inventions and stimulates creative efforts for the
satisfaction of human needs. They speed up transfer of technology and
industrialization, and thereby bring about social and economic progress. 77 These
advantages have been acknowledged by the Philippine government itself. The
Intellectual Property Code of the Philippines declares that "an effective intellectual
and industrial property system is vital to the development of domestic and creative
activity, facilitates transfer of technology, it attracts foreign investments, and

ensures market access for our products." 78 The Intellectual Property Code took
effect on January 1, 1998 and by its express provision, 79 repealed the Trademark
Law, 80 the Patent Law, 81 Articles 188 and 189 of the Revised Penal Code, the
Decree on Intellectual Property, 82 and the Decree on Compulsory Reprinting of
Foreign Textbooks. 83 The Code was enacted to strengthen the intellectual and
industrial property system in the Philippines as mandated by the country's accession
to the Agreement Establishing the World Trade Organization (WTO). 84
The WTO is a common institutional framework for the conduct of trade relations
among its members in matters related to the multilateral and plurilateral trade
agreements annexed to the WTO Agreement. 85 The WTO framework ensures a
"single undertaking approach" to the administration and operation of all agreements
and arrangements attached to the WTO Agreement. Among those annexed is the
Agreement on Trade-Related Aspects of Intellectual Property Rights or
TRIPs. 86 Members to this Agreement "desire to reduce distortions and impediments
to international trade, taking into account the need to promote effective and
adequate protection of intellectual property rights, and to ensure that measures and
procedures to enforce intellectual property rights do not themselves become
barriers to legitimate trade." To fulfill these objectives, the members have agreed to
adhere to minimum standards of protection set by several Conventions. 87 These
Conventions are: the Berne Convention for the Protection of Literary and Artistic
Works (1971), the Rome Convention or the International Convention for the
Protection of Performers, Producers of Phonograms and Broadcasting Organisations,
the Treaty on Intellectual Property in Respect of Integrated Circuits, and the Paris
Convention (1967), as revised in Stockholm on July 14, 1967. 88
A major proportion of international trade depends on the protection of intellectual
property rights. 89 Since the late 1970's, the unauthorized counterfeiting of industrial
property and trademarked products has had a considerable adverse impact on
domestic and international trade revenues. 90 The TRIPs Agreement seeks to grant
adequate protection of intellectual property rights by creating a favorable economic
environment to encourage the inflow of foreign investments, and strengthening the
multi-lateral trading system to bring about economic, cultural and technological
independence. 91

BERRIS AGRICULTURAL
CO., INC.,

G.R. No. 183404

Petitioner,

Present:
VELASCO, JR., J.,*
NACHURA,**
Acting Chairperson,
LEONARDO-DE CASTRO,***
BRION,**** and
MENDOZA, JJ.

- versus -

NORVY ABYADANG,

Promulgated:
Respondent.

October 13, 2010

x------------------------------------------------------------------------------------x

DECISION
NACHURA, J.:

This petition for review [1] on certiorari under Rule 45 of the Rules of Court
The Philippines and the United States of America have acceded to the WTO
Agreement. This Agreement has revolutionized international business and economic
relations among states, and has propelled the world towards trade liberalization and
economic globalization. 92 Protectionism and isolationism belong to the past. Trade is
no longer confined to a bilateral system. There is now "a new era of global economic
cooperation, reflecting the widespread desire to operate in a fairer and more open
multilateral trading system." 93 Conformably, the State must reaffirm its
commitment to the global community and take part in evolving a new international
economic order at the dawn of the new millenium.
IN VIEW WHEREOF, the petition is denied and the Decision and Resolution of the
Court of Appeals in CA-G.R. SP No. 28415 are affirmed.
SO ORDERED.

seeks the reversal of the Decision dated April 14, 2008 [2] and the Resolution dated
June 18, 2008[3] of the Court of Appeals (CA) in CA-G.R. SP No. 99928.

The antecedents

On January 16, 2004, respondent Norvy A. Abyadang (Abyadang), proprietor

of NS Northern Organic Fertilizer, with address at No. 43 Lower QM, Baguio City, filed
with the Intellectual Property Office (IPO) a trademark application for the mark NS
D-10 PLUS for use in connection with Fungicide (Class 5) with active ingredient 80%
Mancozeb. The application, under Application Serial No. 4-2004-00450, was given
due course and was published in the IPO e-Gazette for opposition on July 28, 2005.

hereby DENIED FOR LACK OF MERIT. Consequently, Decision

No. 2006-24 dated April 28, 2006 STANDS.
On August 17, 2005, petitioner Berris Agricultural Co., Inc. (Berris), with

Let the filewrapper of the trademark NS D-10 PLUS

subject matter under consideration be forwarded to the Bureau of
Trademarks for appropriate action in accordance with this
Resolution.

business address in Barangay Masiit, Calauan, Laguna, filed with the IPO Bureau of
Legal Affairs (IPO-BLA) a Verified Notice of Opposition [4] against the mark under

SO ORDERED.[8]

application allegedly because NS D-10 PLUS is similar and/or confusingly similar to

its registered trademark D-10 80 WP, also used for Fungicide (Class 5) with active
ingredient 80% Mancozeb. The opposition was docketed as IPC No. 14-2005-00099.

Aggrieved, Abyadang filed an appeal on August 22, 2006 with the Office of the
Director General, Intellectual Property Philippines (IPPDG), docketed as Appeal No.

After an exchange of pleadings, on April 28, 2006, Director Estrellita BeltranAbelardo (Director Abelardo) of the IPO-BLA issued Decision No. 2006-24

[5]

14-06-13.

(BLA

decision), the dispositive portion of which reads

With the filing of the parties respective memoranda, Director General Adrian

WHEREFORE, viewed in the light of all the foregoing, this

Bureau finds and so holds that Respondent-Applicants mark NS
D-10 PLUS is confusingly similar to the Opposers mark and as
such, the opposition is hereby SUSTAINED. Consequently,
trademark application bearing Serial No. 4-2004-00450 for the
mark NS D-10 PLUS filed on January 16, 2004 by Norvy A.
Ab[yada]ng covering the goods fungicide under Class 5 of the
International Classification of goods is, as it is hereby, REJECTED.

S. Cristobal, Jr. of the IPPDG rendered a decision dated July 20, 2007, [9] ruling as
follows
Wherefore, premises considered[,] the appeal is hereby
DENIED. Accordingly, the appealed Decision of the Director is
hereby AFFIRMED.
Let a copy of this Decision as well as the trademark
application and records be furnished and returned to the Director
of Bureau of Legal Affairs for appropriate action. Further, let also
the Directors of the Bureau of Trademarks, the Administrative,
Financial and Human Resources Development Services Bureau,
and the library of the Documentation, Information and Technology
Transfer Bureau be furnished a copy of this Decision for
information, guidance, and records purposes.

Let the filewrapper of the trademark NS D-10 PLUS

subject matter under consideration be forwarded to the
Administrative, Financial and Human Resources Development
Services Bureau (AFHRDSB) for appropriate action in accordance
with this Order with a copy to be furnished the Bureau of
Trademark (BOT) for information and to update its records.
SO ORDERED.[6]

SO ORDERED.[10]

Abyadang filed a motion for reconsideration, and Berris, in turn, filed its
Undeterred, Abyadang filed a petition for review[11] before the CA.

opposition to the motion.

In its Decision dated April 14, 2008, the CA reversed the IPPDG decision. It

On August 2, 2006, Director Abelardo issued Resolution No. 2006-09(D) [7] (BLA
resolution), denying the motion for reconsideration and disposing as follows
IN VIEW OF
Reconsideration
filed

THE FOREGOING, the Motion

by
the
Respondent-Applicant

for
is

held
In sum, the petition should be granted due to the
following reasons: 1) petitioners mark NS D-10 PLUS is not
confusingly similar with respondents trademark D-10 80 WP; 2)

respondent failed to establish its ownership of the mark D-10 80

WP and 3) respondents trademark registration for D-10 80 WP
may be cancelled in the present case to avoid multiplicity of suits.
WHEREFORE, the petition is GRANTED. The decision
dated July 20, 2007 of the IPO Director General in Appeal No. 1406-13 (IPC No. 14-2005-00099) is REVERSED and SET ASIDE,
and a new one is entered giving due course to petitioners
application for registration of the mark NS D-10 PLUS, and
canceling respondents trademark registration for D-10 80 WP.

Interestingly, R.A. No. 8293 did not expressly repeal in its entirety R.A. No.
166, but merely provided in Section 239.1[16] that Acts and parts of Acts inconsistent
with it were repealed. In other words, only in the instances where a substantial and
irreconcilable conflict is found between the provisions of R.A. No. 8293 and of R.A.
No. 166 would the provisions of the latter be deemed repealed.

SO ORDERED.[12]
R.A. No. 8293 defines a mark as any visible sign capable of distinguishing
the goods (trademark) or services (service mark) of an enterprise and shall include a
Berris filed a Motion for Reconsideration, but in its June 18, 2008 Resolution,
the CA denied the motion for lack of merit. Hence, this petition anchored on the
following arguments
I.

II.

III.

The Honorable Court of Appeals finding that there

exists no confusing similarity between Petitioners and
respondents marks is based on misapprehension of facts,
surmise and conjecture and not in accord with the
Intellectual Property Code and applicable Decisions of this
Honorable Court [Supreme Court].

stamped or marked container of goods. [17] It also defines a collective mark as any
visible sign designated as such in the application for registration and capable of
distinguishing the origin or any other common characteristic, including the quality of
goods or services of different enterprises which use the sign under the control of the
registered owner of the collective mark.[18]

On the other hand, R.A. No. 166 defines a trademark as any distinctive

The Honorable Court of Appeals Decision reversing

and setting aside the technical findings of the Intellectual
Property Office even without a finding or, at the very
least, an allegation of grave abuse of discretion on the
part of said agency is not in accord with law and earlier
pronouncements of this Honorable Court [Supreme
Court].

word, name, symbol, emblem, sign, or device, or any combination thereof, adopted

The Honorable Court of Appeals Decision ordering the

cancellation of herein Petitioners duly registered and
validly existing trademark in the absence of a properly
filed Petition for Cancellation before the Intellectual
Property Office is not in accord with the Intellectual
Property Code and applicable Decisions of this Honorable
Court [Supreme Court].[13]

protection,

and used by a manufacturer or merchant on his goods to identify and distinguish

them from those manufactured, sold, or dealt by another. [19] A trademark, being a
special property, is afforded protection by law. But for one to enjoy this legal
legal

protection

ownership

of the

trademark should

rightly

be

established.

The ownership of a trademark is acquired by its registration and its actual

use by the manufacturer or distributor of the goods made available to the
purchasing public. Section 122[20] of R.A. No. 8293 provides that the rights in a mark

The basic law on trademark, infringement, and unfair competition is

Republic Act (R.A.) No. 8293[14] (Intellectual Property Code of the Philippines),
specifically Sections 121 to 170 thereof. It took effect on January 1, 1998. Prior to
its effectivity, the applicable law was R.A. No. 166, [15] as amended.

shall be acquired by means of its valid registration with the IPO. A certificate of
registration of a mark, once issued, constitutes prima facie evidence of the validity
of the registration, of the registrants ownership of the mark, and of the registrants
exclusive right to use the same in connection with the goods or services and those
that are related thereto specified in the certificate. [21] R.A. No. 8293, however,

requires the applicant for registration or the registrant to file a declaration of actual

copies of official receipts or sales invoices of goods using the mark were attached as

use (DAU) of the mark, with evidence to that effect, within three (3) years from the

Annex B.

filing of the application for registration; otherwise, the application shall be refused or
the mark shall be removed from the register. [22] In other words, the prima

On the other hand, Abyadangs proofs consisted of the following: (1) a

facie presumption brought about by the registration of a mark may be challenged

photocopy of the packaging [31] for his marketed fungicide bearing mark NS D-10

and overcome, in an appropriate action, by proof of the nullity of the registration or

PLUS; (2) Abyadangs Affidavit dated February 14, 2006, [32] stating among others

of non-use of the mark, except when excused. [23] Moreover, the presumption may

that the mark NS D-10 PLUS was his own creation derived from: N for Norvy, his

likewise be defeated by evidence of prior use by another person, i.e., it will

name; S for Soledad, his wifes name; D the first letter for December, his birth

controvert a claim of legal appropriation or of ownership based on registration by a

month; 10 for October, the 10 th month of the year, the month of his business name

subsequent user. This is because a trademark is a creation of use and belongs to

registration; and PLUS to connote superior quality; that when he applied for

one who first used it in trade or commerce. [24]

registration, there was nobody applying for a mark similar to NS D-10 PLUS; that
he did not know of the existence of Berris or any of its products; that D-10 could

The determination of priority of use of a mark is a question of

not have been associated with Berris because the latter never engaged in any

fact. Adoption of the mark alone does not suffice. One may make advertisements,

commercial activity to sell D-10 80 WP fungicide in the local market; and that he

issue circulars, distribute price lists on certain goods, but these alone will not inure

could not have copied Berris mark because he registered his packaging with the

to the claim of ownership of the mark until the goods bearing the mark are sold to

Fertilizer and Pesticide Authority (FPA) ahead of Berris; (3) Certification dated

the public in the market. Accordingly, receipts, sales invoices, and testimonies of

December 19, 2005[33] issued by the FPA, stating that NS D-10 PLUS is owned and

witnesses as customers, or orders of buyers, best prove the actual use of a mark in

distributed by NS Northern Organic Fertilizer, registered with the FPA since May 26,

trade and commerce during a certain period of time. [25]

2003, and had been in the market since July 30, 2003; (4) Certification dated

In the instant case, both parties have submitted proof to support their claim
of ownership of their respective trademarks.

October 11, 2005[34] issued by the FPA, stating that, per monitoring among dealers in
Region I and in the Cordillera Administrative Region registered with its office, the
Regional Officer neither encountered the fungicide with mark D-10 80 WP nor did

Culled from the records, Berris, as oppositor to Abyadangs application for

the FPA provincial officers from the same area receive any report as to the presence

registration of his trademark, presented the following evidence: (1) its trademark

or sale of Berris product; (5) Certification dated March 14, 2006 [35] issued by the

application dated November 29, 2002 [26] with Application No. 4-2002-0010272; (2)

FPA, certifying that all pesticides must be registered with the said office pursuant to

with Registration No. 4-

Section 9[36] of Presidential Decree (P.D.) No. 1144[37] and Section 1, Article II of FPA

2002-010272 and July 8, 2004 as the date of registration; (3) a photocopy of its

Rules and Regulations No. 1, Series of 1977; (6) Certification dated March 16,

its IPO certificate of registration dated October 25, 2004,

bearing the mark D-10 80 WP; (4) photocopies of its sales invoices

2006[38] issued by the FPA, certifying that the pesticide D-10 80 WP was registered

and official receipts;[29] and (5) its notarized DAU dated April 23, 2003, [30] stating that

by Berris on November 12, 2004; and (7) receipts from Sunrise Farm Supply [39] in La

packaging

[28]

[27]

the mark was first used on June 20, 2002, and indicating that, as proof of actual use,

Trinidad, Benguet of the sale of Abyadangs goods referred to as D-10 and D-

even a determination of violation by Berris of P.D. No. 1144 would not controvert the

10+.

fact that it did submit evidence that it had used the mark D-10 80 WP earlier than
its FPA registration in 2004.
Based on their proffered pieces of evidence, both Berris and Abyadang

claim to be the prior user of their respective marks.

Furthermore, even the FPA Certification dated October 11, 2005, stating
that the office had neither encountered nor received reports about the sale of the
fungicide D-10 80 WP within Region I and the Cordillera Administrative Region,

We rule in favor of Berris.

could not negate the fact that Berris was selling its product using that mark in 2002,
especially considering that it first traded its goods in Calauan, Laguna, where its

Berris was able to establish that it was using its mark D-10 80 WP since

business office is located, as stated in the DAU.

June 20, 2002, even before it filed for its registration with the IPO on November 29,
2002, as shown by its DAU which was under oath and notarized, bearing the stamp

Therefore, Berris, as prior user and prior registrant, is the owner of the

of the Bureau of Trademarks of the IPO on April 25, 2003, [40] and which stated that it

mark D-10 80 WP. As such, Berris has in its favor the rights conferred by Section

had an attachment as Annex B sales invoices and official receipts of goods bearing

147 of R.A. No. 8293, which provides

the mark. Indeed, the DAU, being a notarized document, especially when received
in due course by the IPO, is evidence of the facts it stated and has the presumption
of regularity, entitled to full faith and credit upon its face. Thus, the burden of proof
to overcome the presumption of authenticity and due execution lies on the party
contesting it, and the rebutting evidence should be clear, strong, and convincing as
to preclude all controversy as to the falsity of the certificate. [41] What is more, the
DAU is buttressed by the Certification dated April 21, 2006 [42] issued by the Bureau
of Trademarks that Berris mark is still valid and existing.

Hence, we cannot subscribe to the contention of Abyadang that Berris DAU

is fraudulent based only on his assumption that Berris could not have legally used

Sec. 147. Rights Conferred.

147.1. The owner of a registered mark shall have the
exclusive right to prevent all third parties not having the owners
consent from using in the course of trade identical or similar signs
or containers for goods or services which are identical or similar to
those in respect of which the trademark is registered where such
use would result in a likelihood of confusion. In case of the use of
an identical sign for identical goods or services, a likelihood of
confusion shall be presumed.
147.2. The exclusive right of the owner of a well-known
mark defined in Subsection 123.1(e) which is registered in the
Philippines, shall extend to goods and services which are not
similar to those in respect of which the mark is
registered: Provided, That use of that mark in relation to those
goods or services would indicate a connection between those
goods or services and the owner of the registered mark: Provided,
further, That the interests of the owner of the registered mark are
likely to be damaged by such use.

the mark in the sale of its goods way back in June 2002 because it registered the
product with the FPA only on November 12, 2004. As correctly held by the IPPDG in
its decision on Abyadangs appeal, the question of whether or not Berris violated P.D.

Now, we confront the question, Is Abyadangs mark NS D-10 PLUS

No. 1144, because it sold its product without prior registration with the FPA, is a

confusingly similar to that of Berris D-10 80 WP such that the latter can rightfully

distinct and separate matter from the jurisdiction and concern of the IPO. Thus,

prevent the IPO registration of the former?

We answer in the affirmative.

remembered of it. Although, it appears in Berris certificate of registration in the

same font size as the 80 WP, its dominancy in the D-10 80 WP mark stands

According to Section 123.1(d) of R.A. No. 8293, a mark cannot be registered

since the difference in the form does not alter its distinctive character. [45]

if it is identical with a registered mark belonging to a different proprietor with an

earlier filing or priority date, with respect to: (1) the same goods or services; (2)

Applying the Dominancy Test, it cannot be gainsaid that Abyadangs NS D-

closely related goods or services; or (3) near resemblance of such mark as to likely

10 PLUS is similar to Berris D-10 80 WP, that confusion or mistake is more likely

deceive or cause confusion.

to occur. Undeniably, both marks pertain to the same type of goods fungicide with
80% Mancozeb as an active ingredient and used for the same group of fruits, crops,

In determining similarity and likelihood of confusion, jurisprudence has

vegetables, and ornamental plants, using the same dosage and manner of

developed teststhe Dominancy Test and the Holistic or Totality Test. The

application. They also belong to the same classification of goods under R.A. No.

Dominancy Test focuses on the similarity of the prevalent or dominant features of

8293. Both depictions of D-10, as found in both marks, are similar in size, such

the competing trademarks that might cause confusion, mistake, and deception in

that this portion is what catches the eye of the purchaser. Undeniably, the likelihood

the mind of the purchasing public. Duplication or imitation is not necessary; neither

of confusion is present.

is it required that the mark sought to be registered suggests an effort to

imitate. Given more consideration are the aural and visual impressions created by

This likelihood of confusion and mistake is made more manifest when the

the marks on the buyers of goods, giving little weight to factors like prices, quality,

Holistic Test is applied, taking into consideration the packaging, for both use the

sales outlets, and market segments.[43]

same type of material (foil type) and have identical color schemes (red, green, and
white); and the marks are both predominantly red in color, with the same phrase

In contrast, the Holistic or Totality Test necessitates a consideration of the

BROAD SPECTRUM FUNGICIDE written underneath.

entirety of the marks as applied to the products, including the labels and packaging,
in determining confusing similarity. The discerning eye of the observer must focus

Considering these striking similarities, predominantly the D-10, the

not only on the predominant words but also on the other features appearing on both

buyers of both products, mainly farmers, may be misled into thinking that NS D-10

labels so that the observer may draw conclusion on whether one is confusingly

PLUS could be an upgraded formulation of the D-10 80 WP.

similar to the other.

[44]

Moreover, notwithstanding the finding of the IPPDG that the D-10 is a

Comparing Berris mark D-10 80 WP with Abyadangs mark NS D-10

fanciful component of the trademark, created for the sole purpose of functioning as

PLUS, as appearing on their respective packages, one cannot but notice that both

a trademark, and does not give the name, quality, or description of the product for

have a common component which is D-10. On Berris package, the D-10 is

which it is used, nor does it describe the place of origin, such that the degree of

written with a bigger font than the 80 WP. Admittedly, the D-10 is the dominant

exclusiveness given to the mark is closely restricted, [46] and considering its challenge

feature of the mark. The D-10, being at the beginning of the mark, is what is most

by Abyadang with respect to the meaning he has given to it, what remains is the

fact that Berris is the owner of the mark D-10 80 WP, inclusive of its dominant
feature D-10, as established by its prior use, and prior registration with the

SO ORDERED.

IPO. Therefore, Berris properly opposed and the IPO correctly rejected Abyadangs
application for registration of the mark NS D-10 PLUS.

Verily, the protection of trademarks as intellectual property is intended not

only to preserve the goodwill and reputation of the business established on the
goods bearing the mark through actual use over a period of time, but also to
safeguard the public as consumers against confusion on these goods.

[47]

COFFEE PARTNERS, INC.,

Petitioner,

Present:

On this

matter of particular concern, administrative agencies, such as the IPO, by reason of

their special knowledge and expertise over matters falling under their jurisdiction,

G.R. No. 169504

- versus -

CARPIO, J., Chairperson,

VELASCO, JR.,*
DEL CASTILLO,
ABAD, and
PEREZ, JJ.

are in a better position to pass judgment thereon. Thus, their findings of fact in that
regard are generally accorded great respect, if not finality by the courts, as long as
they are supported by substantial evidence, even if such evidence might not be

SAN FRANCISCO COFFEE &

Promulgated:
ROASTERY, INC.,
Respondent.
March 3, 2010
x- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - x

overwhelming or even preponderant. It is not the task of the appellate court to

DECISION

weigh once more the evidence submitted before the administrative body and to
substitute its own judgment for that of the administrative agency in respect to
sufficiency of evidence. [48]

CARPIO, J.:
The Case

Inasmuch as the ownership of the mark D-10 80 WP fittingly belongs to

Berris, and because the same should not have been cancelled by the CA, we
consider it proper not to belabor anymore the issue of whether cancellation of a
registered mark may be done absent a petition for cancellation.

This is a petition for review [1] of the 15 June 2005 Decision [2] and the
September 2005 Resolution[3] of the Court of Appeals in CA-G.R. SP

No. 80396. In

its 15 June 2005 Decision, the Court of Appeals set aside the 22 October 2003
Decision[4] of the Office of the Director General-Intellectual Property Office and

WHEREFORE, the petition is GRANTED. The assailed Decision dated April

14, 2008 and Resolution dated June 18, 2008 of the Court of Appeals in CA-G.R. SP
No. 99928 are REVERSED and SET ASIDE. Accordingly, the Decision No. 2006-24
dated April 28, 2006 and the Resolution No. 2006-09(D) dated August 2, 2006 in IPC
No. 14-2005-00099, and the Decision dated July 20, 2007 in Appeal No. 14-06-13
are REINSTATED. Costs against respondent.

reinstated the 14 August 2002 Decision[5] of the Bureau of Legal Affairs-Intellectual

Property Office. In its 1 September 2005 Resolution, the Court of Appeals denied
petitioners

motion for reconsideration and respondents

reconsideration.

motion for partial

The Facts

Petitioner Coffee Partners, Inc. is a local corporation engaged in the business of

shop and introduced him to Mr. Boxwell. For his part, Mr. Boxwell attested that the
coffee shop SAN FRANCISCO COFFEE has branches in Malaysia and Singapore. He
added that he formed CPL in 1997 along with two other colleagues, Shirley Miller
John and Leah Warren, who were former managers of Starbucks Coffee Shop in the
United States. He said they decided to invest in a similar venture and adopted the
name SAN FRANCISCO COFFEE from the famous city in California where he and his
former colleagues once lived and where special coffee roasts came from.

establishing and maintaining coffee shops in the country. It registered with the
Securities and Exchange Commission (SEC) in January 2001. It has a franchise
agreement[6] with Coffee Partners Ltd. (CPL), a business entity organized and

The Ruling of the Bureau of Legal Affairs-Intellectual Property Office

existing under the laws of British Virgin Islands, for a non-exclusive right to operate
coffee shops in the Philippines using trademarks designed by CPL such as SAN

In its 14 August 2002 Decision, the BLA-IPO held that petitioners trademark

FRANCISCO COFFEE.

infringed on respondents trade name. It ruled that the right to the exclusive use of a

Respondent is a local corporation engaged in the wholesale and retail sale of

coffee. It registered with the SEC in May 1995. It registered the business name SAN
FRANCISCO COFFEE & ROASTERY, INC. with the Department of Trade and Industry
(DTI) in June 1995. Respondent had since built a customer base that included Figaro
Company, Tagaytay Highlands, Fat Willys, and other coffee companies.

trade name with freedom from infringement by similarity is determined from priority

In 1998, respondent formed a joint venture company with Boyd Coffee USA
under the company name Boyd Coffee Company Philippines, Inc. (BCCPI). BCCPI
engaged in the processing, roasting, and wholesale selling of coffee. Respondent
later embarked on a project study of setting up coffee carts in malls and other
commercial establishments in Metro Manila.

1997 in other countries, then respondent must be protected from infringement of its

In June 2001, respondent discovered that petitioner was about to open a coffee
shop under the name SAN FRANCISCO COFFEE in Libis, Quezon City. According to
respondent, petitioners shop caused confusion in the minds of the public as it bore
a similar name and it also engaged in the business of selling coffee. Respondent
sent a letter to petitioner demanding that the latter stop using the name SAN
FRANCISCO COFFEE. Respondent also filed a complaint with the Bureau of Legal
Affairs-Intellectual Property Office (BLA-IPO) for infringement and/or unfair
competition with claims for damages.
In its answer, petitioner denied the allegations in the complaint. Petitioner
alleged it filed with the Intellectual Property Office (IPO) applications for registration
of the mark SAN FRANCISCO COFFEE & DEVICE for class 42 in 1999 and for class
35 in 2000. Petitioner maintained its mark could not be confused with respondents
trade name because of the notable distinctions in their appearances. Petitioner
argued respondent stopped operating under the trade name SAN FRANCISCO
COFFEE when it formed a joint venture with Boyd Coffee USA. Petitioner contended
respondent did not cite any specific acts that would lead one to believe petitioner
had, through fraudulent means, passed off its mark as that of respondent, or that it
had diverted business away from respondent.
Mr. David Puyat, president of petitioner corporation, testified that the coffee
shop in Libis, Quezon City opened sometime in June 2001 and that another coffee
shop would be opened in Glorietta Mall, Makati City. He stated that the coffee shop
was set up pursuant to a franchise agreement executed in January 2001 with CPL, a
British Virgin Island Company owned by Robert Boxwell. Mr. Puyat said he became
involved in the business when one Arthur Gindang invited him to invest in a coffee

of adoption. Since respondent registered its business name with the DTI in 1995 and
petitioner registered its trademark with the IPO in 2001 in the Philippines and in

trade name.
The BLA-IPO also held that respondent did not abandon the use of its trade
name as substantial evidence indicated respondent continuously used its trade
name in connection with the purpose for which it was organized. It found that
although respondent was no longer involved in blending, roasting, and distribution of
coffee because of the creation of BCCPI, it continued making plans and doing
research on the retailing of coffee and the setting up of coffee carts. The BLA-IPO
ruled that for abandonment to exist, the disuse must be permanent, intentional, and
voluntary.
The BLA-IPO held that petitioners use of the trademark SAN FRANCISCO
COFFEE will likely cause confusion because of the exact similarity in sound,
spelling, pronunciation, and commercial impression of the words SAN FRANCISCO
which is the dominant portion of respondents trade name and petitioners
trademark. It held that no significant difference resulted even with a diamondshaped figure with a cup in the center in petitioner's trademark because greater
weight is given to words the medium consumers use in ordering coffee products.
On the issue of unfair competition, the BLA-IPO absolved petitioner from
liability. It found that petitioner adopted the trademark SAN FRANCISCO COFFEE
because of the authority granted to it by its franchisor. The BLA-IPO held there was
no evidence of intent to defraud on the part of petitioner.
The BLA-IPO also dismissed respondents claim of actual damages because its
claims of profit loss were based on mere assumptions as respondent had not even
started the operation of its coffee carts. The BLA-IPO likewise dismissed
respondents claim of moral damages, but granted its claim of attorneys fees.
Both parties moved for partial reconsideration. Petitioner protested the finding
of infringement, while respondent questioned the denial of actual damages. The

BLA-IPO denied the parties partial motion for reconsideration. The parties appealed
to the Office of the Director General-Intellectual Property Office (ODG-IPO).

COFFEE & ROASTERY, INC., even if the trade name is not registered with the
Intellectual Property Office (IPO).

The Ruling of the Office of the Director GeneralIntellectual Property Office

The Courts Ruling

In its 22 October 2003 Decision, the ODG-IPO reversed the BLA-IPO. It ruled
that petitioners use of the trademark SAN FRANCISCO COFFEE did not infringe on
respondent's trade name. The ODG-IPO found that respondent had stopped using its

The petition has no merit.

trade name after it entered into a joint venture with Boyd Coffee USA in 1998 while
petitioner continuously used the trademark since June 2001 when it opened its first
coffee shop in Libis, Quezon City. It ruled that between a subsequent user of a trade
name in good faith and a prior user who had stopped using such trade name, it
would be inequitable to rule in favor of the latter.

Petitioner contends that when a trade name is not registered, a suit for
infringement is not available. Petitioner alleges respondent has abandoned its trade
name. Petitioner points out that respondents registration of its business name with
the DTI expired on 16 June 2000 and it was only in 2001 when petitioner opened a
coffee shop in Libis, Quezon City that respondent made a belated effort to seek the

The Ruling of the Court of Appeals

renewal of its business name registration. Petitioner stresses respondents failure to

continue the use of its trade name to designate its goods negates any allegation of

In its 15 June 2005 Decision, the Court of Appeals set aside the

22 October

2003 decision of the ODG-IPO in so far as it ruled that there was no infringement. It
reinstated the 14 August 2002 decision of the BLA-IPO finding infringement. The
appellate court denied respondents claim for actual damages and retained the
award of attorneys fees. In its 1 September 2005 Resolution, the Court of Appeals
denied petitioners motion for reconsideration and respondents motion for partial
reconsideration.

The Issue

infringement. Petitioner claims no confusion is likely to occur between its trademark

and respondents trade name because of a wide divergence in the channels of trade,
petitioner serving ready-made coffee while respondent is in wholesale blending,
roasting, and distribution of coffee. Lastly, petitioner avers the proper noun San
Francisco and the generic word coffee are not capable of exclusive appropriation.
Respondent maintains the law protects trade names from infringement even if
they are not registered with the IPO. Respondent claims Republic Act No. 8293 (RA
8293)[7]dispensed with registration of a trade name with the IPO as a requirement for
the filing of an action for infringement. All that is required is that the trade name is
previously used in trade or commerce in the Philippines. Respondent insists it never
abandoned the use of its trade name as evidenced by its letter to petitioner
demanding immediate discontinuation of the use of its trademark and by the filing
of the infringement case. Respondent alleges petitioners trademark is confusingly
similar to respondents trade name. Respondent stresses ordinarily prudent
consumers are likely to be misled about the source, affiliation, or sponsorship
of petitioners coffee.

The sole issue is whether petitioners use of the trademark SAN FRANCISCO
COFFEE constitutes infringement of respondents trade name SAN FRANCISCO

As to the issue of alleged abandonment of trade name by respondent, the BLAIPO found that respondent continued to make plans and do research on the retailing

of coffee and the establishment of coffee carts, which negates abandonment. This
finding was upheld by the Court of Appeals, which further found that while
respondent stopped using its trade name in its business of selling coffee, it

Section 22 of Republic Act No. 166, [12] as amended, required registration of a

trade name as a condition for the institution of an infringement suit, to wit:

continued to import and sell coffee machines, one of the services for which the use
Sec. 22. Infringement, what constitutes. Any person who
shall use, without the consent of the registrant, any
reproduction, counterfeit, copy, or colorable imitation of any
registered mark or trade name in connection with the sale,
offering for sale, or advertising of any goods, business or services
on or in connection with which such use is likely to cause
confusion or mistake or to deceive purchasers or others as to the
source or origin of such goods or services, or identity of such
business; or reproduce, counterfeit, copy, or colorably imitate any
such mark or trade name and apply such reproduction,
counterfeit, copy, or colorable imitation to labels, signs, prints,
packages, wrappers, receptacles, or advertisements intended to
be used upon or in connection with such goods, business, or
services, shall be liable to a civil action by the registrant for
any or all of the remedies herein provided. (Emphasis supplied)

of the business name has been registered. The binding effect of the factual findings
of the Court of Appeals on this Court applies with greater force when both the quasijudicial body or tribunal like the BLA-IPO and the Court of Appeals are in complete
agreement on their factual findings. It is also settled that absent any circumstance
requiring the overturning of the factual conclusions made by the quasi-judicial body
or tribunal, particularly if affirmed by the Court of Appeals, the Court necessarily
upholds such findings of fact.[8]
Coming now to the main issue, in Prosource International, Inc. v. Horphag
Research Management SA,[9] this Court laid down what constitutes infringement of
an unregistered trade name, thus:
(1)

The trademark being infringed is registered in the

Intellectual
Property Office; however, in infringement of
trade name, the same need not be registered;

HOWEVER, RA 8293, WHICH TOOK EFFECT ON 1 JANUARY 1998, HAS

DISPENSED WITH THE REGISTRATION REQUIREMENT. SECTION 165.2 OF RA 8293

(2) The trademark or trade name is reproduced, counterfeited,

copied, or colorably imitated by the infringer;

CATEGORICALLY STATES THAT TRADE NAMES SHALL BE PROTECTED, EVEN PRIOR TO

(3) The infringing mark or trade name is used in connection with

the sale, offering for sale, or advertising of any goods, business or
services; or the infringing mark or trade name is applied to labels,
signs, prints, packages, wrappers, receptacles, or advertisements
intended to be used upon or in connection with such goods,
business, or services;

OR WITHOUT REGISTRATION WITH THE IPO, AGAINST ANY UNLAWFUL ACT

(4) The use or application of the infringing mark or trade name is likely to cause
confusion or mistake or to deceive purchasers or others as to the goods or services
themselves or as to the source or origin of such goods or services or the identity of
such business; and
(5) It is without the consent of the trademark or trade name owner or the assignee
thereof.[10] (Emphasis supplied)

Clearly, a trade name need not be registered with the IPO before an
infringement suit may be filed by its owner against the owner of an infringing
trademark. All that is required is that the trade name is previously used in trade or
commerce in the Philippines.[11]

INCLUDING ANY SUBSEQUENT USE OF THE TRADE NAME BY A THIRD PARTY,

WHETHER AS A TRADE NAME OR A TRADEMARK LIKELY TO MISLEAD THE PUBLIC.
THUS:
SEC. 165.2 (A) NOTWITHSTANDING ANY LAWS OR
REGULATIONS PROVIDING FOR ANY OBLIGATION TO
REGISTER TRADE NAMES, SUCH NAMES SHALL BE
PROTECTED, EVEN PRIOR TO OR WITHOUT REGISTRATION,
AGAINST ANY UNLAWFUL ACT COMMITTED BY THIRD PARTIES.
(B) IN PARTICULAR, ANY SUBSEQUENT USE OF A TRADE NAME BY A THIRD
PARTY, WHETHER AS A TRADE NAME OR A MARK OR COLLECTIVE MARK, OR ANY
SUCH USE OF A SIMILAR TRADE NAME OR MARK, LIKELY TO MISLEAD THE PUBLIC,
SHALL BE DEEMED UNLAWFUL. (EMPHASIS SUPPLIED)

IT

IS

THE

LIKELIHOOD

OF

CONFUSION

THAT

IS

THE

GRAVAMEN

OF

INFRINGEMENT. BUT THERE IS NO ABSOLUTE STANDARD FOR LIKELIHOOD OF

CONFUSION. ONLY THE PARTICULAR, AND SOMETIMES PECULIAR, CIRCUMSTANCES
OF EACH CASE CAN DETERMINE ITS EXISTENCE. THUS, IN INFRINGEMENT CASES,
PRECEDENTS MUST BE EVALUATED IN THE LIGHT OF EACH PARTICULAR CASE. [13]

IN

DETERMINING

SIMILARITY

AND

LIKELIHOOD

OF

CONFUSION,

OUR

JURISPRUDENCE HAS DEVELOPED TWO TESTS: THE DOMINANCY TEST AND THE
HOLISTIC TEST. THE DOMINANCY TEST FOCUSES ON THE SIMILARITY OF THE
PREVALENT FEATURES OF THE COMPETING TRADEMARKS THAT MIGHT CAUSE
CONFUSION

AND

DECEPTION,

THUS

COMPETING

TRADEMARK CONTAINS

CONSTITUTING
THE

INFRINGEMENT.

MAIN, ESSENTIAL,

AND

IF

THE

DOMINANT

FEATURES OF ANOTHER, AND CONFUSION OR DECEPTION IS LIKELY TO RESULT,

INFRINGEMENT OCCURS. EXACT DUPLICATION OR IMITATION IS NOT REQUIRED. THE
QUESTION IS WHETHER THE USE OF THE MARKS INVOLVED IS LIKELY TO CAUSE
CONFUSION OR MISTAKE IN THE MIND OF THE PUBLIC OR TO DECEIVE CONSUMERS.
[14]

IN CONTRAST, THE HOLISTIC TEST ENTAILS A CONSIDERATION OF THE

OF ONE CORPORATION IS THE SAME OR SUBSTANTIALLY THE SAME AS THAT OF

ANOTHER CORPORATION. IN THIS CASE, THE CONSUMING PUBLIC WILL LIKELY BE
CONFUSED AS TO THE SOURCE OF THE COFFEE BEING SOLD AT PETITIONERS
COFFEE SHOPS. PETITIONERS ARGUMENT THAT SAN FRANCISCO IS JUST A
PROPER NAME REFERRING TO THE FAMOUS CITY IN CALIFORNIA AND THAT COFFEE
IS SIMPLY A GENERIC TERM, IS UNTENABLE. RESPONDENT HAS ACQUIRED AN
EXCLUSIVE RIGHT TO THE USE OF THE TRADE NAME SAN FRANCISCO COFFEE &
ROASTERY, INC. SINCE THE REGISTRATION OF THE BUSINESS NAME WITH THE DTI
IN 1995. THUS, RESPONDENTS USE OF ITS TRADE NAME FROM THEN ON MUST BE
FREE FROM ANY INFRINGEMENT BY SIMILARITY. OF COURSE, THIS DOES NOT MEAN
THAT RESPONDENT HAS EXCLUSIVE USE OF THE GEOGRAPHIC WORD SAN
FRANCISCO OR THE GENERIC WORD COFFEE. GEOGRAPHIC OR GENERIC WORDS
ARE NOT, PER SE, SUBJECT TO EXCLUSIVE APPROPRIATION. IT IS ONLY THE
COMBINATION OF THE WORDS SAN FRANCISCO COFFEE, WHICH IS RESPONDENTS
TRADE NAME IN ITS COFFEE BUSINESS, THAT IS PROTECTED AGAINST
INFRINGEMENT ON MATTERS RELATED TO THE COFFEE BUSINESS TO AVOID
CONFUSING OR DECEIVING THE PUBLIC.
IN PHILIPS EXPORT B.V. V. COURT OF APPEALS,[17] THIS COURT HELD THAT A
CORPORATION HAS AN EXCLUSIVE RIGHT TO THE USE OF ITS NAME. THE RIGHT
PROCEEDS FROM THE THEORY THAT IT IS A FRAUD ON THE CORPORATION WHICH
HAS ACQUIRED A RIGHT TO THAT NAME AND PERHAPS CARRIED ON ITS BUSINESS
THEREUNDER, THAT ANOTHER SHOULD ATTEMPT TO USE THE SAME NAME, OR THE
SAME NAME WITH A SLIGHT VARIATION IN SUCH A WAY AS TO INDUCE PERSONS TO
DEAL WITH IT IN THE BELIEF THAT THEY ARE DEALING WITH THE CORPORATION
WHICH HAS GIVEN A REPUTATION TO THE NAME.[18]
THIS COURT IS NOT JUST A COURT OF LAW, BUT ALSO OF EQUITY. WE
CANNOT ALLOW PETITIONER TO PROFIT BY THE NAME AND REPUTATION SO FAR
BUILT BY RESPONDENT WITHOUT RUNNING AFOUL OF THE BASIC DEMANDS OF FAIR
PLAY. NOT ONLY THE LAW BUT EQUITY CONSIDERATIONS HOLD PETITIONER LIABLE
FOR INFRINGEMENT OF RESPONDENTS TRADE NAME.
THE COURT OF APPEALS WAS CORRECT IN SETTING ASIDE THE 22 OCTOBER
2003 DECISION OF THE OFFICE OF THE DIRECTOR GENERAL-INTELLECTUAL
PROPERTY OFFICE AND IN REINSTATING THE 14 AUGUST 2002 DECISION OF THE
BUREAU OF LEGAL AFFAIRS-INTELLECTUAL PROPERTY OFFICE.

ENTIRETY OF THE MARKS AS APPLIED TO THE PRODUCTS, INCLUDING THE LABELS

AND PACKAGING, IN DETERMINING CONFUSING SIMILARITY. [15] THE DISCERNING EYE
OF THE OBSERVER MUST FOCUS NOT ONLY ON THE PREDOMINANT WORDS BUT
ALSO ON THE OTHER FEATURES APPEARING ON BOTH MARKS IN ORDER THAT THE

WHEREFORE, WE DENY THE PETITION FOR REVIEW. WE AFFIRM THE 15

JUNE 2005 DECISION AND 1 SEPTEMBER 2005 RESOLUTION OF THE COURT OF
APPEALS IN CA-G.R. SP NO. 80396.

OBSERVER MAY DRAW HIS CONCLUSION WHETHER ONE IS CONFUSINGLY SIMILAR TO

THE OTHER.[16]
APPLYING EITHER THE DOMINANCY TEST OR THE HOLISTIC TEST, PETITIONERS
SAN FRANCISCO COFFEE TRADEMARK IS A CLEAR INFRINGEMENT OF
RESPONDENTS SAN FRANCISCO COFFEE & ROASTERY, INC. TRADE NAME. THE
DESCRIPTIVE WORDS SAN FRANCISCO COFFEE ARE PRECISELY THE DOMINANT
FEATURES OF RESPONDENTS TRADE NAME. PETITIONER AND RESPONDENT ARE
ENGAGED IN THE SAME BUSINESS OF SELLING COFFEE, WHETHER WHOLESALE OR
RETAIL. THE LIKELIHOOD OF CONFUSION IS HIGHER IN CASES WHERE THE BUSINESS

COSTS AGAINST PETITIONER.

SO ORDERED.

DECISION

FREDCO MANUFACTURING

G.R. No. 185917

CARPIO, J.:

CORPORATION,
Petitioner,

Present:
ARP
IO, J
.,
Chai
rper
son,

C
The Case

N
ACH
URA
,
- versus -

8 January 2009 Resolution3 of the Court of Appeals in CA-G.R. SP No. 103394.

PERALTA,
BAD
,
and
END
OZA
, JJ.

PRESIDENT AND FELLOWS

OF HARVARD COLLEGE

Before the Court is a petition for review 1 assailing the 24 October 2008 Decision2 and

M
The Antecedent Facts

On 10 August 2005, petitioner Fredco Manufacturing Corporation (Fredco), a

Promulgated:

corporation organized and existing under the laws of the Philippines, filed a Petition
for Cancellation of Registration No. 56561 before the Bureau of Legal Affairs of the

(HARVARD UNIVERSITY),

Intellectual Property Office (IPO) against respondents President and Fellows of

Respondents.

June 1, 2011

x- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - x

Harvard College (Harvard University), a corporation organized and existing under

the laws of Massachusetts, United States of America. The case was docketed as Inter
Partes Case No. 14-2005-00094.

Harvard University, on the other hand, alleged that it is the lawful owner of the
name and mark Harvard in numerous countries worldwide, including the
Fredco alleged that Registration No. 56561 was issued to Harvard University on 25

Philippines. Among the countries where Harvard University has registered its name

November 1993 for the mark Harvard Veritas Shield Symbol for decals, tote bags,

and mark Harvard are:

serving trays, sweatshirts, t-shirts, hats and flying discs under Classes 16, 18, 21, 25
and 28 of the Nice International Classification of Goods and Services. Fredco alleged
that the mark Harvard for t-shirts, polo shirts, sandos, briefs, jackets and slacks
was first used in the Philippines on 2 January 1982 by New York Garments

1.

Argentina 26. South Korea

2.

Benelux4 27. Malaysia

3.

Brazil 28. Mexico

Manufacturing & Export Co., Inc. (New York Garments), a domestic corporation and

4.

Canada 29. New Zealand

Fredcos predecessor-in-interest. On 24 January 1985, New York Garments filed for

5.

Chile 30. Norway

trademark registration of the mark Harvard for goods under Class 25. The

6.

China P.R. 31. Peru

7.

Colombia 32. Philippines

application matured into a registration and a Certificate of Registration was issued

8.

Costa Rica 33. Poland

on 12 December 1988, with a 20-year term subject to renewal at the end of the

9.

Cyprus 34. Portugal

term. The registration was later assigned to Romeo Chuateco, a member of the

10. Czech Republic 35. Russia

family that owned New York Garments.

11. Denmark 36. South Africa

12. Ecuador 37. Switzerland
13. Egypt 38. Singapore
14. Finland 39. Slovak Republic
15. France 40. Spain

Fredco alleged that it was formed and registered with the Securities and Exchange

16. Great Britain 41. Sweden

Commission on 9 November 1995 and had since then handled the manufacture,

17. Germany 42. Taiwan

promotion and marketing of Harvard clothing articles. Fredco alleged that at the

18. Greece 43. Thailand

time of issuance of Registration No. 56561 to Harvard University, New York

19. Hong Kong 44. Turkey

20. India 45. United Arab Emirates

Garments had already registered the mark Harvard for goods under Class 25.

21. Indonesia 46. Uruguay

Fredco alleged that the registration was cancelled on 30 July 1998 when New York

22. Ireland 47. United States of America

Garments inadvertently failed to file an affidavit of use/non-use on the fifth

23. Israel 48. Venezuela

anniversary of the registration but the right to the mark Harvard remained with its
predecessor New York Garments and now with Fredco.

24. Italy 49. Zimbabwe

25. Japan 50. European Community5

The name and mark Harvard was adopted in 1639 as the name of Harvard

and flying discs) of the Nice International Classification of Goods and

College of Cambridge, Massachusetts, U.S.A. The name and mark Harvard was
allegedly used in commerce as early as 1872. Harvard University is over 350 years

Services;
2.

old and is a highly regarded institution of higher learning in the United States and

Trademark Registration No. 57526 issued on 24 March 1994 for Harvard

Veritas Shield Symbol for services in Class 41; Trademark Registration No.

throughout the world. Harvard University promotes, uses, and advertises its name

56539 issued on 25 November 1998 for Harvard for services in Class 41;

Harvard through various publications, services, and products in foreign countries,

and

including the Philippines. Harvard University further alleged that the name and the
mark have been rated as one of the most famous brands in the world, valued
between US $750,000,000 and US $1,000,000,000.

3.

Trademark Registration No. 66677 issued on 8 December 1998 for

Harvard Graphics for goods in Class 9. Harvard University further alleged
that it filed the requisite affidavits of use for the mark Harvard Veritas
Shield Symbol with the IPO.
Further, on 7

Harvard University alleged that in March 2002, it discovered, through its

international trademark watch program, Fredcos website www.harvard-usa.com.
The website advertises and promotes the brand name Harvard Jeans USA without
Harvard Universitys consent. The websites main page shows an oblong logo
bearing the mark Harvard Jeans USA, Established 1936, and Cambridge,
Massachusetts. On 20 April 2004, Harvard University filed an administrative
complaint against Fredco before the IPO for trademark infringement and/or unfair
competition with damages.

May 2003
Harvard
University
filed
Trademark
Application
No. 4-200304090 for
Harvard
Medical

Harvard University alleged that its valid and existing certificates of trademark
registration in the Philippines are:

International
& Shield
Design for
services in

1.

Trademark Registration No. 56561 issued on 25 November 1993 for

Harvard Veritas Shield Design for goods and services in Classes 16, 18,
21, 25 and 28 (decals, tote bags, serving trays, sweatshirts, t-shirts, hats

Classes 41
and 44. In
1989,
Harvard

University

use its name

established

and mark

the Harvard

Harvard in

Trademark

connection

Licensing

with any

Program,

goods or

operated by

services in

the Office for

the

Technology

Philippines.

and
Trademark
Licensing, to
oversee and
manage the
worldwide

In a Decision7 dated 22 December 2006, Director Estrellita Beltran-Abelardo of the

Bureau of Legal Affairs, IPO cancelled Harvard Universitys registration of the mark
Harvard under Class 25, as follows:

licensing of
the
Harvard
name and
trademarks
for various
goods and

WHEREFORE, premises considered, the Petition for Cancellation is

hereby GRANTED. Consequently, Trademark Registration Number
56561 for the trademark HARVARD VE RI TAS SHIELD SYMBOL
issued on November 25, 1993 to PRESIDENT AND FELLOWS OF
HARVARD COLLEGE (HARVARD UNIVERSITY) should be CANCELLED
only with respect to goods falling under Class 25. On the other
hand, considering that the goods of Respondent-Registrant falling
under Classes 16, 18, 21 and 28 are not confusingly similar with
the Petitioners goods, the Respondent-Registrant has acquired
vested right over the same and therefore, should not be cancelled.

services.
Harvard
University
stated that it

Let the filewrapper of the Trademark Registration No. 56561 issued

on November 25, 1993 for the trademark HARVARD VE RI TAS
SHIELD SYMBOL, subject matter of this case together with a copy
of this Decision be forwarded to the Bureau of Trademarks (BOT)
for appropriate action.

never
authorized or
licensed any
person to

SO ORDERED.8

Harvard University filed an appeal before the Office of the Director General of the
IPO. In a Decision9 dated 21 April 2008, the Office of the Director General, IPO
reversed the decision of the Bureau of Legal Affairs, IPO.

Fredco filed a petition for review before the Court of Appeals assailing the decision of
the Director General.

The Director General ruled that more than the use of the trademark in the

The Decision of the Court of Appeals

Philippines, the applicant must be the owner of the mark sought to be registered.
The Director General ruled that the right to register a trademark is based on
ownership and when the applicant is not the owner, he has no right to register the

In its assailed decision, the Court of Appeals affirmed the decision of the Office of

mark. The Director General noted that the mark covered by Harvard Universitys

the Director General of the IPO.

Registration No. 56561 is not only the word Harvard but also the logo, emblem or
symbol of Harvard University. The Director General ruled that Fredco failed to explain
how its predecessor New York Garments came up with the mark Harvard. In
addition, there was no evidence that Fredco or New York Garments was licensed or
authorized by Harvard University to use its name in commerce or for any other use.

The Court of Appeals adopted the findings of the Office of the Director General and
ruled that the latter correctly set aside the cancellation by the Director of the
Bureau of Legal Affairs of Harvard Universitys trademark registration under Class
25. The Court of Appeals ruled that Harvard University was able to substantiate that
it appropriated and used the marks Harvard and Harvard Veritas Shield Symbol
in Class 25 way ahead of Fredco and its predecessor New York Garments. The Court

The dispositive portion of the decision of the Office of the Director General, IPO

of Appeals also ruled that the records failed to disclose any explanation for Fredcos

reads:

use of the name and mark Harvard and the words USA, Established 1936, and
Cambridge, Massachusetts within an oblong device, US Legend and Europes
No. 1 Brand. Citing Shangri-La International Hotel Management, Ltd. v. Developers
WHEREFORE, premises considered, the instant appeal is
GRANTED. The appealed decision is hereby REVERSED and SET
ASIDE. Let a copy of this Decision as well as the trademark
application and records be furnished and returned to the Director
of Bureau of Legal Affairs for appropriate action. Further, let also
the Directors of the Bureau of Trademarks and the Administrative,
Financial and Human Resources Development Services Bureau,
and the library of the Documentation, Information and Technology
Transfer Bureau be furnished a copy of this Decision for
information, guidance, and records purposes.
SO ORDERED.10

Group of Companies, Inc.,11 the Court of Appeals ruled:

One who has imitated the trademark of another cannot bring an

action for infringement, particularly against the true owner of the
mark, because he would be coming to court with unclean hands.
Priority is of no avail to the bad faith plaintiff. Good faith is
required in order to ensure that a second user may not merely
take advantage of the goodwill established by the true owner. 12
The dispositive portion of the decision of the Court of Appeals reads:

There is no dispute that the mark Harvard used by Fredco is the same as the mark
WHEREFORE, premises considered, the petition for review is
DENIED. The Decision dated April 21, 2008 of the Director General
of the IPO in Appeal No. 14-07-09 Inter Partes Case No. 14-200500094 is hereby AFFIRMED.

Harvard in the Harvard Veritas Shield Symbol of Harvard University. It is also not
disputed that Harvard University was named Harvard College in 1639 and that then,
as now, Harvard University is located in Cambridge, Massachusetts, U.S.A. It is also

SO ORDERED.13

unrefuted that Harvard University has been using the mark Harvard in commerce
since 1872. It is also established that Harvard University has been using the marks

Fredco filed a motion for reconsideration.

Harvard and Harvard Veritas Shield Symbol for Class 25 goods in the United
States since 1953. Further, there is no dispute that Harvard University has
registered the name and mark Harvard in at least 50 countries.

In its Resolution promulgated on 8 January 2009, the Court of Appeals denied the
motion for lack of merit.

On the other hand, Fredcos predecessor-in-interest, New York Garments, started

using the mark Harvard in the Philippines only in 1982. New York Garments filed
an application with the Philippine Patent Office in 1985 to register the mark

Hence, this petition before the Court.

Harvard, which application was approved in 1988. Fredco insists that the date of
actual use in the Philippines should prevail on the issue of who has the better right
to register the marks.
The Issue
Under Section 2 of Republic Act No. 166,14 as amended (R.A. No. 166), before a

The issue in this case is whether the Court of Appeals committed a reversible error
in affirming the decision of the Office of the Director General of the IPO.

trademark can be registered, it must have been actually used in commerce for not
less than two months in the Philippines prior to the filing of an application for its
registration. While Harvard University had actual prior use of its marks abroad for a
long time, it did not have actual prior use in the Philippines of the mark Harvard
Veritas Shield Symbol before its application for registration of the mark Harvard

The Ruling of this Court

with the then Philippine Patents Office. However, Harvard Universitys registration of
the name Harvard is based on home registration which is allowed under Section
37 of R.A. No. 166.15 As pointed out by Harvard University in its Comment:

The petition has no merit.

Although Section 2 of the Trademark law (R.A. 166) requires for the
registration of trademark that the applicant thereof must prove

that the same has been actually in use in commerce or services

for not less than two (2) months in the Philippines before the
application for registration is filed, where the trademark sought to
be registered has already been registered in a foreign country that
is a member of the Paris Convention, the requirement of proof of
use in the commerce in the Philippines for the said period is not
necessary. An applicant for registration based on home certificate
of registration need not even have used the mark or trade name in
this country.16

Cambridge, Massachusetts. This can easily be gleaned from the following oblong
logo of Fredco that it attaches to its clothing line:

Fredcos

Indeed, in its Petition for Cancellation of Registration No. 56561, Fredco alleged that
Harvard Universitys registration is based on home registration for the mark
Harvard Veritas Shield for Class 25.17

In any event, under Section 239.2 of Republic Act No. 8293 (R.A. No.
8293),18 [m]arks registered under Republic Act No. 166 shall remain in force but
shall be deemed to have been granted under this Act x x x, which does not
require actual prior use of the mark in the Philippines. Since the mark Harvard
Veritas Shield Symbol is now deemed granted under R.A. No. 8293, any alleged

registration of the mark Harvard should not have been allowed because Section
4(a) of R.A. No. 166 prohibits the registration of a mark which may disparage
or falsely suggest a connection with persons, living or dead, institutions,
beliefs x x x. Section 4(a) of R.A. No. 166 provides:

defect arising from the absence of actual prior use in the Philippines has been cured
by Section 239.2.19 In addition, Fredcos registration was already cancelled on 30 July
1998 when it failed to file the required affidavit of use/non-use for the fifth
anniversary of the marks registration. Hence, at the time of Fredcos filing of the
Petition for Cancellation before the Bureau of Legal Affairs of the IPO, Fredco was no
longer the registrant or presumptive owner of the mark Harvard.

There are two compelling reasons why Fredcos petition must fail.

First, Fredcos registration of the mark Harvard and its identification of origin as

Section 4. Registration of trade-marks, trade-names and servicemarks on the principal register. There is hereby established a
register of trade-mark, trade-names and service-marks which shall
be known as the principal register. The owner of a trade-mark, a
trade-name or service-mark used to distinguish his goods,
business or services from the goods, business or services of others
shall have the right to register the same on the principal register,
unless it:
(a) Consists of or comprises immoral, deceptive or scandalous
manner, or matter which may disparage or falsely suggest a
connection with persons, living or dead, institutions, beliefs, or
national symbols, or bring them into contempt or disrepute;
(b) x x x (emphasis supplied)

Cambridge, Massachusetts falsely suggest that Fredco or its goods are connected

Fredcos use of the mark Harvard, coupled with its claimed origin in Cambridge,

with Harvard University, which uses the same mark Harvard and is also located in

Massachusetts, obviously suggests a false connection with Harvard University. On

this ground alone, Fredcos registration of the mark Harvard should have been

ARTICLE 6bis

disallowed.
Indisputably, Fredco does not have any affiliation or connection with Harvard
University, or even with Cambridge, Massachusetts. Fredco or its predecessor New
York Garments was not established in 1936, or in the U.S.A. as indicated by Fredco in
its oblong logo. Fredco offered no explanation to the Court of Appeals or to the IPO
why it used the mark Harvard on its oblong logo with the words Cambridge,
Massachusetts, Established in 1936, and USA. Fredco now claims before this

(i) The countries of the Union undertake either administratively if

their legislation so permits, or at the request of an interested
party, to refuse or to cancel the registration and to prohibit the use
of a trademark which constitutes a reproduction, imitation or
translation, liable to create confusion or a mark considered by the
competent authority of the country as being already the mark of
a person entitled to the benefits of the present Convention
and used for identical or similar goods. These provisions
shall also apply when the essential part of the mark
constitutes a reproduction of any such well-known mark or
an imitation liable to create confusion therewith.

Court that it used these words to evoke a lifestyle or suggest a desirable aura of
petitioners clothing lines. Fredcos belated justification merely confirms that it

ARTICLE 8

sought to connect or associate its products with Harvard University, riding on the
prestige and popularity of Harvard University, and thus appropriating part of
Harvard Universitys goodwill without the latters consent.

A trade name shall be protected in all the countries of the

Union without the obligation of filing or registration,
whether or not it forms part of a trademark. (Emphasis supplied)

Section 4(a) of R.A. No. 166 is identical to Section 2(a) of the Lanham Act, 20 the
trademark law of the United States. These provisions are intended to protect
the right of publicity of famous individuals and institutions from commercial
exploitation of their goodwill by others.21 What Fredco has done in using the mark
Harvard and the words Cambridge, Massachusetts, USA to evoke a desirable
aura to its products is precisely to exploit commercially the goodwill of Harvard
University without the latters consent. This is a clear violation of Section 4(a) of R.A.

Thus, this Court has ruled that the Philippines is obligated to assure nationals of
countries of the Paris Convention that they are afforded an effective protection
against violation of their intellectual property rights in the Philippines in the same
way that their own countries are obligated to accord similar protection to Philippine
nationals.23

No. 166. Under Section 17(c)22 of R.A. No. 166, such violation is a ground for
cancellation of Fredcos registration of the mark Harvard because the registration

Article 8 of the Paris Convention has been incorporated in Section 37 of R.A. No.

was obtained in violation of Section 4 of R.A. No. 166.

166, as follows:

Second, the Philippines and the United States of America are both signatories to the
Paris Convention for the Protection of Industrial Property (Paris Convention). The
Philippines became a signatory to the Paris Convention on 27 September 1965.
Articles 6bis and 8 of the Paris Convention state:

Section 37. Rights of foreign registrants. Persons who are

nationals of, domiciled in, or have a bona fide or effective business
or commercial establishment in any foreign country, which is a
party to any international convention or treaty relating to marks or
trade-names, or the repression of unfair competition to which the
Philippines may be a party, shall be entitled to the benefits and
subject to the provisions of this Act to the extent and under the
conditions essential to give effect to any such convention and
treaties so long as the Philippines shall continue to be a party

thereto, except as provided in the following paragraphs of this

section.
xxxx
Trade-names of persons described in the first paragraph of
this section shall be protected without the obligation of
filing or registration whether or not they form parts of
marks.24
x x x x (Emphasis supplied)

Thus, under Philippine law, a trade name of a national of a State that is a party to
the Paris Convention, whether or not the trade name forms part of a trademark, is
protected without the obligation of filing or registration.
Harvard is the trade name of the world famous Harvard University, and it is also a
trademark of Harvard University. Under Article 8 of the Paris Convention, as well as
Section 37 of R.A. No. 166, Harvard University is entitled to protection in the
Philippines of its trade name Harvard even without registration of such trade name

Pursuant to the Paris Convention for the Protection of Industrial

Property to which the Philippines is a signatory, you are hereby
directed to reject all pending applications for Philippine
registration of signature and other world-famous trademarks by
applicants other than its original owners or users.
The conflicting claims over internationally known trademarks
involve such name brands as Lacoste, Jordache, Vanderbilt,
Sasson, Fila, Pierre Cardin, Gucci, Christian Dior, Oscar de la Renta,
Calvin Klein, Givenchy, Ralph Lauren, Geoffrey Beene, Lanvin and
Ted Lapidus.
It is further directed that, in cases where warranted, Philippine
registrants of such trademarks should be asked to surrender their
certificates of registration, if any, to avoid suits for damages and
other legal action by the trademarks foreign or local owners or
original users.
You are also required to submit to the undersigned a progress
report on the matter.
For immediate compliance.27

in the Philippines. This means that no educational entity in the Philippines can use
the trade name Harvard without the consent of Harvard University. Likewise, no

In a Memorandum dated 25 October 1983, then Minister of Trade and Industry

entity in the Philippines can claim, expressly or impliedly through the use of the

Roberto Ongpin affirmed the earlier Memorandum of Minister Villafuerte. Minister

name and mark Harvard, that its products or services are authorized, approved, or

Ongpin directed the Director of Patents to implement measures necessary to comply

licensed by, or sourced from, Harvard University without the latters consent.

with the Philippines obligations under the Paris Convention, thus:

Article 6bis of the Paris Convention has been administratively implemented in the
Philippines through two directives of the then Ministry (now Department) of Trade,
which directives were upheld by this Court in several cases. 25 On 20 November
1980, then Minister of Trade Secretary Luis Villafuerte issued a Memorandum

1.

Whether the trademark under consideration is

well-known in the Philippines or is a mark
already belonging to a person entitled to the
benefits of the CONVENTION, this should be
established, pursuant to Philippine Patent Office
procedures in inter partes and ex parte cases,
according to any of the following criteria or
any combination thereof:

directing the Director of Patents to reject, pursuant to the Paris Convention, all
pending applications for Philippine registration of signature and other world-famous
trademarks by applicants other than their original owners.26 The Memorandum
states:

(a) a declaration by the Minister of Trade and Industry that the

trademark being considered is already well-known in the
Philippines such that permission for its use by other than its
original owner will constitute a reproduction, imitation, translation
or other infringement;

(b) that the trademark is used in commerce internationally,

supported by proof that goods bearing the trademark are sold on
an international scale, advertisements, the establishment of
factories, sales offices, distributorships, and the like, in different
countries, including volume or other measure of international
trade and commerce;
(c) that the trademark is duly registered in the industrial
property office(s) of another country or countries, taking
into consideration the dates of such registration;
(d) that the trademark has been long established and obtained
goodwill and general international consumer recognition as
belonging to one owner or source;
(e) that the trademark actually belongs to a party claiming
ownership and has the right to registration under the provisions of
the aforestated PARIS CONVENTION.

To be protected under the two directives of the Ministry of Trade, an internationally

well-known mark need not be registered or used in the Philippines. 32 All that is
required is that the mark is well-known internationally and in the Philippines for
identical or similar goods, whether or not the mark is registered or used in the
Philippines. The Court ruled in Sehwani, Incorporated v. In-N-Out Burger, Inc.:33

The fact that respondents marks are neither registered

nor used in the Philippines is of no moment. The scope of
protection initially afforded by Article 6bis of the Paris Convention
has been expanded in the 1999 Joint Recommendation Concerning
Provisions on the Protection of Well-Known Marks, wherein the
World Intellectual Property Organization (WIPO) General Assembly
and the Paris Union agreed to a nonbinding recommendation
that a well-known mark should be protected in a country
even if the mark is neither registered nor used in that
country. Part I, Article 2(3) thereof provides:

2.

The word trademark, as used in this MEMORANDUM, shall

include tradenames, service marks, logos, signs, emblems,
insignia or other similar devices used for identification and
recognition by consumers.

(3) [Factors Which Shall Not Be Required] (a) A Member State shall
not require, as a condition for determining whether a mark is a
well-known mark:

3.

The Philippine Patent Office shall refuse all applications for, or

cancel the registration of, trademarks which constitute a
reproduction, translation or imitation of a trademark owned by a
person, natural or corporate, who is a citizen of a country
signatory to the PARIS CONVENTION FOR THE PROTECTION OF
INDUSTRIAL PROPERTY.

(i) that the mark has been used in, or that the mark has been
registered or that an application for registration of the mark has
been filed in or in respect of, the Member State:

x x x x28 (Emphasis supplied)

In Mirpuri, the Court ruled that the essential requirement under Article 6bis of the

(ii) that the mark is well known in, or that the mark has been
registered or that an application for registration of the mark has
been filed in or in respect of, any jurisdiction other than the
Member State; or
(iii) that the mark is well known by the public at large in the
Member State.34 (Italics in the original decision; boldface supplied)

Paris Convention is that the trademark to be protected must be well-known in the

country where protection is sought.29 The Court declared that the power to
determine whether a trademark is well-known lies in the competent authority of the
country of registration or use.30 The Court then stated that the competent authority
would either be the registering authority if it has the power to decide this, or the
courts of the country in question if the issue comes before the courts. 31

Indeed, Section 123.1(e) of R.A. No. 8293 now categorically states that a mark
which is considered by the competent authority of the Philippines to be well-known
internationally and in the Philippines, whether or not it is registered here,
cannot be registered by another in the Philippines. Section 123.1(e) does not require
that the well-known mark be used in commerce in the Philippines but only that it be
well-known in the Philippines. Moreover, Rule 102 of the Rules and Regulations on

Trademarks, Service Marks, Trade Names and Marked or Stamped Containers, which
implement R.A. No. 8293, provides:
Since any combination of the foregoing criteria is sufficient to determine that a
Rule 102. Criteria for determining whether a mark is well-known. In
determining whether a mark is well-known, the following criteria
or any combination thereof may be taken into account:
(a) the duration, extent and geographical area of any use of the
mark, in particular, the duration, extent and geographical area of
any promotion of the mark, including advertising or publicity and
the presentation, at fairs or exhibitions, of the goods and/or
services to which the mark applies;
(b) the market share, in the Philippines and in other countries, of
the goods and/or services to which the mark applies;

mark is well-known, it is clearly not necessary that the mark be used in commerce in
the Philippines. Thus, while under the territoriality principle a mark must be used in
commerce in the Philippines to be entitled to protection, internationally well-known
marks are the exceptions to this rule.

In the assailed Decision of the Office of the Director General dated 21 April 2008,
the Director General found that:

(c) the degree of the inherent or acquired distinction of the mark;

(d) the quality-image or reputation acquired by the mark;
(e) the extent to which the mark has been registered in the world;
(f) the exclusivity of registration attained by the mark in the world;
(g) the extent to which the mark has been used in the world;
(h) the exclusivity of use attained by the mark in the world;
(i) the commercial value attributed to the mark in the world;
(j) the record of successful protection of the rights in the mark;
(k) the outcome of litigations dealing with the issue of whether the
mark is a well-known mark; and
(l) the presence or absence of identical or similar marks validly
registered for or used on identical or similar goods or services and
owned by persons other than the person claiming that his mark is
a well-known mark. (Emphasis supplied)

Traced to its roots or origin, HARVARD is not an ordinary word. It

refers to no other than Harvard University, a recognized and
respected institution of higher learning located in Cambridge,
Massachusetts, U.S.A. Initially referred to simply as the new
college, the institution was named Harvard College on 13
March 1639, after its first principal donor, a young clergyman
named John Harvard. A graduate of Emmanuel College,
Cambridge in England, John Harvard bequeathed about four
hundred books in his will to form the basis of the college library
collection, along with half his personal wealth worth several
hundred pounds. The earliest known official reference to Harvard
as a university rather than college occurred in the new
Massachusetts Constitution of 1780.
Records also show that the first use of the name HARVARD was in
1638 for educational services, policy courses of instructions and
training at the university level. It has a Charter. Its first
commercial use of the name or mark HARVARD for Class 25 was
on 31 December 1953 covered by UPTON Reg. No. 2,119,339 and
2,101,295. Assuming in arguendo, that the Appellate may have
used the mark HARVARD in the Philippines ahead of the Appellant,
it still cannot be denied that the Appellants use thereof was
decades, even centuries, ahead of the Appellees. More
importantly, the name HARVARD was the name of a person whose
deeds were considered to be a cornerstone of the university. The
Appellants logos, emblems or symbols are owned by Harvard
University. The name HARVARD and the logos, emblems or
symbols are endemic and cannot be separated from the
institution.35

Finally, in its assailed Decision, the Court of Appeals ruled:

Cambridge, Massachusetts, U.S.A., internationally known as one of the leading

educational institutions in the world. As such, even before Harvard University

Records show that Harvard University is the oldest and one of the
foremost educational institutions in the United States, it being
established in 1636. It is located primarily in Cambridge,
Massachusetts and was named after John Harvard, a puritan
minister who left to the college his books and half of his estate.

applied for registration of the mark Harvard in the Philippines, the mark was
already protected under Article 6bis and Article 8 of the Paris Convention. Again,
even without applying the Paris Convention, Harvard University can invoke Section
4(a) of R.A. No. 166 which prohibits the registration of a mark which may disparage

The mark Harvard College was first used in commerce in the

United States in 1638 for educational services, specifically,
providing courses of instruction and training at the university level
(Class 41). Its application for registration with the United States
Patent and Trademark Office was filed on September 20, 2000 and
it was registered on October 16, 2001. The marks Harvard and
Harvard Ve ri tas Shield Symbol were first used in commerce in
the the United States on December 31, 1953 for athletic uniforms,
boxer shorts, briefs, caps, coats, leather coats, sports coats, gym
shorts, infant jackets, leather jackets, night shirts, shirts, socks,
sweat pants, sweatshirts, sweaters and underwear (Class 25). The
applications for registration with the USPTO were filed on
September 9, 1996, the mark Harvard was registered on
December 9, 1997 and the mark Harvard Ve ri tas Shield
Symbol was registered on September 30, 1997.36

We also note that in a Decision37 dated 18 December 2008 involving a separate case
between Harvard University and Streetward International, Inc., 38 the Bureau of Legal
Affairs of the IPO ruled that the mark Harvard is a well-known mark. This
Decision, which cites among others the numerous trademark registrations of
Harvard University in various countries, has become final and executory.

There is no question then, and this Court so declares, that Harvard is a well-known
name and mark not only in the United States but also internationally, including the
Philippines. The mark Harvard is rated as one of the most famous marks in the
world. It has been registered in at least 50 countries. It has been used and promoted
extensively in numerous publications worldwide. It has established a considerable
goodwill worldwide since the founding of Harvard University more than 350 years
ago. It is easily recognizable as the trade name and mark of Harvard University of

or falsely suggest a connection with persons, living or dead, institutions,

beliefs x x x.

WHEREFORE, we DENY the petition. We AFFIRM the 24 October 2008 Decision

and 8 January 2009 Resolution of the Court of Appeals in CA-G.R. SP No. 103394.

SO ORDERED.