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PHILIP MORRIS vs. Fortune Tobacco

PHILIP MORRIS vs. Fortune Tobacco

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Published by William Estanislao

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Published by: William Estanislao on Apr 18, 2013
Copyright:Attribution Non-commercial


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Petitioner Philip Morris, Inc., a corporation organized under the laws of theState of Virginia, United States of America, is, per
Certificate of Registration No. 18723 issued on April 26, 1973 by the PhilippinePatents Office (PPO),
the registered owner of the trademark “
for cigarettes. Similarly, petitioner Benson & Hedges (Canada), Inc., asubsidiary of Philip Morris, Inc., is the registered owner of the trademark
” for cigarettes as evidenced by PPO
Certificate of RegistrationNo. 11147
And as can be seen in Trademark Certificate of Registration No.19053
another subsidiary of Philip Morris, Inc., the Swiss company Fabriquesde Tabac Reunies, S.A., is the assignee of the trademark
” which wasoriginally registered in 1964 by Ligget and Myers Tobacco Company. On theother hand, respondent Fortune Tobacco Corporation, a company organizedin the Philippines, manufactures and sells cigarettes using the trademark
 The legal dispute between the parties started when the herein petitioners, onthe claim that an infringement of their respective trademarks had beencommitted, filed, on August 18, 1982, a
Complaint for Infringement of Trademark and Damages
against respondent Fortune Tobacco Corporation,docketed as Civil Case No. 47374 of the RTC of Pasig.Petitioners claimed that the respondent, without any previous consent fromany of the petitioners, manufactured and sold cigarettes bearing theidentical and/or confusingly similar trademark “MARK” Accordingly, theyargued that respondent’s use of the trademark “MARKin its cigaretteproducts have caused and is likely to cause confusion or mistake, or woulddeceive purchasers and the public in general into buying these productsunder the impression and mistaken belief that they are buying petitioners’products.RTC- ruled in favor of respondents; dismissed petitioner’s complaintCA- ruled that petitioner has legal standing to sue but found that there wasno infringementHence this petition
Whether or not the fact that Petitioner has a Certificate oRegistration issued by the Philippine Patents Office entitles them toprotection in the PH?
No. The Certificate of Registration is merely a prima facie evidence of validity of registration. The registration of a trademark gives the registrant, such as petitioners,advantages denied non-registrants or ordinary users, like respondent. Butwhile petitioners enjoy the statutory presumptions arising from suchregistration i.e., as to the validity of the registration, ownership and theexclusive right to use the registered marks, they may not successfully sue onthe basis alone of their respective certificates of registration of trademarks.For, petitioners are still foreign corporations. As such, they ought, as acondition to availment of the rights and privileges vis-à-vis their trademarksin this country, to show proof that, on top of Philippine registration, theircountry grants substantially similar rights and privileges to Filipino citizenspursuant to Section 21-A[20] of R.A. No. 166.  The registration of trademark cannot be deemed conclusive as to the actualuse of such trademark in local commerce. As it were, registration does notconfer upon the registrant an absolute right to the registered mark. Thecertificate of registration merely constitutes prima facie evidence that theregistrant is the owner of the registered mark. Evidence of non-usage of themark rebuts the presumption of trademark ownership, as what happenedhere when petitioners no less admitted not doing business in this country.Registration in the Philippines of trademarks does not ipso facto convey anabsolute right or exclusive ownership thereof. To borrow from Shangri-LaInternational Hotel Management, Ltd. v. Development Group of Companies,Inc, trademark is a creation of use and, therefore, actual use is a pre-requisite to exclusive ownership; registration is only an administrativeconfirmation of the existence of the right of ownership of the mark, but doesnot perfect such right; actual use thereof is the perfecting ingredient. True, the Philippines’ adherence to the Paris Convention effectively obligatesthe country to honor and enforce its provisions as regards the protection of industrial property of foreign nationals in this country. However, anyprotection accorded has to be made subject to the limitations of Philippinelaws. Hence, despite Article 2 of the Paris Convention which substantiallyprovides that (1) nationals of member-countries shall have in this countryrights specially provided by the Convention as are consistent with Philippinelaws, and enjoy the privileges that Philippine laws now grant or mayhereafter grant to its nationals, and (2) while no domicile requirement in thecountry where protection is claimed shall be required of persons entitled tothe benefits of the Union for the enjoyment of any industrial property rights,foreign nationals must still observe and comply with the conditions imposedby Philippine law on its nationals.

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