You are on page 1of 2

BIRKENSTOCK ORTHOPAEDIE GMBH AND CO.

KG (formerly BIRKENSTOCK
ORTHOPAEDIE GMBH), v.PHILIPPINE SHOE EXPO MARKETING CORPORATIONG.R. No.
194307 promulgated on November 20, 2013.
Birkenstock Orthopaedie GMBH (Birkenstock Orthopaedie) applied for the trademark registration
of BIRKENSTOCK with the IPO. Philippine Shoe Expo opposed the application on account of
prior use for more than 16 years and registration of the mark BIRKENSTOCK AND DEVICE. The
Bureau of legal Affairs (BLA) sustained the opposition because: (i) the competing marks are
confusingly similar and are used on the same and related goods; (ii) Birkenstock Orthopaedie
failed to prove actual use of the mark in trade and business in the Philippines; (iii) prior right over
the mark was not lost even though the registration of BIRKENSTOCK AND DEVICE was
cancelled, as there was proof of the marks continuous and uninterrupted use in commerce in the
Philippines; and (iv) BIRKENSTOCK is not well -known in the Philippines and internationally. The
IPO Director General set aside the BLAs ruling. The IPO Director General found Birkenstock
Orthopaedie to be the true and lawful owner and prior user of the BIRKENSTOCK marks. The
IPO Director General further held that BIRKENSTOCK AND DEVICE is no longer an impediment
to the registration of BIRKENSTOCK as the formers registration had been cancelled on account
of the registrants failure to file the 10th year Declaration of Use. The Court of Appeals reinstated
the decision of the BLA.

The Supreme Court ruled in favor of Birkenstock Orthopaedie for the following reasons: (i) under
the former trademark law, Republic Act 166, failure to file the Declaration of Use results in the
automatic cancellation of the trademark which in turn is tantamount to the abandonment or
withdrawal of the registrants right or interest over the trade mark. Applying this rule, the
registrant is deemed to have abandoned its right or interest over the mark BIRKENSTOCK AND
DEVICE on account of its failure to file the 10th year Declaration of Use; and (ii) Birkenstock
Orthopaedie proved its true and lawful ownership of the mark Birkenstock. Evidence was
submitted on (i) the use of the mark in Europe since 1774, when its inventor, Johann Birkenstock,
used the mark on his line of quality footwear, which use was continued by numerous generations
of his kin; and (ii) the worldwide registration of the mark BIRKENSTOCK. The Supreme Court
did not find credible the evidence of Philippine Shoe Expo as it was able to submit only copies of
sales invoices and advertisements, which showed merely its transactions involving the same.
The Supreme Court found the registration of BIRKENSTOCK AND DEVICE to have been done in
bad faith and found it highly incredible that Philippine Shoe Expo came up on its own with the
mark BIRKENSTOCK, obviously of German origin and a highly distinct and arbitrary mark. The
Supreme Court pointed out that Philippine Shoe Expo obviously knew of the existence of
BIRKENSTOCK and its use by Birkenstock Orthopaedie and that it clearly intended to take
advantage of the goodwill generated by the BIRKENSTOCK mark.
Finally, the Supreme Court reiterated the principle that registration of the trademark merely
creates a prima facie presumption of ownership which yields to superior evidence of actual and
real ownership of a trademark. In the words of the Supreme Court:
Clearly, it is not the application or registration of a trademark that vests ownership thereof, but
it is the ownership of a trademark that confers the right to register the same. A trademark is an
industrial property over which its owner is entitled to property rightswhich cannot be
appropriated by unscrupulous entities that, in one way or another, happen to register such
trademark ahead of its true and lawful owner. The presumption of ownership accorded to a
registrant must then necessarily yield to superior evidence of actual and real ownership of a
trademark.
The cancellation of the trademark registration due to failure to file the Declaration of Use is
tantamount to a waiver of the registrants right or interest over the trademark and thus, will not
preclude another partys subsequent application of the mark. And, a trademark registration

merely creates a prima facie presumption of ownership which yields to superior evidence of
actual and real ownership of a trademark.