243 G.R. No.

L-27906 January 8, 1987 AUTHOR: Enriquez

NOTES:
CONVERSE RUBBER CORPORATION, petitioner,
vs.
UNIVERSAL RUBBER PRODUCTS, INC. and
TIBURCIO S. EVALLE, DIRECTOR OF
PATENTS, respondents.

TOPIC: Effects of Failure to Secure SEC License

PONENTE: Fernan
FACTS:
The Petitioner's corporate name is "CONVERSE RUBBER CORPORATION" and is organized under the laws of
Massachusetts, USA. It manufactures rubber shoes and uses the trademarks "CHUCK TAYLOR "and "ALL STAR AND
DEVICE" It is not licensed to do business in the Philippines and it is not doing business on its own in the Philippines.

Respondent Universal Rubber Products, Inc. filed an application with the Philippine Patent office for registration of the
trademark "UNIVERSAL CONVERSE AND DEVICE" used on rubber shoes and rubber slippers.

Petitioner Converse Rubber Corporation filed its opposition to the application for registration on grounds that:

 The trademark sought to be registered is confusingly similar to the word "CONVERSE" which is part of
petitioner's corporate name "CONVERSE RUBBER CORPORATION" and;
 The registration of respondent's trademark will cause great and irreparable injury to the business reputation and
goodwill of petitioner in the Philippines

The Director of Patents dismissed the opposition of the petitioner and gave due course to respondent's application. It stated
that:

 The Petitioner failed to present proof that the single word "CONVERSE' in its corporate name has become so
Identified with the corporation that whenever used, it designates to the mind of the public that particular
corporation
 Petitioner’s proof of its corporate personality cannot establish the use of the word "CONVERSE" in any
sense, as it is already stipulated that it is not licensed to do business in the Philippines, and is not doing
business of its own in the Philippines. If so, it will be futile for it to establish that "CONVERSE" as part of
its corporate name Identifies its rubber shoes.
 Since the petitioner is not licensed to do business in the country and is actually not doing business on its own
in the Philippines, it has no name to protect in the forum and thus, it is futile for it to establish that
"CONVERSE" as part of its corporate name identifies its rubber shoes.

Petitioner filed an MR which was denied. Hence, this petition for Review to the SC.
ISSUE(S): Whether or not the Petitioner has personality to sue

HELD: Yes.

RATIO:

The SC cited the case of Lacoste vs Fernandez. It stated that:

A foreign corporation which has never done any business in the Philippines and which is unlicensed and unregistered to do
business here, but is widely and favorably known in the Philippines through the use of its products bearing its corporate
and tradename, has a legal right to maintain an action in the Philippines to restrain the residents and inhabitants from
organizing a corporation bearing the same name as the foreign corporation. Especially, when it appears that the domestic
corporation has personal knowledge of the existence of such a foreign corporation, and it is apparent that the purpose of
the proposed domestic corporation is to deal and trade in the same goods as those of the foreign corporation.
It needs no license to sue before Philippine Courts on an isolated transaction. Such as, in this case, an infringement of
trademark.

Also, the Philippines is a party to the treaty for the Protection of Industrial Property. The said treaty provides that “a trade
name [corporate 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 the trademark.” Hence, the requirement of registration is dispensed with since the Petitioner
has its business in a foreign country which is a party to an international treaty relating to the repression of infringement of
trademark to which the Philippines is also a party.

IP Issue just in case Papa P. asks:

Whether Universal Rubber can use “Converse”

No. Converse Rubber has earned a business reputation and goodwill in the Philippines. The word “converse” has been
associated with its products, “converse chuck Taylor,” “Converse all Star,” “All Star Converse Chuck Taylor,” or
“Converse Shoes Chuck and Taylor.” “Converse” has grown to be identified with Converse rubber products and has
acquired a second meaning within the context of trademark and trade name laws. There is confusing similarity
between “Universal converse and Device” and “Converse Chuck Taylor” and “All Star Device” which would confuse the
public to the prejudice of Converse Rubber’ inasmuch as “Universal Converse and Device” is imprinted in a circular
manner on the side of its rubber shoes, similar to that of “Converse Chuck Taylor.”
CASE LAW/ DOCTRINE:

A foreign corporation not doing business in the Philippines but is widely known in the Philippines through the use of its
products bearing its corporate and tradename, has a legal right to maintain an action in the Philippines to restrain the
residents and inhabitants from organizing a corporation bearing the same name as the foreign corporation.
DISSENTING/CONCURRING OPINION(S):