Dear PAO,

I am a local cook and the owner of a small carinderia called "Lutong Bahay ni Aling
Puring," which was named after my late grandmother, from whom our delicious
recipes came. I serve Kapampangan dishes, especially sisig, since the early '90s. My
carinderia is well-known in my neighborhood in Pampanga and is even visited by
tourists. Although it came to my knowledge recently that a famous food stall in
Metro Manila bears the name "Aling Puring's" and, surprisingly, it is also famous
for its Kapampangan sisig. I also learned that such a business is planning to sue me
for allegedly using "Aling Puring," which they registered with the Intellectual
Property Office last 2020. I was informed that ownership of a mark is acquired
through registration, but could I really be considered as having infringed their
registered trademark?

Jonas

Dear Jonas,

Please be informed of the Supreme Court's ruling in the case of Zuneca

Pharmaceutical v. Natrapharm, Inc., GR 211850, Ponente: Associate Justice Alfredo
Benjamin Caguioa, where it was provided that:

"In the same vein, prior users in good faith are also protected in the sense that they
will not be made liable for trademark infringement even if they are using a mark that
was subsequently registered by another person. This is expressed in Section 159.1 of
the IP Code, which reads:

"SECTION 159. Limitations to Actions for Infringement. - Notwithstanding any other

provision of this Act, the remedies given to the owner of a right infringed under this
Act shall be limited as follows:

"159.1. Notwithstanding the provisions of Section 155 hereof, a registered mark shall
have no effect against any person who, in good faith, before the filing date or the
priority date, was using the mark for the purposes of his business or enterprise:
Provided, That his right may only be transferred or assigned together with his
enterprise or business or with that part of his enterprise or business in which the mark
is used." (Emphasis supplied).

As highlighted in the aforementioned jurisprudence, prior users of a mark will not be

made liable for trademark infringement even if they are using the same mark that was
subsequently registered by a different enterprise, provided that their use was made in
good faith. Good faith could mean that one was using the mark without knowledge and
before another enterprise was able to register the same.

In your case, you used "Aling Puring" to honor your late grandmother for her heirloom
recipes, and you have used such name since 1990, almost 30 years prior to the
registration of the mark by another. Moreover, you are located in different regions of
the country, and it is possible that you will not be aware of another business bearing
such a name. The fact that you were both using "Aling Puring" in your trade
name/trademark and selling Kapampangan sisig might have been purely coincidental.
Hence, our Intellectual Property Law is explicit in declaring that a prior user acting in
good faith who failed to register the trademark cannot be made liable for
infringement.
We hope that we were able to answer your queries. This advice is based solely on the
facts you have narrated and our appreciation of the same. Our opinion may vary when
other facts are changed or elaborated.