Fredco Manufacturing Corporation v.

President and Fellows of Harvard College

G.R. No. 185917, 1 June 2011

By: Erwin V. Zamora

Fredco Manufacturing Corporation (Fredco) 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 (Harvard University) for the
mark Harvard Veritas Shield Symbol under classes 16, 18, 21, 25 and 28.

Fredco claimed that Harvard University had no right to register the mark in class 25,
since its Philippine registration was based on a foreign registration. Thus, Harvard
University could not have been considered as a prior adopter and 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
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 marks Harvard and Harvard Veritas Shield Symbol, had been used in commerce
since 1872, and was registered in more than 50 countries.

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 Supreme Court ruled:

The petition has no merit.

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:

Although 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. The mark "Harvard" is rated as one of the most famous marks in the world.
It has been registered in at least 50 countries. It has been used and promoted
extensively in numerous publications worldwide. It has established a considerable
goodwill worldwide since the founding of Harvard University more than 350 years ago. It
is easily recognizable as the trade name and mark of Harvard University of Cambridge,
Massachusetts, U.S.A., internationally known as one of the leading educational
institutions in the world. As such, even before Harvard University applied for registration
of the mark "Harvard" in the Philippines, the mark was already protected under Article
6bis and Article 8 of the Paris Convention.
Esso Standard v CA Digest

G.R. No. L-29971

Facts of the Case:
The petitioner Esso Standard is a foreign corporation duly licensed to do business in the
philippines. it is engaged in the sale of petroleum products which are identified by the
trademarl 'Esso'. Esso is a successor of Standard Vacuum Oil Co, it registered as a
business name with the Bureau of Commerce in 1962. United Cigarette is a domestic
corporation engaged in the manufacture and sale of cigarettes. it acquired the business
from La Oriental Tobacco Corp including patent rights, once of which is the use of 'Esso'
on its cigarettes.
The petitioner filed a trademark infringement case alleging that it acquired goodwill to
such an extent that the buying public would be deceived as ti the quality and origin of
the said products to the detriment and disadvantage of its own products. The lower
court found United Cigarette guilty of infringement. Upon appeal, the Court of Appeals
ruled that there was no infringment in this case.
Issue: Is there infringement committed?
Ruling: NONE. Infringement is defined by law as the use without the consent of the
trademark owner of any reproduction, counterfeit, copy or colorable imitation of any
registered mark or tradename which would likely cause confusion or mistake or deceive
purchasers or others as to the source or origin of such goods.
The products of both parties (Petroleum and cigarettes) are non-competing. But as to
whether trademark infringement exists depend on whether or not the goods are so
related that the public may be or is actually deceived and misled that they come from
the same maker. Under the Related Goods Theory, goods are related when they belong
to the same class or have the same descriptive properties or when they have same
physical attributes. In these case, the goods are absolutely different and are so foreign
from each other it would be unlikely for purchasers to think that they came from the
same source. Moreover, the goods flow from different channels of trade and are
evidently different in kind and nature.

CANON KABUSHIKI KAISHA vs. COURT OF APPEALS

G.R. No. 120900, July 20, 2000

FACTS:

On January 15, 1985, private respondent NSR Rubber Corporation filed an

application for registration of the mark CANON for sandals in the Bureau of Patents,
Trademarks, and Technology Transfer (BPTTT). Canon Kabushiki Kaisha filed a Verified
Notice of Opposition alleging that it will be damaged by the registration of the trademark
CANON in the name of private respondent since they were using the same trademark for
their footwear line of products. The private respondent will also use the name Canon for
its footwear products.

Based on the records, the evidence presented by petitioner consisted of its

certificates of registration for the mark CANON in various countries covering goods
belonging to class 2, paints, chemical products, toner, and dye stuff. Petitioner also
submitted in evidence its Philippine Trademark Registration No. 39398, showing its
ownership over the trademark CANON.

The BPTTT, on November 10, 1992, issued its decision dismissing the opposition
of petitioner and giving due course to NSR's application for the registration of the
trademark CANON. Canon Kabushiki Kaisha filed an appeal with the Court of Appeals
that eventually affirmed the decision of the BPTTT.

ISSUE:

Is the use of trademark, CANON, by the private respondent affects the business
of Canon Kabushiki Kaisha who has an existing ownership of a trademark also known as
CANON?

HELD:

The Supreme Court says that ordinarily, the ownership of a trademark or

tradename is a property right that the owner is entitled to protect as mandated by the
Trademark Law. However, when a trademark is used by a party for a product in which the
other party does not deal, the use of the same trademark on the latter's product cannot
be validly objected to.

The BPTTT correctly ruled that since the certificate of registration of petitioner for
the trademark CANON covers class 2 (paints, chemical products, toner, dyestuff), private
respondent can use the trademark CANON for its goods classified as class 25 (sandals).
Clearly, there is a world of difference between the paints, chemical products, toner, and
dyestuff of petitioner and the sandals of private respondent.

Faberge v IAC Digest

G.R. No. 71189, November 4, 1992

Facts of the Case:
Co Beng Kay applied for the registration of the trademark 'BRUTE' to be used it its
underwear (briefs) products. The petitioner opposed on the ground that there is
similarity with their own symbol (BRUT, Brut33 & Device) used on its aftershave,
deodorant, cream shave, hairspray and hair shampoo/soaps and that it would cause
injury to their business reputation. It must be noted that the petitioner never applied for
registration of said trademark for its brief products. The Patent Office allowed Co Beng
Kay the registration and this was further affirmed by the Court of Appeals.
Issue: Is there confusing similarity between the challenged marks and that its use
would likely cause confusion on the part of the purchasers?
HELD: NONE. Co Beng Kay may rightly appropriate the mark. In this case Sec. 20
(Philippine Intellectual Property Law) is controlling. The certificate of registration issued
confers the exclusive right to use its own symbol only to those goods specified by the
first user in the certificate, subject to any conditions or limitations stated therein.
Moreover, the two products are so dissimilar that a purchaser of one (a brief) would not
be misled or mistaken into buying the other (such as an aftershave).

Ang v. Teodoro
[74 Phil 50 (1942)]

G.R. No. L-48226

December 14, 1942

Facts:

Respondent Toribio Teodoro has continuously used "Ang Tibay," both as a trade-mark
and as a trade-name, in the manufacture and sale of slippers, shoes, and indoor
baseballs since 1910. On September 29, 1915, he formally registered it as trade-mark
and as trade-name on January 3, 1933.

Petitioner Ana Ang registered the same trade-mark "Ang Tibay" for pants and shirts on
April 11, 1932, and established a factory for the manufacture of said articles in the year
1937.

The Court of First Instance of Manila absolved the defendant (Ms. Ang) on the grounds
that the two trademarks are dissimilar and are used on different and non-competing
goods; that there had been no exclusive use of the trade-mark by the plaintiff; and that
there had been no fraud in the use of the said trade-mark by the defendant because the
goods on which it is used are essentially different from those of the plaintiff.

The Court of Appeals reversed said judgment, directing the Director of Commerce to
cancel the registration of the trade-mark "Ang Tibay" in favor of petitioner, and
perpetually enjoining the latter from using said trade-mark on goods manufactured and
sold by her.
Thus, this case, a petition for certiorari.

Issue:

Are the goods or articles or which the two trademarks are used similar or belong to the
same class of merchandise?

Ruling:

Yes, pants and shirts are goods closely similar to shoes and slippers. They belong to the
same class of merchandise as shoes and slippers. They are closely related goods.
The Supreme Court affirmed the judgment of the Court of Appeals and added that
although two non-competing articles may be classified under to different classes by the
Patent Office because they are deemed not to possess the same descriptive properties,
they would, nevertheless, be held by the courts to belong to the same class if the
simultaneous use on them of identical or closely similar trademarks would be likely to
cause confusion as to the origin, or personal source, of the second users goods. They
would be considered as not falling under the same class only if they are so dissimilar or
so foreign to each other as to make it unlikely that the purchaser would think that the first
user made the second users goods.

The function of a trade-mark is to point distinctively, either by its own meaning or by

association, to the origin or ownership of the wares to which it is applied. "Ang Tibay,"
as used by the respondent to designate his wares, had exactly performed that function
for twenty-two years before the petitioner adopted it as a trade-mark in her own
business. "Ang Tibay" shoes and slippers are, by association, known throughout the
Philippines as products of the "Ang Tibay" factory owned and operated by the
respondent. Even if "Ang Tibay," therefore, were not capable of exclusive appropriation
as a trade-mark, the application of the doctrine of secondary meaning could
nevertheless be fully sustained because, in any event, by respondent's long and
exclusive use of said phrase with reference to his products and his business, it has
acquired a proprietary connotation. This doctrine is to the effect that a word or phrase
originally incapable of exclusive appropriation with reference to an article on the market,
because geographically or otherwise descriptive, might nevertheless have been used so
long and so exclusively by one producer with reference to his article that, in that trade
and to that branch of the purchasing public, the word or phrase has come to mean that
the article was his product.
 ASIA BREWERY V. COURT OF APPEALS

224 SCRA 437

FACTS:
SMC filed a case against petitioner for infringement of trademark. It alleged that the
bottles used by Asia Brewery were confusingly similar to those used by SMC in the
packaging of its beer. The trial court held in favor of Asia Brewery but was reversed in
the appellate court.

HELD:
Using the holistic test, wherein all circumstances were given consideration, there was
no infringement committed by petitioner. There are two tests available for colorable
imitation. One is the dominancy test. If the form, marks, contents, words of other special
arrangement or general appearance of the two marks or devices are such as would
likely mislead persons in the ordinary course of purchasing the genuine article, then the
similarity is such as would entitle the opposer to equitable protection.
Under the holistic test, on the other hand, the opposing trademarks are compared in
their entirety to determine confusing similarity.

ASIA BREWERY VS. COURT OF APPEALS AND SAN MIGUEL CORP.- Unfair
Competition

Nobody can acquire any exclusive right to market articles supplying the simple human
needs in containers or wrappers of the general form, size and character commonly and
immediately used in marketing such articles.

FACTS:
San Miguel Corp. (SMC) filed a complaint against Asia Brewery Inc. (ABI) for
infringement of trademark and unfair competition. RTC dismissed the complaint finding
that ABI has not committed trademark infringement or unfair competition. The CA
reversed the decision finding that ABI is guilty of trademark infringement and unfair
competition thus the case at bar.

ISSUE: Whether or not ABI infringes SMCs trademark and as such constitutes unfair
competition
HELD: NO
Infringement is determined by a test of dominancy. If the competing trademark contains
the main or essential or dominant features of another and confusion and deception is
likely to result, infringement takes place. A closer look at the trademark of both
companies will show that the dominant features of each absolutely bear no similarity to
each other. SMCs dominant trademark is the name of the product, San Miguel Pale
Pilsen written in white Gothic letters with elaborate serifs at the beginning and end of
the letters S and M on an amber background while ABIs is the name Beer Pale
Pilsen with the word Beer written in large amber letters, larger than any of the letter
found in SMC label.

The word pale pilsen on ABIs trademark does not constitute trademark infringement
for it is a generic word descriptive of the color of a type of beer. No one may appropriate
generic or descriptive words for they belong to the public domain.

ABI is likewise not guilty of unfair competition for unfair competition is the employment
of deception or any other means contrary to good faith by which a person shall pass off
the goods manufactured by him for those of another who has already established
goodwill for his similar goods. The universal test for this is whether the public is likely to
be deceived. Actual or probable deception and confusion on the part of the customers
by reason of defendants practices must appear. However, this is unlikely to happen in
the case at bar for consumers generally order beer by brand. Also, the fact that ABI also
uses amber-colored steinie bottles cannot constitute unfair competition for ABI did not
copy SMCs bottle. SMC did not invent but merely borrowed the steinie bottle from
abroad. Likewise, amber is the most effective color in preventing transmission of light
thus providing maximum protection to beer. 320 ml is likewise the standard prescribed
under Metrication Circular No. 778. The fact that it is the first to use the steinie bottle
does not give SMC a vested right to use it to the exclusion of everyone else. Nobody
can acquire any exclusive right to market articles supplying the simple human needs in
containers or wrappers of the general form, size and character commonly and
immediately used in marketing such articles.

There is no confusing similarity between the competing beers therefore ABI neither
infringed SMCs trademark nor did it commit unfair competition.

Dissenting Opinion of J. Cruz:

Side-by-side comparison is not the final test of similarity because average buyers do not
make minute scrutiny of label details. The average shopper is usually in a hurry and
does not inspect every product on the shelf is if he were browsing in a library.

DEL MONTE CORPORATION and PHILIPPINE PACKING CORPORATION vs.

COURT OF APPEALS and SUNSHINE SAUCE MANUFACTURING INDUSTRIES

G.R. No. L-78325 January 25, 1990

FACTS: Petitioner Del Monte Corporation (Del Monte), through its local distributor and
manufacturer, PhilPack filed an infringement of copyright complaint against respondent
Sunshine Sauce Manufacturing Industries (SSMI), also a maker of catsup and other
kitchen sauces. In its complaint, Del Monte alleged that SSMI are using bottles and logos
identical to the petitioner, to which is deceiving and misleading to the public.

In its answer, Sunshine alleged that it had ceased to use the Del Monte bottle and that its
logo was substantially different from the Del Monte logo and would not confuse the buying
public to the detriment of the petitioners.

The Regional Trial Court of Makati dismissed the complaint. It held that there were
substantial differences between the logos or trademarks of the parties nor on the
continued use of Del Monte bottles. The decision was affirmed in toto by the Court of
Appeals.

ISSUE: Whether or not SSMI committed infringement against Del Monte in the use of its
logos and bottles.

HELD: Yes. In determining whether two trademarks are confusingly similar, the two
marks in their entirety as they appear in the respective labels must be considered in
relation to the goods to which they are attached; the discerning eye of the observer must
focus not only on the precognizant words but also on the other features appearing on
both labels. It has been correctly held that side-by-side comparison is not the final test of
similarity. In determining whether a trademark has been infringed, we must consider the
mark as a whole and not as dissected.

The Court is agreed that are indeed distinctions, but similarities holds a greater weight in
this case. The Sunshine label is a colorable imitation of the Del Monte trademark. What
is undeniable is the fact that when a manufacturer prepares to package his product, he
has before him a boundless choice of words, phrases, colors and symbols sufficient to
distinguish his product from the others. Sunshine chose, without a reasonable
explanation, to use the same colors and letters as those used by Del Monte though the
field of its selection was so broad, the inevitable conclusion is that it was done deliberately
to deceive.

With regard to the bottle use, Sunshine despite the many choices available to it and
notwithstanding that the caution "Del Monte Corporation, Not to be Refilled" was
embossed on the bottle, still opted to use the petitioners' bottle to market a product which
Philpack also produces. This clearly shows the private respondent's bad faith and its
intention to capitalize on the latter's reputation and goodwill and pass off its own product
as that of Del Monte.

Emerald Garment Manufacturing vs. CA

In 1981, H.D Lee Co., Inc., a foreign company, filed an opposition against the trademark
application of Emerald Garment. Allegedly, the trademark Stylistic Mr. Lee sought to be
applied for by Emerald Garment is too confusingly similar with the brand Lee which has for
its variations Lee Riders, Lee Sures, and Lee Leens. The Director of Patents as well as
the Court of Appeals ruled in favor of H.D. Lee Co.
ISSUE: Whether or not the decision of the Court of Appeals is correct.
HELD: No. The Supreme Court considered that the trademarks involved as a whole and ruled
that Emerald Garments STYLISTIC MR. LEE is not confusingly similar to H.D. Lees LEE
trademark. The trademark Stylistic Mr. Lee, although on its label the word LEE is
prominent, the trademark should be considered as a whole and not piecemeal. The
dissimilarities between the two marks become conspicuous, noticeable and substantial
enough to matter especially in the light of the following variables that must be factored in.
First, the products involved in the case at bar are, in the main, various kinds of jeans. These
are not your ordinary household items like catsup, soysauce or soap which are of minimal
cost. Maong pants or jeans are not inexpensive. Accordingly, the casual buyer is predisposed
to be more cautious and discriminating in and would prefer to mull over his purchase.
Confusion and deception, then, is less likely.
Second, like his beer, the average Filipino consumer generally buys his jeans by brand. He
does not ask the sales clerk for generic jeans but for, say, a Levis, Guess, Wrangler or even
an Armani. He is, therefore, more or less knowledgeable and familiar with his preference and
will not easily be distracted.
Finally, in line with the foregoing discussions, more credit should be given to the ordinary
purchaser. Cast in this particular controversy, the ordinary purchaser is not the completely
unwary consumer but is the ordinarily intelligent buyer considering the type of product
involved.
There is no cause for the Court of Appeals apprehension that Emerald Garments products
might be mistaken as another variation or line of garments under H.D. Lees LEE
trademark. As one would readily observe, H.D. Lees variation follows a standard format
LEERIDERS, LEESURES and LEELEENS. It is, therefore, improbable that the public
would immediately and naturally conclude that petitioners STYLISTIC MR. LEE is but
another variation under H.D. Lees LEE mark.
The issue of confusing similarity between trademarks is resolved by considering the distinct
characteristics of each case. In the present controversy, taking into account these unique
factors, we conclude that the similarities in the trademarks in question are not sufficient as to
likely cause deception and confusion tantamount to infringement.
Further, H.D. Lee failed to prove in court that it had prior actual commercial use of its LEE
trademark in the Philippines. H.D. Lee did show certificates of registrations for its brand but
registration is not sufficient. Actual use in commerce in the Philippines is an essential
prerequisite for the acquisition of ownership over a trademark pursuant to Sec. 2 and 2-A of
the Philippine Trademark Law (R.A. No. 166).
A rule widely accepted and firmly entrenched because it has come down through the years
is that actual use in commerce or business is a prerequisite in the acquisition of the right of
ownership over a trademark.
It would seem quite clear that adoption alone of a trademark 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 underlying reason for
all these is that purchasers have come to understand the mark as indicating the origin of the
wares. Flowing from this is the traders right to protection in the trade he has built up and the
goodwill he has accumulated from use of the trademark. Registration of a trademark, of
course, has value: it is an administrative act declaratory of a pre-existing right. Registration
does not, however, perfect a trademark right.
Converse Rubber Corporation vs
Universal Rubber Products, Inc.
February 7, 2
147 SCRA 154 Mercantile Law Intellectual Property Law Law on Trademarks, Service
Marks and Trade Names Trade Name Infringement
Converse Rubber Corporation is an American corporation while Universal Rubber Products,
Inc. is a corporation licensed to do business in the country. Converse has been operating
since 1946. Universal Rubber has been operating since 1963. Later, Universal Rubber filed
an application for the trademark Universal Converse and Device before the Philippine
Patent Office. Converse Rubber opposed as it averred that the word Converse which is part
of its corporate name cannot be granted as part of Universal Rubbers trademark or trade
name because it will likely deceive purchasers of Universal Rubbers products as it may be
mistaken by unwary customers to be manufactured by Converse Rubber. The Director of
Patents did not grant the opposition by Converse Rubber.
ISSUE: Whether or not the decision of the Director of Patents is correct.
HELD: No. From a cursory appreciation of the Converse Rubbers corporate name
CONVERSE RUBBER CORPORATION it is evident that the word CONVERSE is the
dominant word which identifies Converse Rubber from other corporations engaged in similar
business. Universal Rubber, in the stipulation of facts, admitted Converse Rubbers existence
since 1946 as a duly organized foreign corporation engaged in the manufacture of rubber
shoes. This admission necessarily betrays its knowledge of the reputation and business of
petitioner even before it applied for registration of the trademark in question. Knowing,
therefore, that the word CONVERSE belongs to and is being used by Converse Rubber,
and is in fact the dominant word in its corporate name, Universal Rubber has no right to
appropriate the same for use on its products which are similar to those being produced by
Converse Rubber.
Supreme Court Decisions SEHWANI, INCORPORATED VS. INN-OUT BURGER, INC. 536 SCRA 225 In this
case, respondent filed on June 2, 1997 an application for registration of its 2 trademark In-N-Out Burger
& Arrow Design and device mark In-N-Out. In the course of its prosecution of said application,
respondent discovered that petitioner had successfully registered In-NOut (the inside of the letter O
formed like a star) with Trademark Registration No. 56666, on December 17, 1993. After respondents
demand for petitioner to cease and desist from claiming ownership and to voluntarily cancel the latters
trademark registration was refused, respondent filed a petition for cancellation of petitioners
Trademark Registration No. 56666. The principal substantive issue for resolution by the Philippine
Supreme Court is whether or not respondents In-N-Out trademark for burgers is a well-known mark
entitling respondent to cause the cancellation of petitioners registered mark In-N-Out (the inside of
the letter O formed like a star). Respondents cause is meritorious per the Supreme Court, sustaining
the finding of the well-known status of respondents mark by the Intellectual Property Office (IPO)
based on Article 6bis of the Paris Convention (to which both the US, home country of respondent and
the Philippines are signatories) which provides: Article 6bis (1) The countries of the Union undertake,
ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel
the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation,
or a translation, liable to create confusion, of a mark considered by the competent authority of the
country of the registration or use to be well-known in that country as being already the mark of a person
entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall
also apply when the essential part of the mark constitutes a reproduction of any such well-known mark
or an imitation liable to create confusion therewith. xxxx The underpinning of IPOs finding of
wellknown status for respondent mark was respondents registrations in various countries around the
world and its comprehensive advertisements therein. The Supreme Court not only affirmed the said
finding but also made the following pronouncement: The fact that respondents marks are neither
registered nor used in the Philippines is of no moment. This pronouncement is based on the expanded
interpretation of Article 6bis of the Paris Convention by the 1997 Joint Recommendation Concerning
Provisions on the Protection of Well-Known Marks by the World Intellectual Property Organization
(WIPO) and the Paris Union, Part 1, Article 2 (3) of which provides: (3)[Factors Which Shall Not Be
Required] (a) A Member State shall not require, as a condition for determining whether a mark is
wellknown mark: (i)that the mark has been used in, or that the mark has been registered or that an
application for registration of the mark has been filed or in respect of, the Member State; (ii)that the
mark is well known in, or that the mark has been registered or that an application for registration of the
mark has been filed in or in respect of, any jurisdiction other than the Member State; or (iii) that the
mark is well known by the public at large in the Member State. Said pronouncement, however, seems
controversial because it appears to fly in the face of the express provisions of the Intellectual Property
Code, which in Section 123.1 (e) states: 123.1. A mark cannot be registered if it: xxxx (e) Is identical
with, or confusingly similar to, or constitutes a translation of a mark which is considered by the
competent authority of the Philippines, whether or not it is registered here, as being already the mark of
a person other than the applicant for registration, and used for identical or similar goods or services:
Provided, That in determining whether a mark is well-known, account shall be taken of the knowledge of
the relevant sector of the public, rather than of the public at large, including knowledge in the
Philippines which has been obtained as a result of the promotion of the mark; xxxx There is no evidence
on record that respondents marks are well-known to the relevant sector in the Philippines and there is
a definitive finding that they are not used in the Philippines. Either factor could have rendered
respondents standing to seek relief questionable. Nevertheless, it is difficult to believe that opposer did
not copy respondents fanciful trademark for burgers, In-N-Out, considering the unlimited range of
marks available to him.