CONRAD AND COMPANY, INC. vs. HON. COURT OF APPEALS, FITRITE INC.

, and VICTORIA BISCUITS

CO., INC.

G.R. No. 115115 July 18, 1995

FACTS:

Fitrite, Inc. and its sister company, Victoria Biscuit Co., Inc. are domestic corporations engaged in
the business of manufacturing, selling and distributing biscuits and cookies. Their products bear the
trademark "SUNSHINE" in the Philippines which was awarded by the Bureau of Patents, Trademarks and
Technology Transfer (BPTTT), listing Fitrite as principal registrant.

It was subsequently discovered that CONRAD had been importing, selling and distributing biscuits
and cookies, and other food items bearing this trademark in the Philippines. Fitrite and Victoria addressed
a letter to Conrad demanding that it cease and desist from continuing its operation and use of the subject
trademark, but was ignored.

Conrad argued that it has been granted distributorship by Sunshine Biscuits USA over the
Philippine territory, and so, it follows that the basis of Fitrite and Victoria's claim is lodged under the
exclusive jurisdiction of the BPTTT.

This led Fitrite and Victoria to file a complaint against Conrad for infringement and unfair
competition. Conrad sought to dismiss the complaint by invoking litis pendentia, the doctrine of primary
jurisdiction, and failure to state a cause of action. The trial court found merit on the motion to dismiss the
complaint.

Fitrite and Victoria filed a motion for reconsideration, but was denied by the lower court.

The Court of Appeals, however, found merit on their claims and reinstated the complaint. Hence,
this petition by Conrad praying for "Injunction with Damages with Prayer for Preliminary Injunction"

ISSUE:

Whether or not the doctrine of primary jurisdiction is applicable in the case at bar.
(*PRIMARY JURISDICTION- It is the principle that the courts cannot or will not determine a controversy involving a question which
is within the jurisdiction of an administrative tribunal.)

HELD:

No, the doctrine finds no merit in the case at bar.

While an application for the administrative cancellation of a registered trademark falls under the
exclusive cognizance of BPTTT (Sec. 19, Trade-Mark Law), an action, however, for infringement or unfair
competition, as well as the remedy of injunction and relief for damages, is explicitly and unquestionably
within the competence and jurisdiction of ordinary courts.

Registration in the Principal Register can serve as the basis for an action for infringement. An
invasion of this right entitles the registrant to court protection and relief. Surely, an application with BPTTT
for an administrative cancellation of a registered trade mark cannot per se have the effect of restraining
or preventing the courts from the exercise of their lawfully conferred jurisdiction.