1. Philippine Court Cases

a) Asari Yoko Co., Ltd. v. Kee Boc and Agrava

In 1953, Kee Boc registered the mark “Race” and design to be used for shirts and

undershirts. He claims to have been using the mark since May 17, 1952. On the other hand, Asari

Yoko Co., Ltd., a Japanese company, filed for the opposition of the subject mark’s registration. It

claimed registration of the mark in both Japan and in the Philippines, the latter being made in

1929. It also alleged that it has been using the mark continuously from the same year and was

never abandoned. Therefore, it is the true owner of the mark. The Director of Patents, Celedino

Agrava, dismissed the opposition. He declared that the respondent is the owner of the mark.

The issue then to be resolved is whether or not Asari Yoko is the lawful owner of the

subject mark. The Court found that the mark “Race Brand” being applied for by the respondent

is indeed the same mark registered by Kojiro Asari in Japan during 1937, based on the evidence

presented. The names printed on the container-boxes of the shirts and undershirts sold by the

petitioner are also exactly the same as that of the respondents’ boxes containing the shirts and

undershirts he manufactures. Certain inscriptions were only covered by the respondent using

pieces of paper. On the issue of whether the petitioner is the prior user, the court ruled that he has

been importing its goods in the Philippines as early as 1949. A trade relation between Japan and

Philippines has already existed at that time, despite the war during 1945. Thus, the petitioners

should be entitled to the rights over the mark. The court stated that modern trade and commerce

practices require that damages done on legitimate trademarks of foreign entities should not be

tolerated. Finally, the court reversed the decision of the Director of Patents and dismissed the

registration of the Kee Boc’s subject mark.1

1 Asari Yoko Co., Ltd. V. Kee Boc and Agrava, G.R. No. L-14086, Jan. 20, 1961.

b) Sterling Products International, Incorporated (“SPI”, for brevity) v. Farbenfabriken Bayer

Aktiengsellschaft (“FBA”, for brevity)

SPI and FBA each wants to prevent the other from registration of the trademarks “Bayer”

and “Bayer Cross in Circle”. SPI wants to cancel the FBA’s mark “Bayer Cross in Circle” used

in insecticides and other chemicals while the latter wants to cancel the former’s marks used in

medicines. The trial court ordered the defendants to add distinctive word/s, which will identify

their products coming from Germany, in order to avoid confusion.

The word “Bayer” originated from the surname of Friedrich Bayer, a German who

established a drug company called “Friedr Bayer et comp.” at Barmen, Germany. Initially, the

company sold chemicals and subsequently, it manufactured pharmaceutical preparations. The

company eventually changed its name to Farbenfabrikenvorm, Friedr Bayer & Co. The mark

“Bayer” became famous when the Bayer Aspirin was discovered. The company further expanded

by establishing subsidiaries in other countries, one of which is The Bayer Co., Inc. in New York.

Because of the war between the U.S. and Germany, the assets of The Bayer Co., Inc. were sold

to Sterling Drug, Inc.

The subject trademarks were registered in the Philippines by The Bayer Co., Inc. in 1939.

The rights over the trademark were thereafter assigned to SPI in 1942. FBA started selling its

agricultural chemicals in the Philippines through Allied Manufacturing & Trading Co., Inc. In

1960, FBA was issued the certificate of registration for “Bayer Cross in Circle”.

The issue to be resolved is whether or not the petitioner can claim ownership of the mark

for use in products other than medicines. First, under the old Trademark Law (Act 666), before

anyone can claim ownership of a mark, actual use in commerce must be established. In this case,

SPI can only claim ownership of the subject marks for use in medicines because the Director of

Patents issued the certificate of registration regarding the subject marks for that use. There is no

evidence indicating SPI’s use of the mark for chemicals or insecticides. Second, the registration

of the mark “Bayer” in the U.S. for insecticides does not bring any significance to this case. The

court ruled that registration in the U.S. is not registration in the Philippines because of the

principle of territoriality. The marks to be protected from unfair competition on a particular

territory are those in that same area. Lastly, the court affirms the judgment of the trial court. The

petitioners may continue to use it marks for medicines and the defendants may, likewise,

continue to use it mark for insecticides and other chemicals, provided that they add distinctive

words to avoid confusion.2

c) La Chemise Lacoste v. Fernandez

La Chemise Lacoste, S.A. is a company operating under the laws of France and does not

organize its business in the Philippines. It manufactures clothes and apparel that are sold

internationally, and it owns the trademarks “Lacoste”, “Chemise Lacoste”, “Crocodile Device”, a

composite mark with the word “Lacoste” and a representation of a crocodile/alligator.

Meanwhile, in 1975, a domestic company named Hemandas & Co. registered the mark “Chemise

Lacoste & Crocodile Device” in the Supplemental Register of the Philippine Patent Office for

use on t-shirts, sportswear and other garments. It eventually registered the mark in the Principal

Register a couple of years later. Hermandas & Co. later assigned its rights, title and interest over

the mark “Chemise Lacoste & Device” to the respondent, Gobindram Hemandas. In 1980, the

petitioner applied for the registration of the mark “Crocodile Device” and “Lacoste”. The former

was approved by the Director of Patents, but the latter was opposed by the respondent.

In 1983, the petitioner filed a complaint before the National Bureau of Investigation

(“NBI”, for brevity) against the respondent for unfair competition. Later on, two search warrants

2 Sterling Products International, Inc. v. Farbenfabriken Bayer Aktiengsellschaft, G.R. No. L-19906, Apr. 30, 1969.

were issued, and NBI seized various goods described in the warrants. Hemandas then filed a

motion to quash the warrants, contending that the trademarks used by the respondent were

different from that of the petitioner’s. Therefore, any civil or criminal action would be

premature. The respondent court, presided by Judge Oscar Fernandez, granted the motion to

quash and ordered the return of the seized goods to Hemandas.

The issue then to be resolved is whether or not the petitioner has the capacity to sue

before the Philippine courts. The respondent argued that the petitioner was organizing its

business in the Philippines, although it was not licensed to do so. The court, however, disagreed

with the respondent. It ruled that the petitioner is not doing business in the Philippines, but it

distributes its products in the country through an agent, Rustan Commercial Corporation. Under

the Omnibus Investment Code, a foreign company is deemed not doing business in the

Philippines if it acts through a middleman. In this case, Rustan Commercial Corporation is the

petitioner’s middleman, which acts in its own name and not of the petitioner’s. Furthermore, the

court ruled that the petitioner has the right to continue its suit for unfair competition and

infringement of trademarks in the Philippine court, following the duties and responsibilities of

the Philippines under the Paris Convention, where both Philippines and France are parties

thereto. Under the Paris Convention, each member nation should protect other nationals against

unfair competition the way it protects its own nationals. Additionally, the Ministry of Trade

issued a memorandum on November 20, 1980 ordering the Director of Patents to reject or refuse

any application for registration of famous or well-known mark by applicants other than its

owner. The memorandum also included a list of some internationally known trademarks, one of

which is “Lacoste”.3

3 La Chemise Lacoste v. Fernandez, G.R. No. L-63796-97, May 2, 1984.

d) Converse Rubber Corporation v. Universal Rubber Products, Inc.

Universal Rubber Products applied for the registration of the mark “Universal Converse

and Device” for rubber shoes and slippers before the Philippine Patent Office. The petitioner

opposed the application for registration, alleging that the trademark sought to be registered by

the respondent is confusingly similar to the word “Converse”, which is a part of the former’s

corporate name, “Converse Rubber Corporation”. Moreover, the registration will cause damage

to the goodwill and reputation of the petitioner. The Director of Patents dismissed the

petitioner’s opposition and proceeded with the respondent’s application. He stated that the

petitioner failed to establish evidence, which would convince him that the word “Converse”, as

part of its corporate name, can be attributed by the public to the company.

The issue then is whether or not the respondent’s use of the word “Converse” in the

petitioner’s corporate name is likely to cause confusion to the public. There is no doubt that the

dominant word in the petitioner’s corporate name is “Converse” and the respondent, knowing

that the former has been manufacturing rubber shoes since 1946 and that the word “Converse’

belongs to the petitioner’s corporate name, has no right to use the word on its own products.

Furthermore, the court ruled that the petitioner’s corporate name is protected under Article 8 of

the Paris Convention, which states that a tradename or corporate name, which the court

emphasized, is protected in all the member nations without the need for registration in the

country where protection is sought. Moreover, Section 37 of R.A. 166 states that foreign

nationals in a country that is a party to an international convention shall have the rights to repress

any unfair competition relating to marks and tradenames, subject to the provisions of the said

Act.4 Finally, the court rejected the decision of the Director of Patents and ordered the same to

deny the respondent’s application for registration of the subject mark.5

e) Wolverine Worldwide, Inc. v. Honorable Court of Appeals (“CA”, for brevity)

In 1984, Wolverine Worldwide, Inc., a corporation operating under the U.S. law, filed

before the Philippine Patent Office a petition for cancellation of the mark “Hush Puppies and

Dog Device” of the private respondent, Lolito P. Cruz, a Filipino Citizen. The petitioner alleged

that its mark “Hush Puppies and the Device of a Dog” is internationally well-known and

therefore, protected by the Paris Convention. It further alleged that its products are of the same

class as that of the private respondent’s. Consequently, the private respondent moved to dismiss

the cancellation on the ground of res judicata. He asserted that the petitioner previously filed two

petitions for cancellation and was afterwards a party to an inference proceeding. All of the three

inter partes cases involved the mark “Hush Puppies and Device,” where the Director of Patents

ruled in favor of Ramon Angeles, the predecessor-in-interest of the private respondent.

Eventually, the Director of Patents dismissed the petition for cancellation and declared

the registration of the private respondent valid. The CA initially reversed the decision of the

Director of Patents. However, upon a petition for reconsideration, the decision was affirmed.

The issue then to be resolved by the SC is whether or not the petition for cancellation by

the petitioner is barred by res judicata. The SC ruled in the affirmative. The elements of res

judicata are present in the case. Firstly, there was already a final judgment. The petitioner did not

4 Section 37 provides: “Rights of foreign registrants. - Persons who are nationals of, domiciled in, or have a bona fide or effective business or commercial establishment in any foreign country, which is a party to any international convention or treaty relating to marks or trade-names, or the repression of unfair competition to which the Philippines may be a party, shall be entitled to the benefits and subject to the provisions of this Act to the extent and under the conditions essential to give effect to any such convention and treaties so long as the Philippines shall continue to be a party thereto, except as provided in the following paragraphs of this section.xxxTrade-names of persons described in the first paragraph of this section shall be protected without the obligation of filing or registration whether or not they form parts of marks.5 Converse Rubber Corporation v. Universal Rubber Products, Inc., G.R. No. L-27906, Jan. 8, 1987.

bring the case up to the SC when the CA affirmed the ruling of the Director of Patents regarding

the first petition for cancellation, making the decision final and executory. Second, the

proceeding for the cancellation of trademark registration is within the jurisdiction of the

Philippine Patent Office. Third, the judgment of the Patent Office is meritorious on the case.

Lastly, there is a cause of action.6

f) Mirpuri v. Court of Appeals

On 1970, Lolita Escobar, the predecessor-in-interest of Pribhdas Mirpuri, filed an

application for the mark “Barbizon” before the Bureau of Patents. She claimed that the firm “L

& BM Commercial” has been manufacturing and selling brassieres and ladies’ underwear

bearing the same mark. On the other hand, Barbizon Corporation, operating under the laws of

New York, U.S.A., filed for the opposition of Escobar’s application, where it alleged that the

mark is confusingly similar with its own mark, “Barbizon”. Furthermore, the applicant’s

registration of the mark will constitute damage to the reputation of the objector’s business and its

goodwill. The use of the same mark violates Section 4 (d) of R.A. 166.7

The Director of Patents ruled in favor of Escobar by dismissing the opposition of

Barbizon Corporation. The certificate of registration for the trademark “Barbizon”, which was to

be used for brassieres and ladies’ undergarment, was subsequently issued to Escobar. Escobar,

then, assigned her rights to Mirpuri under the firm name “Bonito Enterprises”, which was the

sole distributor of Escobar’s products. However, the Bureau of Patents cancelled the trademark

registration due to the failure of securing an affidavit of use, which was to be filed before the

6 Wolverine Worldwide, Inc. v. Honorable Court of Appeals, G.R. No. 78298, Jan. 30, 1989.7 RA 166 provides: “Section 4. Registration of trade-marks, trade-names and service-marks - The owner of a trade-mark, trade-name or service-mark used to distinguish his goods, business or services from the goods, business or services of others shall have the right to register the same, unless it:

xxx(d) Consists of or comprises a mark or trade-name which so resembles a mark or trade-name registered in the Philippines or a mark or trade-name previously used in the Philippines by another and not abandoned, as to be likely, when applied to or used in connection with the goods, business or services of the applicant, to cause confusion or mistake or to deceive purchases”

bureau. Thus, Escobar reapplied for the registration of the mark, which was opposed by Barbizon

Corporation. Nonetheless, the Director of Patents dismissed the opposition and declared that it

was barred by res judicata.8

Meanwhile, the petitioner filed for the registration of the business name “Barbizon

International” before the Department of Trade and Industry (“DTI”, for brevity). The private

respondent, likewise, filed for petition of cancellation of the registration. The Office of Legal

Affairs, DTI, then, granted the petition and further ruled that Barbizon Corporation is the owner

and prior user of the name “Barbizon International”.

The private respondents questioned the decision of the Director of Patents before the CA,

which reversed the decision. It ruled that the opposition is not barred by judgment and ordered

the Bureau to continue its proceedings regarding the opposition of the registration of the mark

“Barbizon”. The CA consequently denied the motion for reconsideration by the petitioner. Thus,

the latter brought up the case to the SC.

The issue then to be resolved is whether or not Barbizon Corporation would be damaged

by the registration of the trademark “Barbizon” by Mirpuri on the ground that the latter’s mark,

“Barbizon,” is likely to cause confusion, mistake or deception to purchasers. It was held that

Barbizon Corporation failed to establish a case of probable damage done by Escobar’s

registration of the mark “Barbizon.” On its second opposition, the private respondent claimed

that the mark was protected under Article 6bis of the Paris Convention, which was implemented

by the two Memoranda issued by the Minister of Trade and Industry, the Villafuerte and Ongpin

8 The requisites of res judicata include:“(a) the former judgment or order must be final;(b) the judgment or order must be one on the merits;(c) it must have been rendered by a court having jurisdiction over the subject matter and parties;(d) there must be between the first and second actions, identity of parties, of subject matter and of causes of action.” (Mirpuri, G.R. No. 114508, Nov. 19, 1999)

Memorandum. Finally, the SC denied the petitioner’s recourse and at the same time, affirmed the

decision of the CA.9

g) Canon Kabushiki Kaisha v. Court of Appeals

In 1985, the private respondent, NSR Rubber Corporation, filed for the registration of the

mark “Canon” to be used on sandals before the Bureau of Patents, Trademarks and Technology

Transfer (“BPTTT”, for brevity). On the other hand, the petitioner, Canon Kabushiki Kaisha,

which operates under the laws of Japan, filed for an opposition of the registration of the private

respondent’s mark. The petitioner evinced its certificates of registration of the mark “Canon” in

different countries including the Philippines, covering goods under Class 2 of the International

Classification of Goods and Services, more commonly known as the “Nice Classification.”10

In 1992, BPTTT dismissed the opposition of the petitioner and allowed the private

respondent to register the mark “Canon”. In 1993, the CA affirmed the decision of BPTTT upon

an appeal filed by the petitioner. It ruled that the private respondent can use the mark “Canon”

for sandals because it is unrelated to products like paints, chemical products, toner and dye stuff,

which the petitioner uses for the same mark. However, the petitioner contends that it uses the

trademark on various products worldwide. Additionally, its corporate name or tradename is

being used globally on various goods including footwear and other related goods, such as shoe

polisher and polishing agents. The petitioner then alleged that since its products, including

footwear, shoe polisher and polishing agents, bear the mark “Canon”, BPTTT should have

disallowed the private respondents to register the mark.

The issue then to be resolved is whether or not the BPTTT and CA erred in their decision.

The SC ruled that the case is of no merit. The records of BPTTT showed that the petitioner failed

9Mirpuri, G.R. No. 114508, Nov. 19, 199910 Class 2 covers paints, chemical products, toner, and dye stuff.

to prove that its certificates of registration cover footwear. Furthermore, the petitioner cannot

raise the claim of protection given to a user on the normal expansion of one’s business because it

unsuccessfully failed to show evidence that it embarked in the production of sandals. Also,

confusion of business or origin occurs when a mark used on the product of a senior user is

related to the product of a junior user. In this case, the court stated that the paints, chemical

products, toner and dyestuff used by the petitioner are unquestionably unrelated to sandals used

by the private respondent. Additionally, the petitioner claims the protection of tradenames

provided by Article 8 of the Paris Convention, which is supported by the Villafuerte

Memorandum. However, the court agrees with BPTTT that Article 8 does not protect tradenames

when such is being infringed by a user through the use of the name as a trademark, as ruled in

Kabushiki Kaisha Isetan v. Intermediate Appellate Court.11

h) Sehwani v. In-N-Out Burger, Inc.

In-N-Out Burger, Inc., a foreign corporation operating in California, U.S.A., filed a

complaint against Sehwani, Inc. and Benita Frites, Inc. before the Bureau of Legal Affairs of the

Philippine Intellectual Property Office (“BLA-IPO”, for brevity) for violation of IP rights. In-N-

Out Burger, Inc. demanded the petitioner to renounce its claim of ownership on the mark “In N

Out” and voluntarily cancel its registration. Respondent alleged that it owns the name and marks

“In-N-Out”, “In-N-Out Burger & Arrow Design” and “In-N-Out Burger Logo,” which have been

used in commerce since 1948.

In 1997, the respondent registered the trademark “In-N-Out Burger & Arrow design” and

the service mark “In-N-Out” before the Intellectual Property Office (“IPO”, for brevity), only to

11 Canon Kabushiki Kaisha v. Court of Appeals and NSR Rubber Corporation, G.R. No. 120900, Jul. 20, 2000.

find out that Sehwani has already obtained a registration for its mark, “In N Out” 12, without the

respondent’s permission.

Sehwani refused the demands of the respondent. It alleged that In-N-Out Burger has no

legal capacity to sue because it is not operating in the Philippines. Furthermore, Sehwani enjoys

the presumption that the mark “In-N-Out” was validly acquired, and it has the exclusive right to

use the mark because it is the owner of the same. The Bureau Director ruled in favor of the

respondent, ordering the cancellation of Sehwani’s mark. It further required the petitioner to

desist using the mark on its goods. The petitioner then appealed to the Office of the Director

General of IPO (“ODG-IPO”, for brevity). However, the appeal was refused for being filed out

of time. The petitioner appealed before the CA, but it was dismissed due to lack of merit.

The issue then to be resolved by the SC is whether or not the CA committed a grave error

in upholding the decision of the ODG-IPO on a mere technicality. It was held that the petition

has no merit. The Court ruled that the decision of the ODG-IPO is final and executory, as

affirmed by the CA. As to the issues raised by the petitioner, the Court found that the respondent

has the legal capacity to sue against violations of its trademark rights, although it is not operating

in the country. Section 160 of R.A. 8293 provides for the right of foreign corporations not

engaging in business in the Philippines to sue in trademark or service mark enforcement

actions13, pursuant to Section 3 of the same Act.14 Furthermore, the respondent claims that its

12 The inside of the letter “O” is formed like a star.13 Section 160 provides: “Right of Foreign Corporation to Sue in Trademark or Service Mark Enforcement Action . - Any foreign national or juridical person who meets the requirements of Section 3 of this Act and does not engage in business in the Philippines may bring a civil or administrative action hereunder for opposition, cancellation, infringement, unfair competition, or false designation of origin and false description, whether or not it is licensed to do business in the Philippines under existing laws.”14 Section 3 provides: “International Conventions and Reciprocity. - Any person who is a national or who is domiciled or has a real and effective industrial establishment in a country which is a party to any convention, treaty or agreement relating to intellectual property rights or the repression of unfair competition, to which the Philippines is also a party, or extends reciprocal rights to nationals of the Philippines by law, shall be entitled to benefits to the extent necessary to give effect to any provision of such convention, treaty or reciprocal law, in addition to the rights to which any owner of an intellectual property right is otherwise entitled by this Act.”

mark is protected under Article 6bis and 8 of the Paris Convention15, to which the Philippines is a

signatory thereof.

Similarly, the Bureau Director found that the respondent has acquired registration of its

trademarks in the U.S. It cited the previous decision of the BLA-IPO, where it, as a competent

authority, declared the mark “In-N-Out Burger & Arrow Design” as well-known internationally

on the basis of “registrations in various countries around the world and its comprehensive

advertisements therein,” pursuant to the Ongpin Memorandum. Likewise, Rule 102 Section (e)

provides for the same. The mark also met criteria (a) and (d) of Rule 102.16

i) Fredco Manufacturing Corporation v. President and Fellows of Harvard College (Harvard

University)

In 2005, Fredco Manufacturing Corporation filed a petition for cancellation before the

BLA-IPO against the President and Fellows of Harvard College for the registration of its mark,

“Harvard Veritas Shield Symbol,” under Classes 16, 18, 21, 25 and 28 of the Nice Classification.

Fredco alleged that its predecessor-in-interest, New York Garments Manufacturing & Export

Co., Inc., has already been using the mark “Harvard” since 1985 when it registered the same

under Class 25. This gives Harvard University no right to register the mark since it is not a prior

user in the Philippines. On the other hand, Harvard University claimed that it has adopted the

mark “Harvard” in Cambridge, Massachusetts, U.S.A. since 1639. Furthermore, it alleged that

the marks, “Harvard” and “Harvard Veritas Shield Symbol,” are registered in more than 50

countries, including the Philippines, and have been used in commerce since 1872. In fact,

“Harvard” is rated as one of the top brands of the world, possessing a worth between $750

million and $1 billion. With these facts at hand, the BLA-IPO ruled in favor of Fredco, ordering

15 Article 8 provides: “A trade name shall be protected in all the countries of the Union without the obligation of filing or registration, whether or not it forms part of a trademark.”16 Sehwani v. In-N-Out Burger, Inc., G.R. No. 171053, Oct. 15, 2007.

the cancellation of Harvard University’s mark under Class 25 because the other classes were not

confusingly similar with Fredco’s goods and services.

Harvard University appealed before the ODG-IPO, which reversed the decision of the

BLA-IPO. The Director General ruled that the applicant must also be the owner of the mark

sought to be registered, aside from being the user of it. Thus, Fredco is not the owner of the mark

because it failed to explain how its predecessor got the mark “Harvard.” There was also no

evidence of permission given by Harvard University to Fredco for the mark’s use.

Fredco appealed the decision of the Director General before the CA, which affirmed the

decision of the ODG-IPO. The CA ruled that Harvard University had been using the marks way

before Fredco and the petitioners failed to explain use of the marks bearing the words “Harvard,”

“USA,” “Established 1936” and “Cambridge, Massachusetts” within an oblong device.

The issue then presented to the SC is whether or not the CA erred in affirming the

decision of ODG-IPO. It was held that the petition has no merit for two reasons. First, the

inclusion of the origin “Cambridge, Massachusetts” in Fredco’s mark connotes that Fredco is

associated with Harvard University, which is not true. The registration of Fredco’s mark should

have been rejected. Second, the Philippines is a signatory to the Paris Convention, which

provides all member countries protection against violation of IP rights, regardless of the mark’s

registration in a particular country.

Although Section 2 of R.A. 166 states that actual use in Philippine commerce for not less

than two months is needed prior to filing an application for registration17, a trademark registered

17 Section 2, as amended, provides: “What are registrable. – Trademarks, tradenames and service marks owned by persons, corporations, partnerships or associations domiciled in the Philippines and by persons, corporations, partnerships or associations domiciled in any foreign country may be registered in accordance with the provisions of this Act;  Provided, That said trademarks, tradenames, or service marks are actually in use in commerce and services not less than two months in the Philippinesbefore the time the applications for registration are filed; And provided, further, That the country of which the applicant for registration is a citizen grants by law substantially similar privileges to citizens of the Philippines, and such fact is officially certified, with a certified true copy of the foreign law translated into the English language, by the government of the foreign country to the Government of the Republic of the Philippines.”

in a foreign member country of the Paris Convention is allowed to register without the

requirement of use in the Philippine commerce. Under Section 37 of R.A. 166, registration based

on home certificate is allowed and does not require the use of the mark in the Philippines.

Furthermore, R.A. 8293 Section 239.2 provides that marks registered under R.A. 166 shall

remain in force, but shall be subject to the provisions of R.A. 8293, which does not require the

mark’s prior use in the Philippines.18 In 1980, Luis Villafuerte issued a memorandum to the

Director of Patents, ordering the latter to reject all pending applications of marks involving a

well-known brand around the world by applicants other than the owner of the mark. In 1983,

Roberto Ongpin affirmed the memorandum of Villafuerte by commanding the Director of

Patents to implement measures, which will comply with the provisions of the Paris Convention.

These memoranda were upheld by the Court

Currently, well-known marks are protected under Section 123.1(e) of R.A. 8293.

Additionally, Rule 102 of the Rules and Regulations on Trademarks, Service Marks, Trade

Names and Marked or Stamped Containers provides for the criteria in determining a well-known

mark. The use of the mark in commerce is not anymore required because it is enough that “any

combination” of the criteria be met in order for a mark to be well-known.

The ODG-IPO traced the origin of the mark, “Harvard.” It ruled that Harvard University

had been using the mark centuries before Fredco utilized it, although the latter may have been

the mark’s first user in the Philippines. Likewise, CA ruled that the name and mark, “Harvard”

and “Harvard Veritas Shield Symbol,” were first used in the U.S. in 1953 under Class 25.

18 Section 239.2 provides: “Marks registered under Republic Act No. 166 shall remain in force but shall be deemed to have been granted under this Act and shall be due for renewal within the period provided for under this Act and, upon renewal shall be reclassified in accordance with the International Classification. Trade names and marks registered in the Supplemental Register under Republic Act No. 166 shall remain in force but shall no longer be subject to renewal.”

Finally, the SC declared the mark “Harvard” to be well-known internationally, including the

Philippines.19

19Fredco Manufacturing Corporation v. President and Fellows of Harvard College, G.R. No. 185917, Jun. 1, 2011.