No.

33
BIRKENSTOCK v.PHILIPPINE SHOE EXPO
G.R. No. 194307, November 20, 2013

FACTS:

Birkenstock Orthopaedie GMBH applied for the trademark registration of BIRKENSTOCK with
the IPO. Philippine Shoe Expo opposed the application on account of prior use for more than 16
years and registration of the mark BIRKENSTOCK AND DEVICE. The Bureau of legal Affairs
(BLA) sustained the opposition because: (i) the competing marks are confusingly similar and are
used on the same and related goods; (ii) Birkenstock Orthopaedie failed to prove actual use of the
mark in trade and business in the Philippines; (iii) prior right over the mark was not lost even
though the registration of BIRKENSTOCK AND DEVICE was cancelled, as there was proof of
the marks continuous and uninterrupted use in commerce in the Philippines; and (iv)
BIRKENSTOCK is not well -known in the Philippines and internationally. The IPO Director
General set aside the BLAs ruling. The IPO Director General found Birkenstock Orthopaedie to be
the true and lawful owner and prior user of the BIRKENSTOCK marks. The IPO Director
General further held that BIRKENSTOCK AND DEVICE is no longer an impediment to the
registration of BIRKENSTOCK as the formers registration had been cancelled on account of the
registrants failure to file the 10th year Declaration of Use. The Court of Appeals reinstated the
decision of the BLA.

ISSUE:

Wether or not the cancellation of the trademark registration due to failure to file the Declaration of
Use is tantamount to a waiver of the registrants right or interest over the trademark?

HELD:

YES. The Supreme Court ruled in favor of Birkenstock Orthopaedie for the following
reasons: (i) under the former trademark law, Republic Act 166, failure to file the Declaration of Use
results in the automatic cancellation of the trademark which in turn is tantamount to the
abandonment or withdrawal of the registrants right or interest over the trade mark. Applying this
rule, the registrant is deemed to have abandoned its right or interest over the mark
BIRKENSTOCK AND DEVICE on account of its failure to file the 10th year Declaration of Use;
and (ii) Birkenstock Orthopaedie proved its true and lawful ownership of the mark Birkenstock.
Evidence was submitted on (i) the use of the mark in Europe since 1774, when its inventor, Johann
Birkenstock, used the mark on his line of quality footwear, which use was continued by numerous
generations of his kin; and (ii) the worldwide registration of the mark BIRKENSTOCK. The
Supreme Court did not find credible the evidence of Philippine Shoe Expo as it was able to submit
only copies of sales invoices and advertisements, which showed merely its transactions involving
the same. The Supreme Court found the registration of BIRKENSTOCK AND DEVICE to have
been done in bad faith and found it highly incredible that Philippine Shoe Expo came up on its own
with the mark BIRKENSTOCK, obviously of German origin and a highly distinct and arbitrary
mark. The Supreme Court pointed out that Philippine Shoe Expo obviously knew of the existence of
BIRKENSTOCK and its use by Birkenstock Orthopaedie and that it clearly intended to take
advantage of the goodwill generated by the BIRKENSTOCK mark.

Finally, the Supreme Court reiterated the principle that registration of the trademark merely creates
a prima facie presumption of ownership which yields to superior evidence of actual and real
ownership of a trademark. In the words of the Supreme Court:
No.33
Clearly, it is not the application or registration of a trademark that vests ownership thereof, but it is
the ownership of a trademark that confers the right to register the same. A trademark is an industrial
property over which its owner is entitled to property rightswhich cannot be appropriated by
unscrupulous entities that, in one way or another, happen to register such trademark ahead of its true
and lawful owner. The presumption of ownership accorded to a registrant must then necessarily
yield to superior evidence of actual and real ownership of a trademark.