The cancellation of the trademark registration due to failure to file the Declaration of Use is tantamount to a waiver of the registrant’s right or interest over the trademark and thus, will not preclude another party’s 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.
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 mark’s 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 BLA’s 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 former’s registration had been cancelled on account of the registrant’s 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 registrant’s 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.
Levi’s Philippines
It is the tendency of the allegedly infringing mark to be confused with the registered trademark that is the gravamen of the offense of infringement of a registered trademark under the Intellectual Property Code of the Philippines. The acquittal of the accused for trademark infringement should follow in the absence of the likelihood of confusion between the registered mark and the allegedly infringing mark.
DIAZ V. PEOPLE OF THE PHILIPPINES AND LEVI STRAUSS PHILIPPINES INC.- G.R. No. 180677 promulgated on February 18, 2013
Levi Strauss Philippines, Inc. (Levi’s Philippines) is a licensee of Levi Strauss and Company (Levi’s), a Delaware corporation that owns trademarks and designs of Levi’s jeans like LEVI’S 501, the arcuate design, the two-horse brand, the two-horse patch, the two-horse patch with pattern arcuate, and the composite tab arcuate. These trademarks were duly registered with the Philippine Patent Office in the 1970’s, 1980’s and early part of 1990’s.
Levi’s Philippines claimed that Diaz sold and distributed counterfeit Levi’s 501 jeans, which could be mistaken for the original Levi’s jeans on account of the placement of the arcuate, red tab, and two-horse leather patch.
Diaz was charged and later on convicted for two counts of trademark infringement under Section 155 of Republic Act No. 8293, also known as the Intellectual Property Code of the Philippines. Diaz appealed his conviction to the Supreme Court.
After a factual comparison was made between the jeans trademarks of Levi’s and Diaz, the Supreme Court held that there was no likelihood of confusion between the registered trademark and the alleged infringing mark. In determining the likelihood of confusion, the Supreme Court applied the holistic test, following a jurisprudential precedent in a trademark infringement involving jeans products.
The Supreme Court observed remarkable differences between the jeans trademarks of Levi’s and Diaz easily distinguished even by an ordinary customer. Diaz used his registered trademark “LS Jeans Tailoring” on the jeans that he made and sold in his tailoring shops which is visually different from the trademark “LEVI STRAUSS & CO” appearing on the patch of the original jeans under the trademark LEVI’S 501; “LS” was connected to the word “TAILORING” and could not be confused with “LEVI STRAUSS”; there was no “two horse design used on the jeans sold by Diaz but that of a “buffalo design”; he used the letters “LSJT” on the red tab of the jeans he sold and not the word “LEVI’S”; the products sold by Diaz were available only in his tailoring shop while that of Levi’s were sold in malls nationwide; the products cater to different classes of customers as the customers of Levi’s are generally in the class A and B market group whereas the customers of Diaz belong to the class D and E market. The Supreme Court thus held that no trademark infringement had been committed.
The Supreme Court also pointed out that Diaz’s trademark “LS Jeans Tailoring” had in fact been registered with the IPO prior to the filing of the cases of infringement against him. To quote the Supreme Court, “The Intellectual Property Office would certainly not have allowed the registration had Diaz’ trademark been confusingly similar with the registered trademark for LEVI’s 501 jeans.”
Le Cordon Bleu & Device
Under the old trademark law, Republic Act 166, the prior user of the trademark in the Philippines is not ipso facto considered its owner or that it is entitled to the registration of the trademark, if such prior use was done in bad faith as when there was knowledge of the existence and use of the mark abroad.
ECOLE DE CUISINE MANILLE (CORDON BLEU OF THE PHILIPPINES), INC. V. RENAUD COINTREAU & CIE LE CORDON BLEU INT’L – G.R. No. 185830 promulgated on June 5. 2013
On June 21, 1990, Cointreau, a partnership registered under the laws of France, filed with the then Bureau of Patents, Trademarks, and Technology Transfer (BPTTT)a trademark application for the mark “Le Cordon Bleu & Device” for goods falling under classes 8, 9, 16, 21, 24, 25, 29, and 30 of the Nice Classification.This trademark application was filed on the basis of Home Registration No. 1,390,912, issued on November 25, 1986 in France.
Ecole de Cuisine Manille (“Ecole”) filed an opposition to the application alleging that as the first to use the mark “Le Cordon Bleu, Ecole Cuisine Manille” in the Philippines, it is the one entitled to its registration. Ecole claimed it had been using the mark since since 1948 in cooking and other culinary activities, including in its restaurant business. Ecole filed its trademark application with the BPTTT on February 24, 1992. The Supreme Court resolved the issue of ownership and right to register in favor of Cointreau because Cointreau, which (i) first filed its application (June 21, 1990 as against Ecole’s application filed on February 24, 1992) based on a home registration dated November 16, 1986; (ii) had been using the mark in Paris, France since 1895; (iii) its culinary school, Le Cordon Bleu, was first established in 1895 and is known worldwide, and that Ecole’s directress even attended its culinary school; and (iv) was the first to be granted a Certificate of Registration by the Philippine Intellectual Property Office.
The Supreme Court held that Section 2-A of the old law, Republic Act No. 166, does not require that the actual use of the mark must be within the Philippines. And, that in any case, the new law, Republic Act No. 8293 otherwise known as the Intellectual Property Code of the Philippines as amended, has already dispensed with the requirement of prior actual use at the time of registration. The Supreme Court further recognized the obligation of the Philippines under the Paris Convention to afford protection to nationals of signatory countries against violations of their intellectual property rights in the Philippines and thus “under Philippine law, a trade name of a national of a State that is a party to the Paris Convention, whether or not the trade name forms part of a trademark is protected “without the obligation of filing or registration”. On a final note, the Supreme Court further ruled that“courts will protect trade names or marks, although not registered or properly selected as trademarks, on the broad ground of enforcing justice and protecting one in the fruits of his toil”.