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Birkenstock Orthopaedie GMBH and Co. KG v. Phil Shoe Expo Marketing Corp. G.R. No. 194307 - 2013 PDF
Birkenstock Orthopaedie GMBH and Co. KG v. Phil Shoe Expo Marketing Corp. G.R. No. 194307 - 2013 PDF
SECOND DIVISION
DECISION
PERLAS-BERNABE, J : p
Assailed in this Petition for Review onCertiorari 1 are the Court of Appeals' (CA)
Decision 2dated June 25, 2010 and Resolution 3 dated October 27, 2010 in CA-G.R. SP No.
112278 which reversed and set aside the Intellectual Property Office (IPO) Director General's
Decision 4 dated December 22, 2009 that allowed the registration of various trademarks in
favor of petitioner Birkenstock Orthopaedie GmbH & Co. KG.
The Facts
Petitioner, a corporation duly organized and existing under the laws of Germany, applied
for various trademark registrations before the IPO, namely: (a) "BIRKENSTOCK" under
Trademark Application Serial No. (TASN) 4-1994-091508 for goods falling under Class 25 of
the International Classification of Goods and Services (Nice Classification) with filing date of
March 11, 1994;(b)"BIRKENSTOCK BAD HONNEF-RHEIN & DEVICE COMPRISING OF
ROUND COMPANY SEAL AND REPRESENTATION OF A FOOT, CROSS AND SUNBEAM"
under TASN 4-1994-091509 for goods falling under Class 25 of the Nice Classification with
filing date of March 11, 1994; and(c) "BIRKENSTOCK BAD HONNEF-RHEIN & DEVICE
COMPRISING OF ROUND COMPANY SEAL AND REPRESENTATION OF A FOOT, CROSS
AND SUNBEAM" under TASN 4-1994-095043 for goods falling under Class 10 of the Nice
Classification with filing date of September 5, 1994 (subject applications). 5 AcDHCS
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The aforesaid cancellation of Registration No. 56334 paved the way for the publication
of the subject applications in the IPO e-Gazette on February 2, 2007. 11 In response,
respondent filed three (3) separate verified notices of oppositions to the subject applications
docketed as Inter PartesCase Nos. 14-2007-00108, 14-2007-00115, and 14-2007-
00116, 12 claiming, inter alia, that: (a) it, together with its predecessor-in-interest, has been
using Birkenstock marks in the Philippines for more than 16 years through the mark
"BIRKENSTOCK AND DEVICE"; (b) the marks covered by the subject applications are
identical to the one covered by Registration No. 56334 and thus, petitioner has no right to the
registration of such marks; (c) on November 15, 1991, respondent's predecessor-in-interest
likewise obtained a Certificate of Copyright Registration No. 0-11193 for the word
"BIRKENSTOCK"; (d) while respondent and its predecessor-in-interest failed to file the 10th
Year DAU, it continued the use of "BIRKENSTOCK AND DEVICE" in lawful commerce;
and (e) to record its continued ownership and exclusive right to use the "BIRKENSTOCK"
marks, it has filed TASN 4-2006-010273 as a "re-application" of its old registration,
Registration No. 56334. 13 On November 13, 2007, the Bureau of Legal Affairs (BLA) of the
IPO issued Order No. 2007-2051 consolidating the aforesaidinter partes cases (Consolidated
Opposition Cases).14 CHEIcS
Finding the IPO Director General's reversal of the BLA unacceptable, respondent filed a
petition for review with the CA.
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Ruling of the CA
In its Decision 21 dated June 25, 2010, the CA reversed and set aside the ruling of the
IPO Director General and reinstated that of the BLA. It disallowed the registration of the
subject applications on the ground that the marks covered by such applications "are
confusingly similar, if not outright identical" with respondent's mark. 22 It equally held that
respondent's failure to file the 10th Year DAU for Registration No. 56334 "did not deprive
petitioner of its ownership of the "BIRKENSTOCK' mark since it has submitted substantial
evidence showing its continued use, promotion and advertisement thereof up to the
present." 23 It opined that when respondent's predecessor-in-interest adopted and started its
actual use of "BIRKENSTOCK," there is neither an existing registration nor a pending
application for the same and thus, it cannot be said that it acted in bad faith in adopting and
starting the use of such mark. 24 Finally, the CA agreed with respondent that petitioner's
documentary evidence, being mere photocopies, were submitted in violation of Section 8.1 of
Office Order No. 79, Series of 2005 (Rules on Inter Partes Proceedings).
Dissatisfied, petitioner filed a Motion for Reconsideration 25 dated July 20, 2010, which
was, however, denied in a Resolution 26 dated October 27, 2010. Hence, this petition. 27
Issues Before the Court
The primordial issue raised for the Court's resolution is whether or not the subject marks
should be allowed registration in the name of petitioner.
The Court's Ruling
The petition is meritorious.
A. Admissibility of Petitioner's
Documentary Evidence.
In its Comment 28 dated April 29, 2011, respondent asserts that the documentary
evidence submitted by petitioner in the Consolidated Opposition Cases, which are mere
photocopies, are violative of Section 8.1 of the Rules on Inter PartesProceedings, which
requires certified true copies of documents and evidence presented by parties in lieu of
originals. 29 As such, they should be deemed inadmissible.
The Court is not convinced.
It is well-settled that "the rules of procedure are mere tools aimed at facilitating the
attainment of justice, rather than its frustration. A strict and rigid application of the rules must
always be eschewed when it would subvert the primary objective of the rules, that is, to
enhance fair trials and expedite justice. Technicalities should never be used to defeat the
substantive rights of the other party. Every party-litigant must be afforded the amplest
opportunity for the proper and just determination of his cause, free from the constraints of
technicalities." 30 "Indeed, the primordial policy is a faithful observance of [procedural rules],
and their relaxation or suspension should only be for persuasive reasons and only in
meritorious cases, to relieve a litigant of an injustice not commensurate with the degree of his
thoughtlessness in not complying with the procedure prescribed." 31 This is especially true with
quasi-judicial and administrative bodies, such as the IPO, which are not bound by technical
rules of procedure.32 On this score, Section 5 of the Rules on Inter Partes Proceedings
provides: CSTcEI
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The Director shall notify the registrant who files the above-prescribed affidavits
of his acceptance or refusal thereof and, if a refusal, the reasons therefor. (Emphasis
and underscoring supplied)
The aforementioned provision clearly reveals that failure to file the DAU within the
requisite period results in the automatic cancellation of registration of a trademark. In turn,
such failure is tantamount to the abandonment or withdrawal of any right or interest the
registrant has over his trademark. 36
In this case, respondent admitted that it failed to file the 10th Year DAU for Registration
No. 56334 within the requisite period, or on or before October 21, 2004. As a consequence, it
was deemed to have abandoned or withdrawn any right or interest over the mark
"BIRKENSTOCK." Neither can it invoke Section 236 37 of the IP Code which pertains to
intellectual property rights obtained under previous intellectual property laws, e.g., RA 166,
precisely because it already lost any right or interest over the said mark.
Besides, petitioner has duly established its true and lawful ownership of the mark
"BIRKENSTOCK."
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Under Section 2 38 of RA 166, which is also the law governing the subject applications,
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 two (2) months prior to the application for
registration. Section 2-A 39 of the same law sets out to define how one goes about acquiring
ownership thereof. Under the same section, 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. Significantly, to be an owner, Section 2-A does not require that the
actual use of a trademark must be within the Philippines. Thus, under RA 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 two (2) months prior to
registration. 40 EaSCAH
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"BIRKENSTOCK" in various countries and that it has used such mark in different countries
worldwide, including the Philippines. 44
On the other hand, aside from Registration No. 56334 which had been cancelled,
respondent only presented copies of sales invoices and advertisements, which are not
conclusive evidence of its claim of ownership of the mark "BIRKENSTOCK" as these merely
show the transactions made by respondent involving the same. 45 ETDHaC
In view of the foregoing circumstances, the Court finds the petitioner to be the true and
lawful owner of the mark "BIRKENSTOCK" and entitled to its registration, and that respondent
was in bad faith in having it registered in its name. In this regard, the Court quotes with
approval the words of the IPO Director General, viz.:
The facts and evidence fail to show that [respondent] was in good faith in using
and in registering the mark BIRKENSTOCK. BIRKENSTOCK, obviously of German
origin, is a highly distinct and arbitrary mark. It is very remote that two persons did coin
the same or identical marks. To come up with a highly distinct and uncommon mark
previously appropriated by another, for use in the same line of business, and without
any plausible explanation, is incredible. The field from which a person may select a
trademark is practically unlimited. As in all other cases of colorable imitations, the
unanswered riddle is why, of the millions of terms and combinations of letters and
designs available, [respondent] had to come up with a mark identical or so closely
similar to the [petitioner's] if there was no intent to take advantage of the goodwill
generated by the [petitioner's] mark. Being on the same line of business, it is highly
probable that the [respondent] knew of the existence of BIRKENSTOCK and its use by
the [petitioner], before [respondent] appropriated the same mark and had it registered
in its name. 46
WHEREFORE, the petition is GRANTED. The Decision dated June 25, 2010 and
Resolution dated October 27, 2010 of the Court of Appeals in CA-G.R. SP No. 112278
are REVERSED and SET ASIDE. Accordingly, the Decision dated December 22, 2009 of the
IPO Director General is hereby REINSTATED.
SO ORDERED.
Brion, Del Castillo, Perez and Reyes, * JJ.,concur.
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