ECOLE DE CUISINE MANILLE V. COINTREAU (G.R. NO.

185830)
FACTS: Respondent Cointreau, a partnership registered under the laws of France, applied for the registration of the mark ‘Le Cordon
Bleu & Device.’ Petitioner Ecole De Cuisine opposed on the ground that it is the owner of the mark ‘Le Cordon Bleu, Ecole De Cuisine
Manille’ used in its culinary activities and restaurant business and that the registration will create confusion to the public. Respondent
Cointreau answered claiming it is the true and lawful owner of the mark and had long been using it worldwide. The IPO Bureau of
Legal Affairs sustained petitioner’s opposition stating that Cointreau had no prior use of the mark in the Philippines to be entitled to a
proprietary right over it. The IPO Director General reversed the decision and allowed the mark’s registration holding that under RA
No. 166, actual use in the Philippines is not necessary to acquire ownership of the mark.

ISSUE: WON respondent’s prior use of the mark is a requirement for its registration.

HELD: YES.
Under Section 2 of R.A. No. 166, in order to register a trademark, one must be the owner thereof and must have actually used the
mark in commerce in the Philippines for 2 months prior to the application for registration. Section 2-A of the same law sets out to
define how one goes about acquiring ownership thereof. Under Section 2-A, it is clear that actual use in commerce is also the test of
ownership but the provision went further by saying that the mark must not have been so appropriated by another. Additionally, it is
significant to note that Section 2-A does not require that the actual use of a trademark must be within the Philippines. Thus, as correctly
mentioned by the CA, under R.A. No. 166, one may be an owner of a mark due to its actual use but may not yet have the right to
register such ownership here due to the owner’s failure to use the same in the Philippines for 2 months prior to registration. In the
instant case, it is undisputed that Cointreau has been using the subject mark in France, prior to Ecole’s averred first use of the same
in the Philippines, of which the latter was fully aware thereof. On the other hand, Ecole has no certificate of registration over the subject
mark but only a pending application. Under the foregoing circumstances, even if Ecole was the first to use the mark in the Philippines,
it cannot be said to have validly appropriated the same.

In any case, the present law on trademarks, Republic Act No. 8293, otherwise known as the Intellectual Property Code of the
Philippines, as amended, has already dispensed with the requirement of prior actual use at the time of registration. Thus, there is
more reason to allow the registration of the subject mark under the name of Cointreau as its true and lawful owner.