Ownership of A Trademark Is Not

Based on An Earlier Filing Date (EY

vs Shen Dar, 2010)
COMMERCIAL LAW

EY

Industrial

Case

Digest

Sales
GR

vs
184850

Shen
Oct

20

Dar
2010

Full Text
Facts:
EYIS is a domestic corporation engaged in the production, distribution and sale of air
compressors and other industrial tools and equipment. On the other hand, Shen Dar is a
Taiwan-based foreign manufacturer of air compressors. From 1997 to 2004, EYIS
imported air compressors from Shen Dar. Both of them sought to register the mark
VESPA for use on air compressors, but it was Shen Dar who first filed the application on
June 1997. EYIS application was first granted on 2004, so Shen Dar sought for its
cancellation on the ground of Sec 123 of the Intellectual Property Code which provides
that the registration of a similar mark is prevented with the filing of an earlier
application for registration. On the other hand, EYIS contended that Shen Dar is not
entitled to register the mark VESPA on its products because EYIS has been using it as
the sole assembler and distributor of air compressors since the 1990s. EYIS was able to
prove such fact.
Issue: W/N EYIS is the true owner of the mark VESPA
Yes. EYIS is the true owner because it is the prior and continuous user of the mark
VESPA.
Section 123.1 of the IPC should not be interpreted to mean that ownership is based
upon an earlier filing date. While RA 8293 removed the previous requirement of proof of
actual use prior to the filing of an application for registration of a mark, proof of prior
and continuous use is necessary to establish ownership of a mark. Ownership of a mark
or trade name may be acquired not necessarily by registration but by adoption and use
in trade or commerce.
As between actual use of a mark without registration, and registration of the mark
without actual use thereof, the former prevails over the latter. Hence, EYIS is entitled to
the registration of the mark in its name. ##
Notes
Sec 122: How Marks are Acquired
Sec 123: Registrability

Registration is Only Presumptive of Ownership (Shangri-la vs Developers, 2006)

Registration is Not A Mode of Acquiring Ownership
Actual Use In Commerce is Required to Establish Right of Ownership