1. G.R. No. L-28554 February 28, 1983UNNO COMMERCIAL ENTERPRISES, INCORPORATED, petitioner, vs.GENERAL MILLING CORPORATION and TIBURCIO S. EVALLE, in his capacity as Director of Patents, respondents.FACTS : The Court affirms respondent Director of Patent's decision declaring respondent General Milling Corporation as the prior user of the trademark "All Montana" on wheat flour in the Philippines and ordering the cancellation of the certificate of registration for the same trademark previously issued in favor of petitioner Unno Commercial Enterprises, Incorporated, it appearing that Unno Commercial Enterprises, Inc. merely acted as exclusive distributor of All Montana wheat flour in the Philippines. Only the owner of a trademark, trade name or service mark may apply for its registration and an importer, broker, indentor or distributor acquires no rights to the trademark of the goods he is dealing with in the absence of a valid transfer or assignment of the trade mark. On December 11, 1962, respondent General Milling Corporation filed an application for the registration of the trademark "All Montana" to be used in the sale of wheat flour. In view of the fact that the same trademark was previously, registered in favor of petitioner Unno Commercial Enterprises, Inc.. Respondent General Milling Corporation, in its application for registration, alleged that it started using the trademark "All Montana" on August 31, 1955 and subsequently was licensed to use the same by Centennial Mills, Inc. by virtue of a deed of assignment executed on September 20, 1962. On the other hand petitioner Unno Commercial Enterprises, Inc. argued that the same trademark had been registered in its favor on March 8, 1962 asserting that it started using the trademark on June 30, 1956, as indentor or broker for S.H. Huang Bros. & Co., a local firm. The Director of Patents, after hearing, ruled in favor of respondent General Milling Corporation. and rendered its decision as follows: ISSUE : Whether or not director of patents can issue cancellation of the certification of registration?HELD : The Court finds without merit petitioner's argument that the Director of Patents could not order the cancellation of' its certificate of registration in an interference proceeding and that the question of whether or not a certificate of registration is to be cancelled should have been brought in cancellation proceedings. Under Rule 178 of the Rules of the Patent Office in Trademark Cases, 14 the Director of Patents is expressly authorized to order the cancellation of a registered mark or trade name or name or other mark of ownership in an inter partes case, such as the interference proceeding at bar.The right to register trademark is based on ownership. 4 When the applicant is not the owner of the trademark being applied for, he has no right to apply for the registration of the same. 5 Under the Trademark Law only the owner of the trademark, trade name or service mark used to distinguish his goods, business or service from the goods, business or service of others is entitled to register the same. 6 The term owner does not include the importer of the goods bearing the trademark, trade name, service mark, or other mark of ownership, unless such importer is actually the owner thereof in the country from which the goods are imported. A local importer, however, may make application for the registration of a foreign trademark, trade name or service mark if he is duly authorized by the actual owner of the name or other mark of ownership. 7 Thus, petitioner's contention that it is the owner of the mark "All Montana" because of its certificate of registration issued by the Director of Patents, must fail, since ownership of a trademark is not acquired by the mere fact of registration alone. 9 Registration merely creates a prima facie presumption of the validity of the registration, of the registrant's ownership of the trademark and of the exclusive right to the use thereof. 10 Registration does not perfect a trademark right. 11 As conceded itself by petitioner, evidence may be presented to overcome the presumption. Prior use by one will controvert a claim of legal appropriation, by subsequent users. In the case at bar, the Director of Patents found that "ample evidence was presented in the record that Centennial Mills, Inc. was the owner and prior user in the Philippines of the trademark 'All Montana' through a local importer and broker. Use of a trademark by a mere importer, indentor or exporter (the Senior Party herein) inures to the benefit of the foreign manufacturer whose goods are Identified by the trademark. The Junior Party has hereby established a continuous chain of title and, consequently, prior adoption and use" and ruled that "based on the facts established, it is safe to conclude that the Junior Party has satisfactorily discharged the burden of proving priority of adoption and use and is entitled to registration." It is well-settled that we are precluded from making further inquiry, since the findings of fact of the Director of Patents in the absence of any showing that there was grave abuse of discretion is binding on us 12 and the findings of facts by the Director of Patents are deemed conclusive in the Supreme Court provided that they are supported by substantial evidence. 13 Petitioner has failed to show that the findings of fact of the Director of Patents are not substantially supported by evidence nor that any grave abuse of discretion was committed. 2. Kabushi Kaisha Isetan vs. lAC GR 75420, 15 November 1991;Second Division, Gutierrez Jr., (J)Facts: Kabushi Kaisha Isetan is a Japanese corporation, and owner of the trademark Isetan and the Young leave design. Isetann Department Store, on the other hand, is a domestic corporation, and owner fo the trademark Isetann and flover design. In 1980, Kabushi Kaisha Isetan field petitions for the cancellation of the supplemental registration of Isetann with the Philippine Patent Office. It also filed for the cancellation Intellectual Property Law, 2004 ( 3 ) Digests (Berne Guerrero) of the mark Isetan from the corporate name of Isetann Department Store with the SEC. Both the SEC and the Director of Patents, eventually, ruled against Kabushi Kaisha Isetan. It appealed to the intermediate Appellate Court, which denied the petition for being filed out of time. Issue: Whether Kabushi Kaisha Isetan has the right to seek for the cancellation of the word Isetan from the corporate name of Isetann Department Store. Held: No. A Fundamental principle in Trademark Law is that the actual use in commerce in the Philippines is a pre-requisite to the acquisition of ownership over a trademark or a tradename. Kabushi Kaisha Isetan has never conducted any business in the Philippines. It has never promoted its trademark or tradename in the Philippines. It has absolutely no business goodwill in the Philippines. It is unknown to Filipinos except the very few who may have noticed it while traveling abroad. It has never paid a single centavo of tax to the Philippine Government. Under the law, it has no right to the remedy it seeks. Isetann Department Store is entitled to use its trademark in the Philippines.3. Philip Morris vs. Court of Appeals[GRN 91332 July 16, 1993.]MELO, J.:

Facts:Petitioners Philip Morris, Inc., Benson and Hedges (Canada), Inc., and Fabriques of Tabac Reunies, S.A., are ascribing whimsical exercise of the faculty conferred upon magistrates by Section 6, Rule 58 of the Revised Rules of Court when respondent Court of Appeals lifted the writ of preliminary injunction it earlier had issued against Fortune Tobacco Corporation, herein private respondent, from manufacturing and selling "MARK" cigarettes in the local market. Banking on the thesis that petitioners' respective symbols "MARK VII", 'MARK TEN", and "MARK", also for cigarettes, must be protected against unauthorized appropriation, Philip Morris, Incorporated is a corporation organized under the laws of the State of Virginia, United States of America, and does business at 100 Park Avenue, New York, New York, United States of America. The two other plaintiff foreign corporations, which are wholly-owned subsidiaries of Philip Morris, Inc., are similarly not doing business in the Philippines but are suing on an isolated transaction. Plaintiffs-petitioners asserted that defendant Fortune Tobacco Corporation has no right to manufacture and sell cigarettes bearing the allegedly identical or confusingly similar trademark' Plaintiffs admit in the complaint that "xxx they are not doing business in the Philippines and are suing on an isolated transaction xxx'. This simply means that they are not engaged in the sale, manufacture, importation, expor[tation and advertisement of their cigarette products in the Philippines. Issue:Whether or not there has been an invasion o plaintiffs' right of property to such trademark or trade name. Whether of not there is a violation of the International Agreement on protection of trademarks.Held:There is no proof whatsoever that any of plaintiffs products which they seek to protect from any adverse effect of the trademark applied for by defendant, is in actual use and available for commercial purposes anywhere in the Philippines. To sustain a successful prosecution of their suit for infringement, petitioners, as foreign corporations not engaged in local commerce, rely on Section 21-A of the Trademark Law reading as follows:SECTION 21-A. Any foreign corporation or juristic person to which a mark or trade-name has been registered or assigned under this act may bring an action hereunder for infringement, for unfair competition, or false designation of origin and false description, whether or not it has been licensed to do business in the Philippines under Act Numbered Fourteen hundred and fiftynine, as amended, otherwise known as the Corporation Law, at the time it brings complaint: Provided, That the country of which the said foreign corporation or juristic person is a citizen or in which it is domiciled, by treaty, convention or law, grants a similar privilege to corporate or juristic persons of the Philippines. (As inserted by Sec. 7 of Republic Act No. 638.) to drive home the point that they are not precluded from initiating a cause of action in the Philippines on account of the principal perception that another entity is pirating their symbol without any lawful authority to do so. A fundamental principle of Philippine Trademark Law is that actual use in commerce in the Philippines is a pre-requisite to the acquisition of ownership over a trademark or a tradename. Adoption alone of a trade, ark would not give exclusive right thereto. Such right grows out of their actual use. Adoption is not use. One may make advertisements, issue circulars, give out price lists on certain goods; but these alone would not give exclusive right of use. For trademark is a creation of use. The records show that the petitioner has never conducted business in the Philippines. It has never promoted its tradename of trademark in the Philippines. It is unknown to Filipinos except the very few who may have noticed it while travelling abroad. It has paid a single centavo of tax to the Philippine government. Under the law, it has no right to the remedy it seeks. In other words, petitioners may have the capacity to sue for infringement irrespective of lack of business activity in the Philippines on account of Section 21-A of the Trademark Law but the question of whether they have an exclusive right over the'symbol as to justify issuance of the controversial writ will depend on actual use of their trademarks in the Philippines in line with Sections 2 and 2-A of the same law. It is thus incongruous on petitioners to claim that when a foreign corporation not licensed to do business in the Philippines files a complaint for infringement, the entity need not be actually using its trademark in commerce in the Philippines. In view of the explicit representation of petitioners in the complaint that they are not engaged in business in the Philippines, it inevitably follows that no conceivable damage can be suffered by them not to mention the foremost consideration heretofore discussed on the absence of their "right" to be protected.Following universal acquiescence and comity, our municipal law on trademarks regarding the requirement of actual use in the Philippines must subordinate an international agreement inasmuch as the apparent clash is being decided by a municipal tribunal (Mortensen vs. Peters, Great Britain, High Court of Judiciary of Scotland, 1906, 8 Sessions 93; Paras, International Law and World Organization, 1971 Ed., p. 20). Withal, the fact that international law has been made part of the law of the land does not by any means imply the primacy of international law over national law in the municipal sphere. Under the doctrine of incorporation as applied in most countries, rules of international law are given a standing equal, not superior, to national legislative enactments (Salonga and Yap, Public International Law, Fourth ed., 1974, p. 16).4. PHILIP MORRIS, INC. VS. FORTUNE TOBACCO CORPORATION (Equal Standing of International Law and Municipal Law)

Penned by: GARCIA, J.:

Petition for review under Rule 45 of the Rules of Court, petitioners Philip Morris, Inc., Benson & Hedges (Canada) Inc., and Fabriques de Tabac Reunies, S.A. (now Philip Morris Products S.A.) seek the reversal and setting aside of the following issuances of the Court of Appeals (CA) in CA-G.R. CV No. 66619: PETITION DENIED

1. Decision dated January 21, 20031 affirming an earlier decision of the Regional Trial Court of Pasig City, Branch 166, in its Civil Case No. 47374 Dismissed the complaint for trademark infringement and damages thereat commenced by the petitioners against respondent Fortune Tobacco Corporation; and 2. Resolution dated May 30, 20032 denying petitioners motion for reconsideration.

FACTS OF THE CASE: Petitioner Philip Morris, Inc., a corporation (State of Virginia, U.S.A), is the registered owner of the trademark MARK VII for cigarettes. (per Certificate of Registration No. 18723 issued on April 26, 1973 by the Philippine Patents Office (PPO) Similarly, petitioner Benson & Hedges (Canada), Inc., a subsidiary of Philip Morris, Inc., is the registered owner of the trademark MARK TEN for cigarettes (PPO Certificate of Registration No. 11147) Fabriques de Tabac Reunies, S.A. (Swiss company), another subsidiary of Philip Morris, Inc., is the assignee of the trademark LARK, (Trademark Certificate of Registration No. 19053) (originally registered in 1964 by Ligget and Myers Tobacco Company) Respondent Fortune Tobacco Corporation, a company organized in the Philippines, manufactures and sells cigarettes using the trademark MARK.

Petitioners, on the claim that an infringement of their respective trademarks had been committed, filed, on August 18, 1982, a Complaint for Infringement of Trademark and Damages against respondent Fortune Tobacco Corporation, docketed as Civil Case No. 47374 of the Regional Trial Court of Pasig, Branch 166.The decision under review summarized what happened next, as follows: Prayer for the issuance of a preliminary injunction, [petitioners] alleged that they are foreign corporations not doing business in the Philippines and are suing on an isolated transaction. Countries in which they are domiciled grant to corporate or juristic persons of the Philippines the privilege to bring action for infringement, without need of a license to do business in those countries. [Petitioners] likewise manifested [being registered owners of the trademark MARK VII and MARK TEN registered the trademarks in their respective countries of origin by virtue of the long and extensive usage of the same, these trademarks have already gained international fame and acceptance [respondent], without any previous consent from any of the [petitioners], manufactured and sold cigarettes bearing the identical and/or confusingly similar trademark MARK have caused and is likely to cause confusion or mistake, or would deceive purchasers and the public in general into buying these products under the impression and mistaken belief that they are buying [petitioners] products. Invoked provisions of the Paris Convention for the Protection of Industrial and Intellectual Property (Paris Convention) Philippines is a signatory, [petitioners] pointed out that upon the request of an interested party, a country of the Union may prohibit the use of a trademark which constitutes a reproduction, imitation, or translation of a mark already belonging to a person entitled to the benefits of the said Convention. In accordance with Section 21-A in relation to Section 23 of Republic Act 166, as amended, they are entitled to relief in the form of damages [and] the issuance of a writ of preliminary injunction which should be made permanent. [Respondent] filed its Answer denying [petitioners] material allegations and averred [among other things] that MARK is a common word, which cannot particularly identify a product to be the product of the [petitioners] After the termination of the trial on the merits trial court rendered its Decision dated November 3, 1999 dismissing the complaint and counterclaim after making a finding that the [respondent] did not commit trademark infringement against the [petitioners]. The issue of whether or not there was infringement of the [petitioners] trademarks by the [respondent] was likewise answered in the negative. It expounded that in order for a name, symbol or device to constitute a trademark, it must, either by itself or by association, point distinctly to the origin or ownership of the article to which it is applied and be of such nature as to permit an exclusive appropriation by one person. Maintaining to have the standing to sue in the local forum and that respondent has committed trademark infringement, petitioners went on appeal to the CA. (Appellate recourse docket CA-G.R. CV No. 66619) CA decision on January 21, 2003 (while ruling for petitioners on the matter of their legal capacity to sue in this country for trademark infringement) affirmed the trial courts decision on the underlying issue of respondents liability for infringement. Motion for reconsideration denied by the CA (Resolution of May 30, 2003)ISSUES Petitioners seek petition for review (Court of Appeals): (1) whether or not petitioners, as Philippine registrants of trademarks, are entitled to enforce trademark rights in this country; (2) whether or not respondent has committed trademark infringement against petitioners by its use of the mark MARK for its cigarettes, hence liable for damages.

Respondent: issue the propriety of the petition as it allegedly raises questions of fact. The petition is bereft of merit. Petition raises both questions of fact and law question of law exists when the doubt or difference arises as to what the law is on a certain state of facts question of fact when the doubt or difference arises as to the truth or falsity of alleged facts Court is not the proper venue to consider factual issues as it is not a trier of facts Unless the factual findings of the appellate court are mistaken, absurd, speculative, conflicting, tainted with grave abuse of discretion, or contrary to the findings culled by the court of origin, we will not disturb them Petitioners: contentions should be treated as purely legal since they are assailing erroneous conclusions deduced from a set of undisputed facts

A trademark is any distinctive word, name, symbol, emblem, sign, or device, or any combination thereof adopted and used by a manufacturer or merchant on his goods to identify and distinguish them from those manufactured, sold, or dealt in by others. A trademark deserves protection. PETITIONER: Petitioners assert that, as corporate nationals of member-countries of the Paris Union, they can sue before Philippine courts for infringement of trademarks, or for unfair competition, without need of obtaining registration or a license to do business in the Philippines, and without necessity of actually doing business in the Philippines. Right and mechanism are accorded by Section 21-A of Republic Act (R.A.) No. 166 or the Trademark Law, as amended Article 2 of the Paris Convention for the Protection of Industrial Property, aka Paris Convention. Not doing business in the Philippines does not mean that cigarettes bearing their trademarks are not available and sold locally. Citing Converse Rubber Corporation v. Universal Rubber Products, Inc., such availability and sale may be effected through the acts of importers and distributors. Entitlement to protection even in the absence of actual use of trademarks in the country Philippines adherence to the Trade Related Aspects of Intellectual Property Rights or the TRIPS Agreement enactment of R.A. No. 8293, or the Intellectual Property Code (IP Code) fame of a trademark may be acquired through promotion or advertising with no explicit requirement of actual use in local trade or commerce Before discussing petitioners claimed entitlement to enforce trademark rights in the Philippines, it must be emphasized that their standing to sue in Philippine courts had been recognized, and rightly so, by the CA such right to sue does not necessarily mean protection of their registered marks in the absence of actual use in the Philippines. Thus clarified, what petitioners now harp about is their entitlement to protection on the strength of registration of their trademarks in the Philippines. HELD/RATIO:As we ruled in G.R. No. 91332,18 :

1. RECIPROCITY REQUIREMENT Registration of a trademark gives the registrant (petitioners) advantages denied non-registrants or ordinary users (respondent) validity of the registration ownership and the exclusive right to use the registered marks they may not successfully sue on the basis alone of their respective certificates of registration of trademarks. Petitioners: still foreign corporations condition to availment of the rights and privileges & their trademarks in this country: On top of Philippine registration, their country grants substantially similar rights and privileges to Filipino citizens pursuant to Section 21-A20 of R.A. No. 166. In Leviton Industries v. Salvador Court: reciprocity requirement is a condition sine qua non to filing a suit by a foreign corporation Unless alleged in the complaint, would justify dismissal complainant is a national of a Paris Convention- adhering country, its allegation that it is suing under said Section 21-A would suffice, because the reciprocal agreement between the two countries is embodied and supplied by the Paris Convention being considered part of Philippine municipal laws, can be taken judicial notice of in infringement suits.2. REGISTRATION VERSUS ACTUAL USE!! members of the Paris Union does not automatically entitle petitioners to the protection of their trademarks in this country absent actual use of the marks in local commerce and trade Philippines adherence to the Paris Convention effectively obligates the country to honor and enforce its provisions( as regards the protection of industrial property of foreign nationals in this country) However, any protection accorded has to be made subject to the limitations of Philippine laws. Hence, despite Article 2 of the Paris Convention which substantially provides that: (1) nationals of member-countries shall have in this country rights specially provided by the Convention as are consistent with Philippine laws, and enjoy the privileges that Philippine laws now grant or may hereafter grant to its national (2) while no domicile requirement in the country where protection is claimed shall be required of persons entitled to the benefits of the Union for the enjoyment of any industrial property rights foreign nationals must still observe and comply with the conditions imposed by Philippine law on its nationals. R.A. No. 166 (as amended, specifically Sections 228 and 2-A29), mandates actual use of the marks and/or emblems in local commerce and trade before they may be registered and ownership thereof acquired the petitioners cannot, therefore, dispense with the element of actual use. Their being nationals of member-countries of the Paris Union does not alter the legal situation. In Emerald Garment Mfg. Corporation v. Court of Appeals, the Court reiterated its rulings in Sterling Products International, Inc. v. Farbenfabriken Bayer Aktiengesellschaft, Kabushi Kaisha Isetan v. Intermediate Appellate Court, and Philip Morris v. Court of Appeals and Fortune Tobacco Corporation on the importance of actual commercial use of a trademark in the Philippines notwithstanding the Paris Convention: The provisions of the 1965 Paris Convention relied upon by private respondent and Sec. 21-A of the Trademark Law were sufficiently expounded upon and qualified in the recent case of Philip Morris, Inc., et. al. vs. Court of Appeals: Following universal acquiescence and comity, our municipal law on trademarks regarding the requirements of actual use in the Philippines must subordinate an international agreement inasmuch as the apparent clash is being decided by a municipal tribunal. Withal, the fact that international law has been made part of the law of the land does not by any means imply the primacy of international law over national law in the municipal sphere. Under the doctrine of incorporation as applied in most countries, rules of International Law are given a standing equal, not superior, to national legislative enactments. A foreign corporation) may have the capacity to sue for infringement but whether they have an exclusive right over their symbol as to justify issuance of the controversial writ will depend on actual use of their trademarks in the Philippines in line with Sections 2 and 2-A of the same law. It is thus incongruous for petitioners to claim that when a foreign corporation not licensed to do business in the Philippines files a complaint for infringement, the entity need not be actually using its trademark in commerce in the Philippines. Such a foreign corporation may have the personality to file a suit for infringement but it may not necessarily be entitled to protection due to absence of actual use of the emblem in the local market. Registration of trademark cannot be deemed conclusive as to the actual use of such trademark in local commerce. registration does not confer upon the registrant an absolute right to the registered mark. merely constitutes prima facie evidence that the registrant is the owner of the registered mark. Evidence of non-usage of the mark rebuts the presumption of trademark ownership We stress that registration in the Philippines of trademarks does not ipso facto convey an absolute right or exclusive ownership thereof. Shangri-La International Hotel Management, Ltd. v. Development Group of Companies, Inc. Trademark is a creation of use Actual use is a pre-requisite to exclusive ownership Registration is only an administrative confirmation of the existence of the right of ownership of the mark does not perfect such right; actual use thereof is the perfecting ingredient.1. Petitioners reliance on Converse Rubber Corporation is quite misplaced0. different factual milieu0. foreign owner of a Philippine trademark, albeit not licensed to do, and not so engaged in, business in the Philippines, may actually earn reputation or goodwill for its goods in the country.0. But unlike in the instant case, evidence of actual sales of Converse rubber shoes, such as sales invoices, receipts and the testimony of a legitimate trader, was presented in Converse. This Court also finds the IP Code and the TRIPS Agreement to be inapplicable0. the infringement complaint filed in August 1982 and tried under the aegis of R.A. No. 166, as amended. 0. The IP Code (January 1, 1998) no provision on retroactivity; TRIPS Agreement (December 16, 1994) registration of a trademark unaccompanied by actual use thereof in the country accords the registrant only the standing to sue for infringement in Philippine courts. Entitlement to protection of such trademark in the country is entirely a different matter.5. Shangri-La International Hotel Management, Ltd. (SLIHM) Vs. Developers Group of Companies, Inc. (DGCI)

NATURE:petition for review on certiorari of the decision & resolution of the Court of Appeals

FACTS:petitioners (Shangri-La) assail to set & seek to set aside the decision of the Court of Appeals & its resolution w/c affirmed w/ modification an earlier decision of the RTC of QC, an action for infringement & damages threat commenced by respondent (DCGI) against them.

core of this controversy: Shangri-La mark & S logo. Respondent DGCI claims ownership of said mark & logo in the Philippines.

Bureau of Patents, Trademarks & Technology Transfer (BPTTT) issued DGCI a certificate of registration (may 31, 2983) and since then, DGCI started using the Shangri-La & S in its restaurant business.

on the other hand, Kuok family (owns & operates a chain of hotels & hotel-related transactions since 1969) adopted the name Shangri-La as part of corporate names of all companies under the Kuok Grp. Of Companies as far back as 1962. Name Shangri-La has been used in all their hotels & hotel-related establishments worldwide.

And for centralization purposes= they use Shangri-La & S logo in their hotels in places such as Singapore and Hong Kong. They also incorporated it in the Phils. In the beginning of 1987 in Edsa Shangri-La (Mandaluyong) & Makati Shangri-La (Makati)

Ramon Syhunliong as DGCIs witness (businessman; named his restaurant business Shangri-la)

DGCI filed a complaint for Infringement & Damages, lower courts judgment was in favor of the respondent (DGCI)1. Kuok Groups bulk use of the tradename was abroad, not in the Phils (until 1987)1. The Paris Convention must yield to a municipal law

ISSUES:1. Whether certification against forum-shopping submitted on the behalf of the petitioners is efficient (NOT RELEVANT TO CONSTI TOPIC)1. Whether the issue posed by petitioners are purely factual in nature hence improper for resolution in the instant petition for review on certiorati

DECISION:the instant petition is GRANTED

RATIO:The new Intellectual Property Code (IPC), R.A. No. 8293, undoubtedly shows the firm resolve of the Philippines to observe & follow the Paris Convention by incorporating the relevant portions of the Convention such that persons who may question a mark (that is, oppose registration, petition for the cancellation thereof, sue for unfair competition) include persons whose internationally well-known mark, whether or not registered, is identical with or confusingly similar to or constitutes a translation of a mark that is sought to be registered or is actually registered.

Paris Convention mandates that protection should be afforded to internationally known marks as signatory to the Paris Convention w/o regard as to whether the foreign corporation registered, licensed or doing business in the Phils.

our municipal law on trademarks regarding the requirement of actual use in the Phils must subordinate a international agreement

the fact that international law has been made part of the law of the land does not any means imply the primacy of international law over national law in the municipal sphere. Under the doctrine of incorporation as applied in most countries, rules of international law are given equal footage

petitioners separate personalities from their mother corporation be an obstacle in the enforcement of their rights as part of Kuok Grp of Companies7. EY vs SHEN DAR/ CBR-KING

FACTS:- From 1997 to 2004, EYIS imported air compressors from Shen Dar through sales contracts. In the corresponding Bill of Ladings, the items were described merely as aircompressors. There is no documentary evidence to show that such air compressors were marked "VESPA."- On June 9, 1997, Shen Dar filed Trademark Application with the IPO for the mark "VESPA, Chinese Characters and Device" for use on air compressors and welding machines .- On July 28, 1999, EYIS filed Trademark Application also for the mark "VESPA," for use on air compressors.- On January 18, 2004, the IPO issued in favor of EYIS a COR. Thereafter, on February 8,2007, Shen Dar was also issued a COR- Shen Dar filed a Petition for Cancellation of EYIS COR with the BLA- In the Petition, Shen Dar primarily argued that the issuance of the COR in favor of EYIS violated the IP CODE having first filed an application for the mark. Shen Dar further alleged that EYIS was a mere distributor of air compressors bearing the mark "VESPA" which it imported from Shen Dar. Shen Dar also argued that it had prior and exclusive right to the use and registration of the mark "VESPA" in the Philippines under the provisions of the Paris Convention.- EYIS and Yap denied the claim of Shen Dar to be the true owners of the mark "VESPA" being the sole assembler and fabricator of air compressors since the early 1990s. They further alleged that the air compressors that Shen Dar allegedly supplied them bore the mark "SD" for Shen Dar and not "VESPA." Moreover, EYIS argued that Shen Dar, not being the owner of the mark, could not seek protection from the provisions of the ParisConvention or the IP Code.- BLA: granted VESPA in favour of EY Industrial- IPO upheld BLO and cancelled registration of Shen DarISSUE:1) Whether the IPO Director General can validly cancel Shen Dars Certificate of Registration Shen Dar challenges the propriety of such cancellation on the ground that there was no petition for cancellation as required under Sec. 151 of RA 8293.

YES. The action of the Director General is proper. It is well within his functions under the code. "SEC. 7.The Director General and Deputies Director General."x x x"(b) Exercise exclusive appellate jurisdiction over all decisions rendered by the Director of Legal Affairs, the Director of Patents, the Director of Trademarks, the Director of Copyright and Other Related Rights, and the Director of the Documentation, Information and Technology Transfer Bureau. the decisions of the Director General in the exercise of his appellate jurisdiction in respect of the decisions of the Director of Patents, the Director of Trademarks and the Director of Copyright and Other Related Rights shall be appealable to the Court of Appeals in accordance with the Rules of Court; and those in respect of the decisions of the Director of the Documentation, Information and Technology Transfer Bureau shall be appealable to the Secretary of Trade and Industry;

Sec 10.3. The Director General may by Regulations establish the procedure to govern the implementation of this Section. (section 10) Bureau of Legal Affairs

Office Order No. 79, Series of 2005, provides under its Sec. 5 that:Section 5. Rules of Procedure to be followed in the conduct of hearing of Inter Partes cases.The rules of procedure herein contained primarily apply in the conduct of hearing of Inter Partes cases. The Rules of Court may be applied suppletorily. The Bureau shall not be bound by strict technical rules of procedure and evidence but may adopt, in the absence of any applicablerule herein, such mode of proceedings which is consistent with the requirements of fair play and conducive to the just, speedy and inexpensive disposition of cases, and which will give the Bureau the greatest possibility to focus on the contentious issues before it. (Emphasis supplied.)

The above rule reflects the oft-repeated legal principle that quasi-judicial and administrative bodies are not bound by technical rules of procedure. Such principle, however, is tempered by fundamental evidentiary rules, including due process. Thus, we ruled in Aya-ay, Sr. v. Arpaphil Shipping Corp.:It is true that administrative and quasi-judicial bodies like the NLRC are not bound by the technical rules of procedure in the adjudication of cases. However, this procedural rule should not be construed as a license to disregard certain fundamental evidentiary rules.

This was later reiterated in Lepanto Consolidated Mining Company v. Dumapis:29 While it is true that administrative or quasi-judicial bodies like the NLRC are not bound by the technical rules of procedure in the adjudication of cases, this procedural rule should not be construed as a license to disregard certain fundamental evidentiary rules. The evidence presented must at least have a modicum of admissibility for it to have probative value. Not only must there be some evidence to support a finding or conclusion, but the evidence must be substantial.

Substantial evidence is more than a mere scintilla. It means such relevant evidence as areasonable mind might accept as adequate to support a conclusion. Thus, even though technicalrules of evidence are not strictly complied with before the LA and the NLRC, their decision mustbe based on evidence that must, at the very least, be substantial.

The fact that no petition for cancellation was filed against the COR issued to Shen Dar does not preclude the cancellation of Shen Dars COR. It must be emphasized that, during the hearing for the cancellation of EYIS COR before the BLA, Shen Dar tried to establish that it, not EYIS, was the true owner of the mark "VESPA" and, thus, entitled to have it registered. Shen Dar had more than sufficient opportunity to present its evidence and argue its case, and it did. It was given its day in court and its right to due process was respected. The IPO Director Generals disregard of the procedure for the cancellation of a registered mark was a valid exercise of his discretion.8. BIRKENSTOCK ORTHOPAEDIE GMBH AND CO. KG (formerly BIRKENSTOCK ORTHOPAEDIE GMBH), petitioner, vs. PHILIPPINE SHOE EXPO MARKETING CORPORATION, respondent.[G.R. No. 194307. November 20, 2013.]

Petitioners Claim:

Petitioner filed a petition for cancellation of Registration No. 56334 on the ground that it is the lawful and rightful owner of the Birkenstockmarks.

Respondents Claim:

In response, respondent claims, inter alia, that: (a) Respondent, together with its predecessor-in-interest, has been using Birkenstock marks in the Philippines for more than 16 years through the mark "BIRKENSTOCK AND DEVICE".(b) The marks covered by the subject applications are identical to the one covered by RegistrationNo. 56334 and thus, petitioner has no right to the registration of such marks.(c) Respondent's predecessor-in-interest likewise obtained a Certificate of Copyright Registration No. 0-11193 for the word "BIRKENSTOCK".(d) While respondent and its predecessor-in-interest failed to file the 10th Year DAU, it continued the use of "BIRKENSTOCK AND DEVICE" in lawful commerce.(e) to record its continued ownership and exclusive right to use the "BIRKENSTOCK" marks, it has filed TASN 4-2006-010273 as a "re-application" of its old registration, Registration No. 56334.

Issue/s:Whether or not the subject marks should be allowed registration in the name of petitioner?

Courts ruling:

Yes, It is well-settled that "the rules of procedure are mere tools aimed at facilitating the attainment of justice, rather than its frustration. A strict and rigid application of the rules must always be eschewed when it would subvert the primary objective of the rules, that is, to enhance fair trials and expedite justice. Technicalities should never be used to defeat the substantive rights of the other party.In the case at bar, while petitioner submitted mere photocopies as documentary evidence in the Consolidated Opposition Cases, it should be noted that the IPO had already obtained the originals of such documentary evidence in the related Cancellation Case earlier filed before it.In addition, Section 12 of Republic Act No. (RA) 166, requires the filing of a DAU on specified periods, to wit: That registrations under the provisions of this Act shall be cancelled by the Director, unless within one year following the fifth, tenth and fifteenth anniversaries of the date of issue of the certificate of registration, the registrant shall file in the Patent Office an affidavit showing that the mark or trade-name is still in useThe aforementioned provision clearly reveals that failure to file the DAU within the requisite period results in the automatic cancellation of registration of a trademark. In turn, such failure is tantamount to the abandonment or withdrawal of any right or interest the registrant has over his trademark.Lastly, in the instant case, petitioner was able to establish that it is the owner of the mark "BIRKENSTOCK." It submitted evidence relating to the origin and history of "BIRKENSTOCK" and its use in commerce long before respondent was able to register the same here in the Philippines. It has sufficiently proven that "BIRKENSTOCK" was first adopted in Europe in 1774 by its inventor, JohannBirkenstock, a shoemaker, on his line of quality footwear and thereafter, numerous generations of his kin continuously engaged in the manufacture and sale of shoes and sandals bearing the mark "BIRKENSTOCK" until it became the entity now known as the petitioner.