Canon Kabushiki v. CA

74.
[G.R. No. 120900. July 20, 2000.]

CANON KABUSHIKI KAISHA, Petitioner, v. COURT OF APPEALS and NSR RUBBER
CORPORATION, Respondents.
Legal Concepts/Definitions:
1. In Kabushiki Kaisha Isetan v. The Intermediate Appellate Court, et. al., G.R. No. 75420,
15 November 1991, the Honorable Supreme Court held that: The Paris Convention for
the Protection of Industrial Property does not automatically exclude all countries of the
world which have signed it from using a tradename which happens to be used in one
country.
2. The likelihood of confusion of goods or business is a relative concept, to be determined
only according to the particular, and sometimes peculiar, circumstances of each case.
3. The term "trademark" is defined as including "any word, name, symbol, emblem, sign or
device or any combination thereof adopted and used by a manufacturer or merchant to
identify his goods and distinguish them for those manufactured, sold or dealt in by
others."
4. Tradename is defined as including "individual names and surnames, firm names,
tradenames, devices or words used by manufacturers, industrialists, merchants,
agriculturists, and others to identify their business, vocations, or occupations; the names
or titles lawfully adopted and used by natural or juridical persons, unions, and any
manufacturing, industrial, commercial, agricultural or other organizations engaged in
trade or commerce."
5. In Faberge, Incorporated v. Intermediate Appellate Court, 9 the Director of patents
allowed the junior user to use the trademark of the senior user on the ground that the
briefs manufactured by the junior user, the product for which the trademark BRUTE was
sought to be registered, was unrelated and non-competing with the products of the
senior user consisting of after shave lotion, shaving cream, deodorant, talcum powder,
and toilet soap.
Issue:
Whether or not Canon Kabushiki could invoke the Art 8 of the Paris Convention regarding the
use of tradename in local products
Facts:
1ibrary
On January 15, 1985, private respondent NSR Rubber Corporation (private respondent) filed an
application for registration of the mark CANON for sandals in the Bureau of Patents,
Trademarks, and Technology Transfer (BPTTT). A Verified Notice of Opposition was filed by
petitioner, a foreign corporation duly organized and existing under the laws of Japan, alleging
that it will be damaged by the registration of the trademark CANON in the name of
private Respondent.
Held: NO
As far as petitioner is concerned, the fact that its tradename is at risk would call for the
protection granted by Article 8 of the Paris Convention. Petitioner calls attention to the fact that
Article 8, even as embodied in par. 6, sec. 37 of RA 166, mentions no requirement of similarity
of goods. Petitioner claims that the reason there is no mention of such a requirement, is
"because there is a difference between the referent of the name and that of the mark" 24 and
that "since Art. 8 protects the tradename in the countries of the Union, such as Japan and the
Philippines, Petitioner’s tradename should be protected here."25cralaw:red
We cannot uphold petitioner’s position.chanrob1es virtua1 1aw 1ibrary
The term "trademark" is defined by RA 166, the Trademark Law, as including "any word, name,
symbol, emblem, sign or device or any combination thereof adopted and used by a
manufacturer or merchant to identify his goods and distinguish them for those manufactured,
sold or dealt in by others." 26 Tradename is defined by the same law as including "individual
names and surnames, firm names, tradenames, devices or words used by manufacturers,
industrialists, merchants, agriculturists, and others to identify their business, vocations, or
occupations; the names or titles lawfully adopted and used by natural or juridical persons,
unions, and any manufacturing, industrial, commercial, agricultural or other organizations
engaged in trade or commerce." 27 Simply put, a trade name refers to the business and its
goodwill; a trademark refers to the goods. 28
The Convention of Paris for the Protection of Industrial Property, otherwise known as the Paris
Convention, of which both the Philippines and Japan, the country of petitioner, are signatories
29 , is a multilateral treaty that seeks to protect industrial property consisting of patents, utility
models, industrial designs, trademarks, service marks, trade names and indications of source or
appellations of origin, and at the same time aims to repress unfair competition. 30 We agree
with public respondents that the controlling doctrine with respect to the applicability of Article
8 of the Paris Convention is that established in Kabushi Kaisha Isetan v. Intermediate Appellate
Court. 31 As pointed out by the BPTTT:jgc:chanrobles.com.ph
"Regarding the applicability of Article 8 of the Paris Convention, this Office believes that there is
no automatic protection afforded an entity whose tradename is alleged to have been infringed
through the use of that name as a trademark by a local entity.
In Kabushiki Kaisha Isetan v. The Intermediate Appellate Court, et. al., G.R. No. 75420, 15
November 1991, the Honorable Supreme Court held that:chanrob1es virtual 1aw library
‘The Paris Convention for the Protection of Industrial Property does not automatically exclude
all countries of the world which have signed it from using a tradename which happens to be
used in one country. To illustrate — if a taxicab or bus company in a town in the United
Kingdom or India happens to use the tradename "Rapid Transportation", it does not necessarily
follow that "Rapid" can no longer be registered in Uganda, Fiji, or the Philippines.
This office is not unmindful that in the Treaty of Paris for the Protection of Intellectual Property
regarding well-known marks and possible application thereof in this case. Petitioner, as this
office sees it, is trying to seek refuge under its protective mantle, claiming that the subject mark
is well known in this country at the time the then application of NSR Rubber was filed.
However, the then Minister of Trade and Industry, the Hon. Roberto V. Ongpin, issued a
memorandum dated 25 October 1983 to the Director of Patents, a set of guidelines in the
implementation of Article 6bis (sic) of the Treaty of Paris. These conditions are:chanrob1es
virtual 1aw library
a) the mark must be internationally known;
b) the subject of the right must be a trademark, not a patent or copyright or anything
else;chanrob1es virtua1 1aw 1ibrary
c) the mark must be for use in the same or similar kinds of goods; and
d) the person claiming must be the owner of the mark (The Parties Convention Commentary on
the Paris Convention. Article by Dr. Bogsch, Director General of the World Intellectual Property
Organization, Geneva, Switzerland, 1985)’
From the set of facts found in the records, it is ruled that the Petitioner failed to comply with
the third requirement of the said memorandum that is the mark must be for use in the same or
similar kinds of goods. The Petitioner is using the mark "CANON" for products belonging to class
2 (paints, chemical products) while the Respondent is using the same mark for sandals (class
25). Hence, Petitioner’s contention that its mark is well-known at the time the Respondent filed
its application for the same mark should fail."

Canon Kabushiki v. CA

Uploaded by

Document Information

Original Description:

Original Title

Copyright

Available Formats

Share this document

Share or Embed Document

Sharing Options

Did you find this document useful?

Is this content inappropriate?

Copyright:

Available Formats

Canon Kabushiki v. CA

Uploaded by

Copyright:

Available Formats

74.

[G.R. No. 120900. July 20, 2000.]

We cannot uphold petitioner’s position.chanrob1es virtua1 1aw 1ibrary

a) the mark must be internationally known;

You might also like