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8. Fredco Manufacturing Corporation v.

President and Fellows of


Harvard College
G.R. No 185917, June 11, 2011
Fredco Manufacturing Corporation filed before the Bureau of Legal Affairs
of the Philippine Intellectual Property Office a Petition for Cancellation of
Registration No. 56561 issued to President and Fellows of Harvard College
for the mark Harvard Veritas Shield Symbol.
Fredco claimed that Harvard University had no right to register the mark,
since its Philippine registration was based on a foreign registration.
Hence,Harvard University could not have been considered as a prior user
of
the
mark
in
the
Philippines.
Fredco explained that the mark was first used in the Philippines by its
predecessor-in-interest New York Garments as early as 1982, and a
certificate of registration was then issued in 1988 for goods under class
25. Although the registration was cancelled for the non-filing of an
affidavit of use, the fact remained that the registration preceded Harvard
Universitys use of the subject mark in the Philippines.
Harvard University, on the other hand claimed that the name and mark
Harvard was adopted in 1639 as the name of Harvard College of
Cambridge,
Massachusetts,
USA.
The Bureau of Legal Affairs ruled in favor of Fredco and ordered the
cancellation of Registration No. 56561. It found Fredco to be the prior user
and adopter of the mark Harvard in the Philippines. On appeal, the
Office of the Director General of the Intellectual Property Office reversed
the BLA ruling on the ground that more than the use of the trademark in
the Philippines, the applicant must be the owner of the mark sought to be
registered. Fredco, not being the owner of the mark, had no right to
register it.
The Court Appeals affirmed the decision of the Office of the Director
General. Fredco appealed the decision with the Supreme Court. In its
appeal, Fredco insisted that the date of actual use in the Philippines
should prevail on the issue of who had a better right to the mark.
The SC held that:
Under Section 2 of Republic Act No. 166, as amended (R.A. No. 166),
before a trademark can be registered, it must have been actually used in
commerce for not less than two months in the Philippines prior to the

filing of an application for its registration. While Harvard University had


actual prior use of its marks abroad for a long time, it did not have actual
prior use in the Philippines of the mark "Harvard Veritas Shield Symbol"
before its application for registration of the mark "Harvard" with the then
Philippine Patents Office. However, Harvard University's registration of the
name "Harvard" is based on home registration which is allowed under
Section 37 of R.A. No. 166. As pointed out by Harvard University in its
Comment:
Section 2 of the Trademark law (R.A. 166) requires for the registration of
trademark that the applicant thereof must prove that the same has been
actually in use in commerce or services for not less than two (2) months
in the Philippines before the application for registration is filed, where the
trademark sought to be registered has already been registered in a
foreign country that is a member of the Paris Convention, the requirement
of proof of use in the commerce in the Philippines for the said period is
not necessary. An applicant for registration based on home certificate of
registration need not even have used the mark or trade name in this
country.
In any event, under Section 239.2 of Republic Act No. 8293 (R.A. No.
8293), "[m]arks registered under Republic Act No. 166 shall remain in
force but shall be deemed to have been granted under this Act x x x,"
which does not require actual prior use of the mark in the Philippines.
Since the mark "Harvard Veritas Shield Symbol" is now deemed granted
under R.A. No. 8293, any alleged defect arising from the absence of actual
prior use in the Philippines has been cured by Section 239.2.
The Supreme Court further ruled that Harvard University is entitled to
protection in the Philippines of its trade name Harvard even without
registration of such trade name in the Philippines. It explained:
There is no question then, and this Court so declares, that "Harvard" is a
well-known name and mark not only in the United States but also
internationally, including the Philippines.

13. Victorio P. Diaz vs People of the Philippines and Levi Strauss


[Phils.], Inc.
G.R. No. 180677 February 18, 2003
Facts:
Levi Strauss Philippines, Inc. (Levis Philippines) is a licensee of Levis. After
receiving information that Diaz was selling counterfeit LEVIS 501 jeans in his
tailoring shops in Almanza and Talon, Las Pias City, Levis Philippines hired a
private investigation group to verify the information. Surveillance and the
purchase of jeans from the tailoring shops of Diaz established that the jeans
bought from the tailoring shops of Diaz were counterfeit or imitations of
LEVIS 501. Armed with search warrants, NBI agents searched the tailoring
shops of Diaz and seized several fake LEVIS 501 jeans from them. Levis
Philippines claimed that it did not authorize the making and selling of the
seized jeans; that each of the jeans were mere imitations of genuine LEVIS
501 jeans by each of them bearing the registered trademarks, like the
arcuate design, the tab, and the leather patch; and that the seized jeans
could be mistaken for original LEVIS 501 jeans due to the placement of the
arcuate, tab, and two-horse leather patch.
On his part, Diaz admitted being the owner of the shops searched, but he
denied any criminal liability. Diaz stated that he did not manufacture Levis
jeans, and that he used the label LS Jeans Tailoring in the jeans that he
made and sold; that the label LS Jeans Tailoring was registered with the
Intellectual Property Office; that his shops received clothes for sewing or
repair; that his shops offered made-to-order jeans, whose styles or designs
were done in accordance with instructions of the customers; that since the
time his shops began operating in 1992, he had received no notice or
warning regarding his operations; that the jeans he produced were easily
recognizable because the label LS Jeans Tailoring, and the names of the
customers were placed inside the pockets, and each of the jeans had an
LSJT red tab; that LS stood for Latest Style; and that the leather patch
on his jeans had two buffaloes, not two horses.
Issue:
Whether there exists a likelihood of confusion between the trademarks of
Levis and Diaz.

Held:
The Court held, through the application of the holistic test, that there was no
likelihood of confusion between the trademarks involved. Accordingly, the
jeans trademarks of Levis Philippines and Diaz must be considered as a
whole in determining the likelihood of confusion between them. The
maongpants or jeans made and sold by Levis Philippines, which included
LEVIS 501, were very popular in the Philippines. The consuming public knew
that the original LEVIS 501 jeans were under a foreign brand and quite
expensive. Such jeans could be purchased only in malls or boutiques as
ready-to-wear items, and were not available in tailoring shops like those of
Diazs as well as not acquired on a made-to-order basis. Under the
circumstances, the consuming public could easily discern if the jeans were
original or fake LEVIS 501, or were manufactured by other brands of jeans.
Diaz used the trademark LS JEANS TAILORING for the jeans he produced
and sold in his tailoring shops. His trademark was visually and aurally
different from the trademark LEVI STRAUSS & CO appearing on the patch
of original jeans under the trademark LEVIS 501. The word LS could not be
confused as a derivative from LEVI STRAUSS by virtue of the LS being
connected to the word TAILORING, thereby openly suggesting that the
jeans bearing the trademark LS JEANS TAILORINGcame or were bought
from the tailoring shops of Diaz, not from the malls or boutiques selling
original LEVIS 501 jeans to the consuming public.
The prosecution also alleged that the accused copied the two horse design
of the petitioner-private complainant but the evidence will show that there
was no such design in the seized jeans. Instead, what is shown is buffalo
design. Again, a horse and a buffalo are two different animals which an
ordinary customer can easily distinguish.
The prosecution further alleged that the red tab was copied by the accused.
However, evidence will show that the red tab used by the private
complainant indicates the word LEVIS while that of the accused indicates
the letters LSJT which means LS JEANS TAILORING. Again, even an ordinary
customer can distinguish the word LEVIS from the letters LSJT.
In terms of classes of customers and channels of trade, the jeans products of
the private complainant and the accused cater to different classes of
customers and flow through the different channels of trade. The customers of
the private complainant are mall goers belonging to class A and B market
group while that of the accused are those who belong to class D and E
market who can only afford Php 300 for a pair of made-to-order pants.

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