Case Digest in Intellectual Property
Case Digest in Intellectual Property
THE
DIRECTOR OF PATENTS and PURITAN SPORTSWEAR
CORPORATION, respondents.
FACTS:
General Garments Corp., organized and existing under the
PH laws, is the owner of the trademark PURITAN issued on Nov
15, 1962 by the Philippine Patent Office (PPO) for assorted mens
wear (sweaters, shirts, jackets, undershirts, briefs)
On March 9, 1964, PURITAN SPORTSWEAR CORP., organized
and existing under the laws of Pennsylvania, USA, filed a petition
with the PPO for the cancellation of the trademark PURITAN,
alleging: 1) ownership and prior use in the Ph of the said trademark
on the same kind of goods, which use it had not abandoned 2)
registration by Gen Garments Corp. had been obtained fraudulently
and in violation of Sec 17 (c) of RA No. 166 in relation to section 4
(d) thereof.
General Garments move to dismiss the petition on several
grounds, synthesized in one issue: Whether or not PURITAN
SPORTSWEAR CORP., which is a foreign corporation not
licensed to do business and not doing business in the Ph,
has legal capacity to maintain a suit in the PPO for
cancellation of a trademark registered therein.
Dir. Of Patents denied the motion to dismiss and likewise the
motion for reconsideration. Thus, this instant petition for review.
PETITIONERS CONTENTIONS:
1. That respondent being a foreign corporation, not licensed to do
and is not doing business in the Ph, is not considered as a person
under the PH laws and consequently is not comprehended within
the term any person who may apply for cancellation of a mark or
trade-name under Sec 17 (c) of Trademark Law
2) That under Sec 37 of the Trademark Law respondent is not
entitled to the benefits of the said law because the Ph is not a
signatory to any international treaty or convention relating to
marks or tradenames or to the repression of unfair competition.
ISSUE:
HELD:
1st CONTENTION:
Whether the respondent is a juridical person is beyond
serious dispute. The fact that it may not transact business in the Ph
unless it has obtained a license for that purpose, nor maintain a
suit in the Ph courts for the recovery of any debt, claim or demand
without such license (Secs. 69, 69, Corpo Law) does not make the
respondent any less a juridical person. The implication of the said
provision was that it was not the purpose of the legislature to
exclude a foreign corporation which happens to obtain an isolated
order for business from the Ph from securing redress in the Ph
courts.
To recognize respondent as a juridical person, does not
resolve the issue in this case. Respondent is not suing in our courts
for the recovery of ay debt, claim or demand, for which a license
to transact in the Ph is required by Sec 69 of the Corporation Law.
Respondent went to the PPO on a petition for cancellation of a
trademark registered by petitioner, invoking Sec 17 (c) in rel to Sec
4(d) of the Trademark Law.
In Western Equipment & Supply Co. vs. Reyes, it was laid
down that:
A foreign corporation which has never done business in the Ph and
which is unlicensed and unregistered to do business here, but is
wisely and favorably known in the Ph through the use therein of its
products, bearing its corporate and trade name has a legal right to
maintain an action in the islands.
The purpose of such a suit is to protect its reputation, corporate
name and goodwill which has been established through the natural
development of its trade for a long period of years, in the doing of
which it does not seek to enforce any legal contract rights arising
from, or growing out of any business which it has transacted in the
Ph Islands.
The right to the use of the corporate or trade name is a property
right, a right in rem, which it may assert and protect in any of the
courts of the world, even in jurisdictions where it does not transact
business.
Sec 17 (c) and Sec 4(d) of the Trademark Law provides:
Sec 17. Grounds for cancellation. Any person, who believes that
he is or will be damaged by the registration of a mark or tradename, may, upon the payment of the prescribed fee, apply to
cancel said registration upon any of the ff grounds:
XXXX
(c) That the registration was obtained fraudulently or
contrary to the provision of sec 4, chapt 2 thereof; XXX
OSCAR
C.
FERNANDEZ
HEMANDAS, respondents.
FACTS:
AND
GOBINDRAM
PHILIP
Facts:
Petitioner's contention:
Philip Morris and the 2 other companies as subsidiaries of
Philip Morris. The last 2 are suing on isolated transactions. As
registered owners of "MARK VII", "MARK TEN", and "LARK" per
certificates of registration issued by the Philippine Patent Office on
April 26, 1973, May 28, 1964, and March 25, 1964, plaintiffspetitioners asserted that defendant Fortune Tobacco Corporation
has no right to manufacture and sell cigarettes bearing the
allegedly identical or confusingly similar trademark "MARK" in
contravention of Section 22 of the Trademark Law, and should,
therefore, be precluded during the pendency of the case from
performing the acts complained of via a preliminary injunction
Defendant's contention:
Fortune
Tobacco
Corporation
admitted
petitioners'
certificates of registration with the Philippine Patent Office subject
to the affirmative and special defense on misjoinder of party
plaintiffs. It claims that the word mark is a common word which
cannot be exclusively appropriated.
The fact that international law has been made part of the
law of the land does not by any means imply the primacy of
international law over national law in the municipal sphere. Under
the doctrine of incorporation as applied in most countries, rules of
international law are given a standing equal, not superior, to
national legislative enactments.
Ratio Decidendi:
There is no proof whatsoever that any of plaintiffs' products
which they seek to protect from any adverse effect of the
trademark applied for by defendant, is in actual use and available
for commercial purposes anywhere in the Philippines.
Petition dismissed
PHILIP
Any slight goodwill obtained by the product before World War II was
completely abandoned and lost in the more than 35 years that
passed since Manila's liberation from Japan. The petitioner never
used the trademark either before or after the war. It is also not the
successor-in-interest of Gerbec & Hrdina and there there was no
privity of interest between them, Furthermore, the Czech trademark
has long been abandoned in Czechoslovakia.
BATA
INDUSTRIES,
LTD.,
respondents.
Facts:
The respondent New Olympian Rubber Products sought to register
the mark "BATA" for casual rubber shoe products, alleging it had
used the said mark since the 1970s. The petitioner, a Canadian
corporation opposed with its allegations that it owns and has not
abandoned said trademark. The petitioner has no license to do
business in the Philippines and the trademark has never been
registered in the Philippines by any foreign entity. Bata Industries
does not sell footwear under the said trademark in the Philippines
nor does it have any licensing agreement with any local entity to
sell its product.
Evidence show that earlier, even before the World War II, Bata
shoes made by Gerbec and Hrdina (Czech company) were already
sold in the country. Some shoes made by the petitioner may have
been sold in the Philippines ntil 1948. On the other hand,
respondent spent money and effort to popularize the trademark
"BATA" since the 70's. Moreover, it also secures 3 copyright
registrations for the word "BATA". The Philippine Patent Office (PPO)
dismissed the opposition by the petitioner while the Court of
Appeals (CA) reversed said decision. However, a 2nd resolution by
the CA affirmed the PPO decision.
Issue: Does the petitioner have the right to protect its
goodwill alleged to be threatened with the registration of
the mark?