Professional Documents
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AUTHOR: Edison
before filing its application for registration with the BPTTT and hence, has not acquired ownership over said mark.
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) which explicitly provides that:
CHAPTER II. Registration of Marks and Trade-names.
Sec. 2. What are registrable. Trade-marks, trade-names, 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 trade-marks, trade-names, or service marks are actually in use
in commerce and services not less than two months in the Philippines before 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.
Sec. 2-A. Ownership of trade-marks, trade-names and service-marks; how acquired. Anyone who
lawfully produces or deals in merchandise of any kind or who engages in lawful business, or who renders
any lawful service in commerce, by actual use hereof in manufacture or trade, in business, and in the
service rendered; may appropriate to his exclusive use a trade-mark, a trade-name, or a service-mark not
so appropriated by another, to distinguish his merchandise, business or services from others. The
ownership or possession of trade-mark, trade-name, service-mark, heretofore or hereafter appropriated,
as in this section provided, shall be recognized and protected in the same manner and to the same extent
as are other property rights to the law.
A foreign corporation 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 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. 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.
Undisputably, HD Lee is the senior registrant, having obtained several registration certificates for its various trademarks
"LEE," "LEERIDERS," and "LEESURES" in both the supplemental and principal registers, as early as 1969 to 1973.
However, registration alone will not suffice. Actual use in commerce or business is a prerequisite in the acquisition of the
right of ownership over a trademark. Again, 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.
For lack of adequate proof of actual use of its trademark in the Philippines prior to petitioner's use of its own mark and for
failure to establish confusing similarity between said trademarks, private respondent's action for infringement must
necessarily fail.
DISPOSITIVE: WHEREFORE, premises considered, the questioned decision and resolution are hereby REVERSED and
SET ASIDE. SO ORDERED.