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ACQUISITION of OWNERHIP OF MARK ISSUE:

Birkenstock Orthopaedie GMBH and Co. KG (formerly 1. Whether or not the petitioners documentary
Birkenstock Orthopaedie GMBH) vs. Philippine Stock evidence, although photocopies, are admissible
Expo Marketing Corporation in court?
15 SCRA 469 2. Whether or not the subject marks should be
allowed registration in the name of the
petitioner?
FACTS:
HELD:
Petitioner, a corporation duly organized and
existing under the laws of Germany applied for various 1. The court ruled yes. It is a well-settled principle
trademark registrations before the Intellectual Property that the rules of procedure are mere tools aimed
Office (IPO). However, the applications were suspended in at facilitating the attainment of justice, rather
view of the existing registration of the mark than its frustration. A strict and rigid application
BIRKENSTOCK AND DEVICE under Registration No. 56334 of the rules must always be eschewed when it
dated October 21, 1993 in the name of Shoe Town would subvert the primary objective of the rules,
International and Industrial Corporation, the predecessor- that is, to enhance fair trials and expedite
in-interest of respondent Philippine Shoe Expo Marketing justice. In the light of this, Section 5 of the Rules
Corporation. on Inter Partes Proceedings provides that, The
Bureau shall not be bound by strict technical
On May 27, 1997, petitioner filed a petition rules of procedure and evidence but may adopt,
(Cancellation Case) for cancellation of Registration No. in the absence of any applicable rule herein,
564334 on the ground that it is the lawful and rightful such mode of proceedings which is consistent
owner of the Birkenstock marks. During its pendency, with the requirements of fair play and conducive
however, respondent and/or it predecessor-in-interest to the just, speedy and inexpensive disposition
failed to file the required 10th Year Declaration of Actual of cases, and which will the Bureau the greatest
Use (10th Year DAU) for Registration No. 56334 on or possibility to focus on the contentious issues
before October 21, 2004, thereby resulting the before it.
cancellation of such mark. Accordingly, the cancellation
case was dismissed for being moot and academic thereby In the case at bar, it should be noted that the
paving the way for the publication of the subject IPO had already obtained the originals of such
applications. documentary evidence in the related
Cancellation Case earlier before it. Under the
In response, respondent filed with the Bureau of circumstance and the merits of the instant case
Legal Affairs (BLA) of the IPO three separate verified as will be subsequently discussed, the Court
notices of opposition to the subject applications docketed holds that the IPO Director Generals relaxation
as Inter Partes Cases claiming, among others, it, together of procedure was a valid exercise of his
with its predecessor-in-interest, has been using the discretion in the interest of substantial justice.
Birkenstock marks in the Philippines for more than 16
years through the mark BIRKENSTOCK AND DEVICE. In its 2. The court ruled in favour of the petitioner.
Decision, the BLA of the IPO sustained respondents Under Section 12 of Republic Act 166, it provides
opposition, thus ordering the rejection of the subject that, Each certificate of registration shall remain
applications. Aggrieved, petitioner appealed to the IPO in force for twenty years: Provided, that the
Director General whereby in its decision, the latter registration under the provisions of this Act shall
reversed and set aside the ruling of the BLA thus allowing be cancelled by the Director, unless within one
the registration of the subject applications. year following the fifth, tenth and fifteenth
anniversaries of the date of issue of the
Finding the IPO Director Generals reversal of the certificate of registration, the registrant shall file
BLA unacceptable, respondent filed a petition for review in the Patent Office an affidavit showing that the
with the Court of Appeals. In its decision dated June 25, mark or trade-name is still in use or showing that
2010, the CA reversed and set aside the ruling of the IPO its non-use is due to special circumstance which
Director General and reinstated that of the BLA. The excuse such non-use and is not due to any
petitioner filed a Motion for Reconsideration but was intention to abandon the same, and pay the
denied by the CA. Hence , this petition to the Supreme required fee.
Court.
In the case at bar, respondent admitted that it
failed to file the 10th Year DAU for Registration
No. 56334 within the requisite period, or on or
before October 21, 2004. As a consequence, it with the Bureau of Patents, Trademarks and Technology
was deemed to have abandoned or withdrawn Transfer separate Petitions for the Cancellation of
any right or interest over the mark Registration Trademarks involving the Kennex and Pro
BIRKENSTOCK. It must be emphasized that Kennex trademarks.
registration of a trademark, by itself, is not a Kunna filed the petition on the ground that Superior
mode of acquiring ownership. If the applicant is fraudulently registered and appropriated the disputed
not the owner of the trademark, he has no right trademarks as mere distributor and not as lawful owner.
to apply for its registration. Registration merely Both the trial court and the Court of Appeals ruled in
creates a prima facie presumption of the validity favor of Kunnan.
of the registration. Such presumption, just like
the presumptive regularity in the performance of ISSUES: WON Superior, as a distributor, has true
official functions, is rebuttable and must give ownership over the trademarks.
way to evidence to the contrary. Besides, RULING: No. An exclusive distributor does not acquire any
petitioner has duly established its true and proprietary interest in the principals trademark and
lawful ownership of the mark BIRKENSTOCK. It cannot register it, unless the owner has assigned the right.
submitted evidence relating to the origin and 1. To establish trademark infringement, the following
history of BIRKENSTOCK and it use in elements must be proven:
commerce long before respondent was able to a. The validity of the plaintiffs mark;
register the same here in the Philippines. b. The plaintiffs ownership of the mark; and
Petitioner also submitted various certificates of c. The use of the mark or its colorable imitation by the
registration of the mark BIRKENSTOCK in alleged infringer results in likelihood confusion.
various countries and that it has used such mark
in different countries worldwide, including the Based on these elements, the Court found it immediately
Philippines. obvious that the second element was what the
Registration Cancellation Case decided with finality. On
this element depended the validity of the registrations
SUPERIOR COMMERCIAL ENTERPRISES INC. v. KUNNAN that, on their own, only gave rise to the presumption of,
ENTERPRISES LTD. AND SPORTS CONCEPT & but was not conclusive on, the issue of ownership.
DISTRBUTOR, INC.
G.R. No. 16974, 20 April 2010; Brion, J. In no certain terms, the appellate court in the Registration
FACTS: Cancellation Case ruled that Superior was a mere
Kunnan appointed Superior as its exclusive distributor in distributor and could not have been the owner, and was
the Philippines under a Distributorship Agreement which thus an invalid registrant of the disputed trademarks.
states that Kunnan intends to acquire ownership of the The right to register a trademark is based on ownership,
Kennex Trademark registered by Superior Commercial in and therefore only the owner can register it.
the Philippines. Superior Commercial is desirious of being Gabriel v. Perez provided that a mere distributor of a
appointed as the sole distributor of Kunnan products in the product bearing a trademark, even if permitted to use said
Philippines. trademark has no right to and cannot register the said
Superiors President and General Manager misled trademark.
Kunnans Officers into believing that Kunnan could not
acquire trademark rights in the Philippines. Thus, Kunnan 2. Unfair competition has been defined as the passing off
decided to assign its applications to register Pro Kennex or attempting to pass off upon the public of the goods
as a trademark to Superior, on condition that Superior and business of one person as the goods or business of
acknowledged that Kunnan was still the real owner of the another with the end and probable effect of deceiving
mark and agreed to return to it to Kunnan on request. the public. The essential elements of unfair competition
Upon termination of distributorship agreement with are:
Superior, Kunnan appointed Sports Concept as its new a. Confusing similarity in the general appearance of the
distributor. goods; and
Kunnan caused the publication of a Notice and Warning b. Intent to deceive the public and defraud the
in the Manila Bulletins issue, stating that (1) it is the competitor.
owner of the disputed trademarks; (2) it terminated its
Distributorship Agreement with Superior; and (3) it The True Test of Unfair Competition: Whether the acts
appointed Sports Concept as its exclusive distributor. This of the defendant have the intent of deceiving or are
notice prompted Superior to file its Complaint for calculated to deceive the ordinary buyer making his
Infringement of Trademark and Unfair Competition against purchases under the ordinary conditions of the particular
Kunnan. trade to which the controversy relates.
Prior to and during the pendency of the infringement In the hereby case, no evidence exist showing that
and unfair competition case before the RTC, Kunnan filed Kunnan ever attempted to pass off goods it sold as those
of Superior and that there is no bad faith or fraud In any case, the present law on trademarks, Republic Act
imputable to Kunnan in using the disputed trademarks. No. 8293, otherwise known as the Intellectual Property
Superior failed to adduce any evidence to show that Code of the Philippines, as amended, has already
Kunnan by the above-cited acts intended to deceive the dispensed with the requirement of prior actual use at the
public as to the identity of the goods sold or of the time of registration. Thus, there is more reason to allow
manufacturer of the goods sold. the registration of the subject mark under the name of
Cointreau as its true and lawful owner.

ACQUISITION of OWNERSHIP OF TRADENAME

ECOLE DE CUISINE MANILLE V. COINTREAU (G.R.

NO. 185830)

Facts:
Respondent Cointreau, a partnership registered under the
laws of France, applied for the registration of the mark Le
Cordon Bleu & Device. Petitioner Ecole De Cuisine
opposed on the ground that it is the owner of the mark Le
Cordon Bleu, Ecole De Cuisine Manille used in its culinary
activities and restaurant business and that the registration
will create confusion to the public. Respondent Cointreau
answered claiming it is the true and lawful owner of the
mark and had long been using it worldwide. The IPO
Bureau of Legal Affairs sustained petitioners opposition
stating that Cointreau had no prior use of the mark in the
Philippines to be entitled to a proprietary right over it. The
IPO Director General reversed the decision and allowed
the marks registration holding that under RA No. 166,
actual use in the Philippines is not necessary to acquire
ownership of the mark.
Issue:
Whether or not respondents prior use of the mark is a
requirement for its registration.
Ruling: YES.
Under Section 2 of R.A. No. 166, in order to register a
trademark, one must be the owner thereof and must have
actually used the mark in commerce in the Philippines for
2 months prior to the application for registration. Section
2-A of the same law sets out to define how one goes about
acquiring ownership thereof. Under Section 2-A, it is clear
that actual use in commerce is also the test of ownership
but the provision went further by saying that the mark
must not have been so appropriated by another.
Additionally, it is significant to note that Section 2-A does
not require that the actual use of a trademark must be
within the Philippines. Thus, as correctly mentioned by the
CA, under R.A. No. 166, one may be an owner of a mark
due to its actual use but may not yet have the right to
register such ownership here due to the owners failure to
use the same in the Philippines for 2 months prior to
registration. In the instant case, it is undisputed that
Cointreau has been using the subject mark in France, prior
to Ecoles averred first use of the same in the Philippines,
of which the latter was fully aware thereof. On the other
hand, Ecole has no certificate of registration over the
subject mark but only a pending application. Under the
foregoing circumstances, even if Ecole was the first to use
the mark in the Philippines, it cannot be said to have
validly appropriated the same.