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Republic Act No. 166, as amended, in relation to Section 4(d) thereof. On March
30, 1964 General Garments Corporation moved to dismiss the petition.
Issue: Whether or not Puritan Sportswear Corporation, which is a foreign
corporation not licensed to do business and not doing business in the
Philippines, has legal capacity to maintain a suit in the Philippine Patent Office
for cancellation of a trademark registered therein.
Held:
Yes. Respondent is not suing in our courts "for the recovery of any debt, claim or
demand," for which a license to transact business in the Philippines is required
by Section 69 of the Corporation Law, subject only to the exception already
noted. The purpose of such a suit is to protect its reputation, corporate name and
goodwill which has been established, through the natural development of its
trade for a long period of years, in the doing of which it does not seek to enforce
any legal or contract rights arising from, or growing out of any business which it
has transacted in the Philippine Islands. The right to the use of the corporate or
trade name is a property right, a right in rem, which it may assert and protect in
any of the courts of the world
just the same as it may protect its tangible property, real or personal against
trespass or conversion. A foreign corporation is allowed there under to sue
"whether or not it has been licensed to do business in the Philippines" pursuant
to the Corporation Law. In any event, respondent in the present case is not suing
for infringement or unfair competition under Section 21- A, but for cancellation
under Section 17, on one of the grounds enumerated in Section 4. And while a
suit under Section 21-A requires that the mark or tradename alleged to have
been infringed has been "registered or assigned" to the suing foreign corporation,
a suit for cancellation of the registration of a mark or tradename under Section 17
has no such requirement. For such mark or tradename should not have been
registered in the first place (and consequently may be cancelled if so registered)
if it "consists of or comprises a mark or tradename which so resembles a mark or
tradename ... previously used in the Philippines by another and not abandoned,
as to be likely, when applied to or used in connection with goods, business or
services of the applicant, to cause confusion or mistake or to deceive
purchasers.
Emerald Garment vs. CA
EMERALD GARMENT MANUFACTURING CORPORATION vs. HON. COURT
OF APPEALS, BUREAU OF PATENTS, TRADEMARKS AND TECHNOLOGY
TRANSFER and H.D. LEE COMPANY, INC.
G.R. No. 100098, December 29, 1995
FACTS:
On 18 September 1981, private respondent H.D. Lee Co., Inc. filed with
the Bureau of Patents, Trademarks & Technology Transfer (BPTTT) a Petition for
Cancellation of Registration No. SR 5054 for the trademark "STYLISTIC MR.
LEE" used on skirts, jeans, blouses, socks, briefs, jackets, jogging suits, dresses,
shorts, shirts and lingerie under Class 25, issued on 27 October 1980 in the
name of petitioner Emerald Garment Manufacturing Corporation.
Private respondent averred that petitioner's trademark "so closely resembled its
own trademark, 'LEE' as previously registered and used in the Philippines cause
confusion, mistake and deception on the part of the purchasing public as to the
origin of the goods.
On 19 July 1988, the Director of Patents rendered a decision granting private
respondent's petition for cancellation and opposition to registration. The Director
of Patents, using the test of dominancy, declared that petitioner's trademark was
confusingly similar to private respondent's mark because "it is the word 'Lee'
which draws the attention of the buyer and leads him to conclude that the goods
originated from the same manufacturer. It is undeniably the dominant feature of
the mark.
ISSUE:
Whether or not a trademark causes confusion and is likely to deceive the
public is a question of fact which is to be resolved by applying the "test of
dominancy", meaning, if the competing trademark contains the main or essential
or dominant features of another by reason of which confusion and deception are
likely to result.
HELD:
The word "LEE" is the most prominent and distinctive feature of the
appellant's trademark and all of the appellee's "LEE" trademarks. It is the mark
which draws the attention of the buyer and leads him to conclude that the goods
originated from the same manufacturer. The alleged difference is too
insubstantial to be noticeable. The likelihood of confusion is further made more
probable by the fact that both parties are engaged in the same line of business.
Although the Court decided in favor of the respondent, the appellee has
sufficiently established its right to prior use and registration of the trademark
"LEE" in the Philippines and is thus entitled to protection from any infringement
upon the same. The dissenting opinion of Justice Padilla is more acceptable.