Fredco Manufacturing Corporation vs.

Harvard University
1 June 2011; Carpio
I. Facts
1. Fredco Manufacturing filed a Petition for Cancellation of Registration before the BLA-IPO
against Harvard University.
- Fredco alleged that Registration No. 56561 was issued to Harvard on November 1993 for
the mark Harvard Veritas Shield Symbol.
- Fredco alleged that the mark Harvard was first used in the Philippines on January 1982
by New York Garments Manufacturing & Export Co., its predecessor-in-interest. NY
Garments then filed for trademark registration for goods under Class 25 on January
1985.
- Fredco alleged that at the time of issuance of Registration No. 56561 to Harvard
University, NY Garments had already registered the mark Harvard for goods under Class
25.
- Fredco also admitted that while the registration was cancelled on July 1998 when NY
Garments inadvertently failed to file an affidavit of use/non-use on the 5th anniversary of
the registration, the right to the mark Harvard remained with its predecessor NY
Garments and now with Fredco.
2. On the other hand, Harvard alleged that it is the lawful owner of the name and mark
Harvard in numerous countries worldwide, including the Philippines.
- The name and mark Harvard was adopted in 1639 as the name of Harvard College of
Cambridge, Massachusetts, USA, and that the name and mark Harvard was allegedly
used in commerce as early as 1872.
- Harvard University is a highly regarded institution of higher learning in the US and
throughout the world and the name and the mark has been rated as one of the most
famous brands in the world, valued between $750M to $1B.
3. Harvard alleged that it discovered Fredco’s website advertising and promotes the brand
name Harvard Jeans USA without Harvard University’s consent.
- The website’s main page shows an oblong log bearing the mark Harvard Jeans USA,
Established 1936, and Cambridge, Massachusetts.
4. Harvard filed an administrative complaint against Fredco before the IPO for trademark
infringement and/or unfair competition with damages.
5. Dir. of BLA-IPO cancelled Harvard’s registration for goods under Class 25
6. Director General of the IPO reversed the decision of the BLA
- More than the use of trademark in the PH, the applicant must be the owner of the mark
sought to be registered. The right to register a trademark is based on ownership and
when the applicant is not the owner, he has no right to register the trademark.
- Fredco failed to explain how its predecessor NY Garments came up with the mark
Harvard and there was no evidence that Fredco or NY Garments came up with the said
mark. There was also no evidence that Fredco or NY Garments was licensed or
authorized by Harvard to use its name in commerce or for any other use.
7. CA affirmed

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II. Issues
1. W/N Harvard’s registration should be cancelled considering that NY Garments registered/
used the Harvard mark in the PH earlier (NO)
III. Holding
Petition denied. Decision of Dir. of Patents affirmed.
IV. Ratio
The mark Harvard, a well-known trade name and mark of Harvard University is already protected
under the Paris Convention even before its use and registration in the Philippines.
[ON TECHNICAL GROUNDS]
1. Under Sec. 2 of RA 166, before a trademark can be registered, it must have been actually
used in commerce for not less than 2 months in the PH prior to the filing an application for
its registration. In the case at bar, while Harvard had actual prior use of its marks abroad for
a long time, it did not have actual prior use in the PH before its application for its
registration.
2. However, Harvard’s registration of the name Harvard is based on home registration which is
allowed under Sec. 37 of RA 166. Said provision provides that “… 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 PH for the said
period is not necessary.”
3. In any event, under Sec. 239.2 of RA 8293, “marks registered under RA 166 shall remain in
force but shall be deemed to have granted under this Act xxx, which does not require actual
prior use of the mark in the PH. Since he mark Harvard is now deemed granted under RA
8293, any alleged defect arising from the absence of actual prior use in the PH has been
cured by said section.
4. In addition, Fredco’s registration was already cancelled when it failed to file the required
affidavit of use/non-use for the 5th anniversary of the mark’s registration. Hence, at the time
of Fredco’s filing of the petition for cancellation, it was no longer the registrant or
presumptive owner of the mark.
[ON SUBSTANTIVE GROUNDS]
First Reason: Violation of Sec. 4(a) of RA 166
1. Fredco’s registration of the mark Harvard and its identification of origin as Cambridge,
Massachusetts, as can be gleaned from its logo, falsely suggest that Fredco or its goods are
connected with Harvard University, which uses the same mark and is also located in
Cambridge.
2. As such, Fredco’s registration of the mark Harvard should not have been allowed under Sec.
4(a) of RA 166 prohibits the registration of a mark which may disparage or falsely suggest a
connection with persons, living or dead, institutions, beliefs xxx
3. The fact that Fredco does not have any affiliation or connection with Harvard University, or
even with Cambridge, or that it was not established in 1936, or in USA, as indicated in its
logo, obviously suggests a false connection with Harvard University.
4. The Court believes that the only reason that Fredco did such a thing was that it sought to

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 connect or associate its products with Harvard University, riding on the prestige and
popularity of Harvard University, and thus appropriating part of Harvard University’s
goodwill without the latter’s consent.
5. This is a clear violation of Sec. 4(a) which was intended to protect the right of publicity of
famous individuals and institutions from commercial exploitation of their goodwill by others.
Under Sec. 17 of the same law, such violation is a ground for cancellation of Fredco’s
registration of the mark.
Second Reason: Paris Convention
1. Both the PH and USA are signatories to the Paris Convention for the Protection of Industrial
Property. Under Art. 6 and Art. 8, the Philippines is obligated to assure nationals of countries
of the Paris Convention that they are afforded an effective protection against violation of
their IP rights in the PH in the same way that their own countries are obligated to accord
similar protection to PH nationals.
2. Art. 8 of the Paris Convention have been incorporated in Sec. 36 of RA 166. Such provision
provides that “trade-names of persons described in the first paragraph shall be protected
without the obligation of filing or registration whether or not they form parts of marks.”
3. Thus, under PH law, a trade name of a national of a State that is a party to the Paris
Convention is protected without the obligation of filing or registration.
4. On the other hand, Article 6(b) (i) is administratively implemented under through 2
directives of the Ministry of Trade. To be protected under them, an internationally well-
known mark need not be registered or used in the PH. All that is required is that the mark is
well-known internationally and in the PH for identical or similar goods, whether or not the
mark is registered or use in the PH. Such directives are now embodied in Sec. 123.1 (e) of RA
8293.
5. There is also no question that Harvard is a well-known name and mark not only in the US but
also internationally, including the PH. The mark Harvard is rated as one of the most famous
marks in the world and has been registered in at least 50 countries. It has established a
considerable goodwill worldwide and is easily recognizable as the trade name and mark of
Harvard University of Cambridge, Massachusetts, USA, internationally known as one of the
leading educational institutions in the world.
6. As such, even before Harvard University applied for registration of the mark Harvard in the
PH, the mark was already protected under the Paris Convention. Again, even applying the
Paris Convention, Harvard University can invoke Sec. 4(a) of RA No. 166.

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