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Corona Date: 14 July 2004 Doctrine: Following universal acquiescence and comity, in case of domestic legal disputes on any conflicting provisions between the Paris Convention for the Protection of Industrial Property (which is an international agreement) and Republic Act No. 166 or the Trademark Law (which is a municipal law), the latter will prevail. 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. Quickfacts: Gallo Winery, a foreign corporation engaged in the production and sale of wine and brandy products, sued Mighty Corp. and its sister company, Tobacco Industries, for trademark infringement [and unfair competition]. Mighty Corp. and Tobacco Industries manufactured, distributed, and sold tobacco products using the GALLO cigarette trademark. The Supreme Court denied the petition since the GALLO cigarette trademark was not being used for identical or similar goods. Facts: Gallo Winery was organized under the laws of the State of California where all its wineries are located. It sells its products in different countries using various trademarks, including GALLO. The GALLO wine trademark was registered with the Philippine Patent Office in 1971. Despite said registration, GALLO wines were introduced in the Philippines only in 1974 within the U.S. military facilities. In 1979, GALLO wines saw a bigger Philippine market through distributors and independent outlets. However, in 1992, a distributor’s employee found GALLO cigarettes on display in the wine cellar section of a supermarket in Davao City. GALLO cigarettes were products of Mighty Corp. and its sister company, Tobacco Industries, which have been manufacturing, selling, and distributing GALLO cigarettes throughout the Philippines since 1973. That same year, the Bureau of Internal Revenue approved Tobacco Industries’ use of the GALLO 100’s cigarette mark, and three years later or in 1976, of the GALLO filter cigarette mark. The GALLO cigarette trademark was registered with the Philippine Patent Office in 1985. Gallo Winery filed suit for trademark infringement [and unfair competition] against Mighty Corp. and Tobacco Industries, claiming that the use of GALLO cigarettes caused confusion on the part of the purchasing public who had always associated GALLO with Gallo Winery’s
(Republic Act No. 2 An Act To Provide For The Registration And Protection Of Trademarks. but also Republic Act No. the laws in force at the time of the filing of the complaint. 1990 application for GALLO trademark registration and use for its ‘noodles. [Gallo Winery does] not dispute the documentary evidence that aside from Gallo Winery’s GALLO trademark registration.) (b) Whether the Paris Convention or Republic Act No. The RTC and the CA should have limited the consideration of the case within the parameters of the Trademark Law and the Paris Convention. 1911. 1992 Certificate of Registration No.) (c) Whether or not Gallo Winery has exclusive right to use the trademark GALLO. thus constituting a violation of the Paris Convention for the Protection of Industrial Property1 and Republic Act No.) Ratio: (a) Republic Act No.A’s April 19. the Bureau of Patents. 166 or the Trademark Law2. liable to create confusion. and Tobacco Industries elevated the matter to the Supreme Court. 166 governs. Defining Unfair Competition And False Marking And Providing Remedies Against The Same. . “[T]he GALLO trademark cannot be considered a strong and distinct mark in the Philippines. imitation or translation. of a mark considered by the competent authority of the country of registration or use to be well-known in that country as being already the mark of a person entitled to the benefits of the [Paris] Convention and used for identical or similar goods. 166. took effect about five years after the filing of the complaint. The RTC decided the case in favor of Gallo Winery. Mighty Corp. (No. 53356 under the Principal Register approving Productos Alimenticios Gallo. and reasoning that GALLO cigarettes and GALLO wines were identical. at THE HAGUE on 6th November. And For Other Purposes. it is not applicable. prepared food or (b) 1 CONVENTION OF PARIS FOR THE PROTECTION OF INDUSTRIAL PROPERTY of 20th March. 1883. at WASHINGTON on 2nd June. 166 or the Trademark Law. 1900.” GALLO cannot be considered a well-known mark within the contemplation and protection of the Paris Convention. S. 1934. revised at BRUSSELS on 14th December. 166 governs as regards Gallo Winery’s capacity to sue. and at Lisbon on 31st October. 1958. Trademarks and Technology Transfer also issued on September 4. Gallo Winery has capacity to sue: Article 6bis of the Paris Convention. there was no trademark infringement. 1925. 8293 is not applicable: Republic Act No. at LONDON on 2nd June. 8293 or the Intellectual Property Code of the Philippines. which repealed Republic Act No. 8293 or the Intellectual Property Code. Issues: (a) Whether or not Republic Act No.products. an international agreement binding on the Philippines and the United States (Gallo Winery’s country of domicile and origin) prohibits “the [registration] or use of a trademark which constitutes a reproduction. applying not only the Paris Convention and Republic Act No. (NO. 8293 or the Intellectual Property Code is applicable. Trade Names And Servicemarks. it does not have the exclusive right to use said trademark. Hence. similar or related goods since they were “forms of vice.” The Court of Appeals affirmed the RTC decision.
while the Paris Convention protects well-known trademarks only. (c) Gallo Winery does not have the exclusive right to use the GALLO trademark: The provisions of the Paris Convention and Republic Act No.canned noodles. the Trademark Law protects all trademarks. salt. baking powder. the latter will prevail. semolina. Following universal acquiescence and comity. even if the GALLO wine trademark is not considered well-known. Under the doctrine of incorporation as applied in most countries. vinegar. honey. rules of international law are given a standing equal. 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. ice cream. ready or canned sauces for noodles. our municipal law on trademarks regarding the requirement of actual use in the Philippines must subordinate an international agreement inasmuch as the apparent clash is being decided by a municipal tribunal. species and ice. v. In other words. in case of domestic legal disputes on any conflicting provisions between the Paris Convention (which is an international agreement) and the Trademark law (which is a municipal law). 166 were sufficiently expounded upon and qualified in Philip Morris. molasses syrup. whether well-known or not.’” However. Thus. provided that they have been registered and are in actual commercial use in the Philippines. Court of Appeals (224 SCRA 576 ): Following universal acquiescence and comity. mustard. confectionery. Inc. wheat flour and bread crumbs. Gallo Winery may sue for trademark infringement. to national legislative enactments. (a foreign corporation) may have the capacity to sue for infringement irrespective of lack of business activity in the country but the question of whether they have an exclusive right over their symbol will depend on . pastry. it may still be the proper subject of trademark infringement by virtue of its registration and actual commercial use in the Philippines. Withal. not superior. yeast.
servicemark heretofore or hereafter appropriated. 1998 decision and the June 24. partnerships or associations domiciled in the Philippines and by persons. a tradename. — A certificate of registration of a mark or trade-name shall be prima facie evidence of the validity of the registration. 93-850 are hereby REVERSED and SET ASIDE and the complaint against petitioners DISMISSED. business or service of others. may appropriate to his exclusive use a trademark. we rule that. and of the registrant's exclusive right to use the same in connection with the goods. The questioned decision and resolution of the Court of Appeals in CA-G. and such fact is officially certified. and servicemarks owned by persons. – Anyone who lawfully produces or deals in merchandise of any kind or engages in any lawful business.A. CV No. Gallo Winery’s exclusive right to use the GALLO trademark should be limited to wines. Gallo Winery never enjoyed the exclusive right to use the GALLO wine trademark to the prejudice of Tobacco Industries and its successors-in-interest. as in this section provided. Ownership of trademarks. . Provided. 4 SEC 20. corporations. 166. 1999 order of the Regional Trial Court of Makati. shall be recognized and protected in the same manner and to the same extent as are other property rights known to the law. Thus. without any evidence or indication that registrant Gallo Winery expanded or intended to expand its business to cigarettes. tradenames. how acquired. What are registrable. 638). the same is hereby GRANTED. by the government of the foreign country to the Government of the Republic of the Philippines. with a certified true copy of the foreign law translated into the English language. partnerships or associations domiciled in any foreign country may be registered in accordance with the provisions of this Act. in business. or servicemarks are actually in use in commerce and services not less than two months in the Philippines before the time the applications for registration are filed. A rule widely accepted and firmly entrenched because it has come down through the years is that actual use in commerce or business is a prerequisite in the acquisition of the right of ownership over a trademark. further.A. tradename. The ownership or possession of a trademark. subject to any conditions and limitations stated therein. Certificate of registration prima facie evidence of validity. – Trademarks.actual use of their trademarks in the Philippines in line with Sections 2 and 2-A3 of Republic Act No. 2. by actual use thereof in manufacture or trade. and in the service rendered. business or service from the merchandise. or a servicemark not so appropriated by another.R. the registrant's ownership of the mark or tradename. GALLO trademark registration certificates in the Philippines and in other countries expressly state that they cover wines only. corporations. In view of the foregoing jurisprudence and Gallo Winery’s judicial admission that the actual commercial use of the GALLO wine trademark was subsequent to its registration in 1971 and to Tobacco Industries’ commercial use of the GALLO cigarette trademark in 1973. Also. SEC. the only product indicated in its registration certificates. on this account. 865). tradenames and servicemarks. to distinguish his merchandise. Branch 57 in Civil Case No. or who renders any lawful service in commerce. 2-A. Dispositive: “[F]inding the petition for review meritorious. by strict application of Section 204 of the Trademark Law.” 3 SEC. That the country of which the applicant for registration is a citizen grants by law substantially similar privileges to citizens of the Philippines. tradenames. business or services specified in the certificate. (As amended by R. 65175 and the November 26. (As amended by R. And provided. That said trademarks.