La Chemise Lacoste Vs.

Fernandez

Nature: Petition for review on certiorari the decision of the Court of Appeals

Facts:

La chemise Lacoste is a French corporation and the actual owner of the trademarks
Lacoste,Chemise Lacoste, Crocodile Device and a composite mark consisting of the word
Lacoste and are presentation of a crocodile/alligator, used on clothing's and other goods sold in many parts of
the world and which has been marketed in the Philippines (notably by Rustans) since 1964.

In 1975 and 1977, Hemandas Q. Co. was issued certificate of registration for the trademark Chemise Lacoste and Q
Crocodile Device "both in the supplemental and Principal Registry. In 1980, La Chemise Lacoste SA filed for the
registration of the Crocodile device and Lacoste.

Games and Garments (Gobindram Hemandas, assignee of Hemandas Q.Co.) opposed the registration of Lacoste.

In 1983, La Chemise Lacoste filed with the NBI a letter-complaint alleging acts of unfair
competition committed by Hemandas and requesting the agencys assistance for investigation and prosection.

A search warrant was issued by the trial court. Various goods and articles were seized upon the execution of the
warrants.

Hemandas filed motion to quash the warrants, which the court granted. The search warrants were recalled, and the
goods ordered to be returned. La Chemise Lacoste filed a petition for certiorari.

The defendant argued that the petitioner has no capacity to sue being a foreign corporation not doing
business in the Philippines

Issue/s:

Ruling: Whether or not La Chemise Lacoste has capacity to sue

-Yes.

As early as 1927, this Court was, and it still is, of the view that a foreign corporation not doing
business in the Philippines needs no license to sue before Philippine courts for infringement of
trademark and unfair competition. Thus, in Western Equipment and Supply Co. v. Reyes(51 Phil.
115), this Court held that a foreign corporation which has never done any business in the
Philippines and which is unlicensed and unregistered to do business here, but is widely and
favorably known in the Philippines through the use therein of its products bearing its corporate
and tradename, has a legal right to maintain an action in the Philippines to restrain the residents
and inhabitants thereof from organizing a corporation therein bearing the same name as the
foreign corporation, when it appears that they have personal knowledge of the existence of such
a foreign corporation, and it is apparent that the purpose of the proposed domestic corporation is
to deal and trade in the same goods as those of the foreign corporation.
We further held:

xxx xxx xxx

... That company is not here seeking to enforce any legal or control rights arising from, or growing
out of, any business which it has transacted in the Philippine Islands. The sole purpose of the
action:

Is to protect its reputation, its corporate name, its goodwill, whenever that reputation, corporate
name or goodwill have, through the natural development of its trade, established themselves.' And
it contends that its rights to the use of its corporate and trade name:

Is a property right, a right in rem, which it may assert and protect against all the world, in any of
the courts of the world-even in jurisdictions where it does not transact business-just the same as it
may protect its tangible property, real or personal, against trespass, or conversion. .xx

Since it is the trade and not the mark that is to be protected, a trade-mark acknowledges no
territorial boundaries of municipalities or states or nations, but extends to every market where the
trader's goods have become known and Identified by the use of the mark.

More important is the nature of the case which led to this petition. What preceded this petition
forcertiorari was a letter complaint filed before the NBI charging Hemandas with a criminal
offense, i.e., violation of Article 189 of the Revised Penal Code. If prosecution follows after the
completion of the preliminary investigation being conducted by the Special Prosecutor the
information shall be in the name of the People of the Philippines and no longer the petitioner
which is only an aggrieved party since a criminal offense is essentially an act against the State. It
is the latter which is principally the injured party although there is a private right violated.
Petitioner's capacity to sue would become, therefore, of not much significance in the main case