FREDCO MANUFACTURING CORPORATION v. PRESIDENT, GR No.

185917, 2011-
06-01

Facts:

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

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
Intellectual Property Office

(IPO) against respondents President and Fellows of Harvard College (Harvard

University), a corporation organized and existing under the laws of Massachusetts,
United States of America.

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
Manufacturing & Export Co., Inc. (New YorK Garments), a domestic corporation and
Fredco's predecessor-in-interest.

On 20 April 2004, Harvard University filed an administrative complaint against Fredco

before the IPO for trademark infringement and/or unfair competition with... damages.

Issues:

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 Garment

Ruling:

First, Fredco's registration of the mark "Harvard" and its identification of origin as
"Cambridge, Massachusetts" falsely suggest that Fredco or its goods are connected
with Harvard University, which uses the same mark "Harvard" and is also located in
Cambridge,... Massachusetts.

Fredco's 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
Second, the Philippines and the United States of America are both signatories to the
Paris Convention for the Protection of Industrial Property (Paris Convention).

ARTICLE 8

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)

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.

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 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 entity in the
Philippines can claim, expressly or... impliedly through the use of the name and mark
"Harvard," that its products or services are authorized, approved, or licensed by, or
sourced from, Harvard University without the latter's consent.

Principles:

As such, even before Harvard University 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 or falsely suggest a connection... with persons, living or
dead, institutions, beliefs x x x."
 SEHWANI INCORPORATED vs. IN-N-OUT BURGER, INC.

G.R. No. 171053 October 15, 2007

FACTS:

Respondent IN-N-OUT Burger, Inc., a foreign corporation (California, USA), and not
doing business in the Philippines, filed before the Bureau of Legal Affairs of the IPO, an
administrative complaint against petitioners Sehwani, Inc. and Benita’s Frites, Inc. for
violation of intellectual property rights, attorney’s fees and damages with prayer for the
issuance of a restraining order or writ of preliminary injunction.

Respondent, alleges that it is the owner of the tradename “IN-N-OUT” and trademarks
“IN-N-OUT,” “IN-N-OUT Burger & Arrow Design” and “IN-N-OUT Burger Logo” which
are used in its business since 1948 up to the present. These tradename and
trademarks were registered in the United States as well as in other parts of the world.
Petitioner Sehwani allegedly had obtained a trademark registration for the mark “IN N
OUT” (with the inside letter O formed like a star) without its authority.

In their answer with counterclaim, petitioners alleged that respondent lack the legal
capacity to sue because it was not doing business in the Philippines and that it has no
cause of action because its mark is not registered or used in the Philippines. Petitioner
Sehwani, Inc. also claimed that as the registered owner of the "IN-N-OUT" mark, it
enjoys the presumption that the same was validly acquired and that it has the exclusive
right to use the mark. Moreover, petitioners argued that other than the bare allegation of
fraud in the registration of the mark, respondent failed to show the existence of any of
the grounds for cancellation thereof under Section 151 of Republic Act (R.A.) No. 8293,
otherwise known as The Intellectual Property Code of the Philippines.

The Bureau ruled in favor of In-N-Out and cancelled the registration of Shwani.

ISSUE/S:

1. Whether or not the Respondent has the legal capacity to sue for the protection of its
trademarks albeit it is not doing business in the Philippines

2. Whether or not a ground exists for the cancellation of the Petitioners’ registration

RULING:
1. Yes. Section 160 RA No. 8293 provides for the right of foreign corporations to sue in
trademark or service mark enforcement action, provided that it meets the requirements
under Section 3 thereof, which are a) Any convention, treaty or agreement relation to
intellectual property right or the repression of unfair competition wherein Philippines is
also a party; and b) An extension therein of reciprocal rights.

Moreoever, Article 6 of The Paris Convention, which governs the protection of well-
known trademarks, is a self-executing provision and does not require legislative
enactment to give it effect in the member country. The essential requirement therein is
that the trademark must be well-known in the country where protection is sought. In this
case, Director Beltran-Abelardo found that In-n-out Burger and Arrow Design is an
internationally well known mark as evidenced by its trademark registrations around the
world and its comprehensive advertisements therein.

2. Yes. Section 151(b) of RA 8293 provides that a petition to cancel a registration of a

mark may be filed with the Bureau of Legal Affairs by any person who believes that he
is or will be damaged by the registration of a mark at any time, if the registered mark
becomes the generic name for the goods or services, or a portion thereof, for which it is
registered, or has been abandoned, or its registration was fraudulently or contrary to the
provisions of this Act, or if the registered mark is being used by or with the permission
of, the registrant so as to misrepresent the source of goods or services on or in
connection with which the mark is used. The evidence showed that not only did the
petitioners use the IN-N-OUT Burger trademark for the name of their restaurant, but
they also used identical or confusingly similar mark for their hamburger wrappers and
French-fries receptacles, thereby effectively misrepresenting the source of the goods
and services.