ACQUISITION of OWNERHIP OF MARK
Birkenstock Orthopaedie GMBH and Co. KG (formerly
Birkenstock Orthopaedie GMBH) vs. Philippine Stock
Expo Marketing Corporation
15 SCRA 469
FACTS:
Petitioner, a corporation duly organized and
existing under the laws of Germany applied for various
trademark registrations before the Intellectual Property
Office (IPO). However, the applications were suspended in
view of the existing registration of the mark
BIRKENSTOCK AND DEVICE under Registration No. 56334
dated October 21, 1993 in the name of Shoe Town
International and Industrial Corporation, the predecessor-
in-interest of respondent Philippine Shoe Expo Marketing
Corporation.
On May 27, 1997, petitioner filed a petition
(Cancellation Case) for cancellation of Registration No.
564334 on the ground that it is the lawful and rightful
owner of the Birkenstock marks. During its pendency,
however, respondent and/or it predecessor-in-interest
failed to file the required 10th Year Declaration of Actual
Use (10th Year DAU) for Registration No. 56334 on or
before October 21, 2004, thereby resulting the
cancellation of such mark. Accordingly, the cancellation
case was dismissed for being moot and academic thereby
paving the way for the publication of the subject
applications.
In response, respondent filed with the Bureau of
Legal Affairs (BLA) of the IPO three separate verified
notices of opposition to the subject applications docketed
as Inter Partes Cases claiming, among others, it, together
with its predecessor-in-interest, has been using the
Birkenstock marks in the Philippines for more than 16
years through the mark BIRKENSTOCK AND DEVICE. In its
Decision, the BLA of the IPO sustained respondents
opposition, thus ordering the rejection of the subject
applications. Aggrieved, petitioner appealed to the IPO
Director General whereby in its decision, the latter
reversed and set aside the ruling of the BLA thus allowing
the registration of the subject applications.
Finding the IPO Director Generals reversal of the
BLA unacceptable, respondent filed a petition for review
with the Court of Appeals. In its decision dated June 25,
2010, the CA reversed and set aside the ruling of the IPO
Director General and reinstated that of the BLA. The
petitioner filed a Motion for Reconsideration but was
denied by the CA. Hence , this petition to the Supreme
Court.
ISSUE:
1. Whether or not the petitioners documentary
evidence, although photocopies, are admissible
in court?
2. Whether or not the subject marks should be
allowed registration in the name of the
petitioner?
HELD:
1. The court ruled yes. It is a well-settled principle
that the rules of procedure are mere tools aimed
at facilitating the attainment of justice, rather
than its frustration. A strict and rigid application
of the rules must always be eschewed when it
would subvert the primary objective of the rules,
that is, to enhance fair trials and expedite
justice. In the light of this, Section 5 of the Rules
on Inter Partes Proceedings provides that, The
Bureau shall not be bound by strict technical
rules of procedure and evidence but may adopt,
in the absence of any applicable rule herein,
such mode of proceedings which is consistent
with the requirements of fair play and conducive
to the just, speedy and inexpensive disposition
of cases, and which will the Bureau the greatest
possibility to focus on the contentious issues
before it.
In the case at bar, it should be noted that the
IPO had already obtained the originals of such
documentary evidence in the related
Cancellation Case earlier before it. Under the
circumstance and the merits of the instant case
as will be subsequently discussed, the Court
holds that the IPO Director Generals relaxation
of procedure was a valid exercise of his
discretion in the interest of substantial justice.
2. The court ruled in favour of the petitioner.
Under Section 12 of Republic Act 166, it provides
that, Each certificate of registration shall remain
in force for twenty years: Provided, that the
registration under the provisions of this Act shall
be cancelled by the Director, unless within one
year following the fifth, tenth and fifteenth
anniversaries of the date of issue of the
certificate of registration, the registrant shall file
in the Patent Office an affidavit showing that the
mark or trade-name is still in use or showing that
its non-use is due to special circumstance which
excuse such non-use and is not due to any
intention to abandon the same, and pay the
required fee.
In the case at bar, respondent admitted that it
failed to file the 10th Year DAU for Registration
No. 56334 within the requisite period, or on or
 before October 21, 2004. As a consequence, it
was deemed to have abandoned or withdrawn
any right or interest over the mark
BIRKENSTOCK. It must be emphasized that
registration of a trademark, by itself, is not a
mode of acquiring ownership. If the applicant is
not the owner of the trademark, he has no right
to apply for its registration. Registration merely
creates a prima facie presumption of the validity
of the registration. Such presumption, just like
the presumptive regularity in the performance of
official functions, is rebuttable and must give
way to evidence to the contrary. Besides,
petitioner has duly established its true and
lawful ownership of the mark BIRKENSTOCK. It
submitted evidence relating to the origin and
history of BIRKENSTOCK and it use in
commerce long before respondent was able to
register the same here in the Philippines.
Petitioner also submitted various certificates of
registration of the mark BIRKENSTOCK in
various countries and that it has used such mark
in different countries worldwide, including the
Philippines.
SUPERIOR COMMERCIAL ENTERPRISES INC. v. KUNNAN
ENTERPRISES LTD. AND SPORTS CONCEPT &
DISTRBUTOR, INC.
G.R. No. 16974, 20 April 2010; Brion, J.
FACTS:
Kunnan appointed Superior as its exclusive distributor in
the Philippines under a Distributorship Agreement which
states that Kunnan intends to acquire ownership of the
Kennex Trademark registered by Superior Commercial in
the Philippines. Superior Commercial is desirious of being
appointed as the sole distributor of Kunnan products in the
Philippines.
Superiors President and General Manager misled
Kunnans Officers into believing that Kunnan could not
acquire trademark rights in the Philippines. Thus, Kunnan
decided to assign its applications to register Pro Kennex
as a trademark to Superior, on condition that Superior
acknowledged that Kunnan was still the real owner of the
mark and agreed to return to it to Kunnan on request.
Upon termination of distributorship agreement with
Superior, Kunnan appointed Sports Concept as its new
distributor.
Kunnan caused the publication of a Notice and Warning
in the Manila Bulletins issue, stating that (1) it is the
owner of the disputed trademarks; (2) it terminated its
Distributorship Agreement with Superior; and (3) it
appointed Sports Concept as its exclusive distributor. This
notice prompted Superior to file its Complaint for
Infringement of Trademark and Unfair Competition against
Kunnan.
Prior to and during the pendency of the infringement
and unfair competition case before the RTC, Kunnan filed
with the Bureau of Patents, Trademarks and Technology
Transfer separate Petitions for the Cancellation of
Registration Trademarks involving the Kennex and Pro
Kennex trademarks.
Kunna filed the petition on the ground that Superior
fraudulently registered and appropriated the disputed
trademarks as mere distributor and not as lawful owner.
Both the trial court and the Court of Appeals ruled in
favor of Kunnan.
ISSUES: WON Superior, as a distributor, has true
ownership over the trademarks.
RULING: No. An exclusive distributor does not acquire any
proprietary interest in the principals trademark and
cannot register it, unless the owner has assigned the right.
1. To establish trademark infringement, the following
elements must be proven:
a. The validity of the plaintiffs mark;
b. The plaintiffs ownership of the mark; and
c. The use of the mark or its colorable imitation by the
alleged infringer results in likelihood confusion.
Based on these elements, the Court found it immediately
obvious that the second element was what the
Registration Cancellation Case decided with finality. On
this element depended the validity of the registrations
that, on their own, only gave rise to the presumption of,
but was not conclusive on, the issue of ownership.
In no certain terms, the appellate court in the Registration
Cancellation Case ruled that Superior was a mere
distributor and could not have been the owner, and was
thus an invalid registrant of the disputed trademarks.
The right to register a trademark is based on ownership,
and therefore only the owner can register it.
Gabriel v. Perez provided that a mere distributor of a
product bearing a trademark, even if permitted to use said
trademark has no right to and cannot register the said
trademark.
2. Unfair competition has been defined as the passing off
or attempting to pass off upon the public of the goods
and business of one person as the goods or business of
another with the end and probable effect of deceiving
the public. The essential elements of unfair competition
are:
a. Confusing similarity in the general appearance of the
goods; and
b. Intent to deceive the public and defraud the
competitor.
The True Test of Unfair Competition: Whether the acts
of the defendant have the intent of deceiving or are
calculated to deceive the ordinary buyer making his
purchases under the ordinary conditions of the particular
trade to which the controversy relates.
In the hereby case, no evidence exist showing that
Kunnan ever attempted to pass off goods it sold as those
of Superior and that there is no bad faith or fraud
imputable to Kunnan in using the disputed trademarks.
Superior failed to adduce any evidence to show that
Kunnan by the above-cited acts intended to deceive the
public as to the identity of the goods sold or of the
manufacturer of the goods sold.
In any case, the present law on trademarks, Republic Act
No. 8293, otherwise known as the Intellectual Property
Code of the Philippines, as amended, has already
dispensed with the requirement of prior actual use at the
time of registration. Thus, there is more reason to allow
the registration of the subject mark under the name of
Cointreau as its true and lawful owner.

ACQUISITION of OWNERSHIP OF TRADENAME

ECOLE DE CUISINE MANILLE V. COINTREAU (G.R.

NO. 185830)

Facts:
Respondent Cointreau, a partnership registered under the
laws of France, applied for the registration of the mark Le
Cordon Bleu & Device. Petitioner Ecole De Cuisine
opposed on the ground that it is the owner of the mark Le
Cordon Bleu, Ecole De Cuisine Manille used in its culinary
activities and restaurant business and that the registration
will create confusion to the public. Respondent Cointreau
answered claiming it is the true and lawful owner of the
mark and had long been using it worldwide. The IPO
Bureau of Legal Affairs sustained petitioners opposition
stating that Cointreau had no prior use of the mark in the
Philippines to be entitled to a proprietary right over it. The
IPO Director General reversed the decision and allowed
the marks registration holding that under RA No. 166,
actual use in the Philippines is not necessary to acquire
ownership of the mark.
Issue:
Whether or not respondents prior use of the mark is a
requirement for its registration.
Ruling: YES.
Under Section 2 of R.A. No. 166, in order to register a
trademark, one must be the owner thereof and must have
actually used the mark in commerce in the Philippines for
2 months prior to the application for registration. Section
2-A of the same law sets out to define how one goes about
acquiring ownership thereof. Under Section 2-A, it is clear
that actual use in commerce is also the test of ownership
but the provision went further by saying that the mark
must not have been so appropriated by another.
Additionally, it is significant to note that Section 2-A does
not require that the actual use of a trademark must be
within the Philippines. Thus, as correctly mentioned by the
CA, under R.A. No. 166, one may be an owner of a mark
due to its actual use but may not yet have the right to
register such ownership here due to the owners failure to
use the same in the Philippines for 2 months prior to
registration. In the instant case, it is undisputed that
Cointreau has been using the subject mark in France, prior
to Ecoles averred first use of the same in the Philippines,
of which the latter was fully aware thereof. On the other
hand, Ecole has no certificate of registration over the
subject mark but only a pending application. Under the
foregoing circumstances, even if Ecole was the first to use
the mark in the Philippines, it cannot be said to have
validly appropriated the same.