Fredco Manufacturing Corporation vs.

President and Fellows of Harvard College

(Harvard University) [GR No. 185917, June 1, 2011]
FACTS: Petitioner Fredco Manufacturing Corporation filed a Petition for Cancellation of
Registration No. 56561 against respondent President and Fellows of Harvard College (Harvard
University). Fredco alleged that Registration No. 56561 was issued to Harvard University on 25
November 1993 for the mark "Harvard Veritas Shield Symbol" under Classes 16, 18, 21, 25 and
28. Fredco also alleged that the mark "Harvard" was first issued by its predecessor-in-interest
New York Garments on 2 January 1982 and was granted a Certificate of Registration on 12
December 1988 for a period of 20 years registration under Class 25. It is also alleged that the
registration was cancelled on 30 July 1988 when New York Garment inadvertently failed to file
an Affidavit of Use/Non-Use on the fifth anniversary of the registration but the right to the mark
remained with its predecessor and now with Fredco. Harvard University, on the other hand,
alleged that it is the lawful owner of the name and mark "Harvard" in numerous countries
worldwide, including the Philippines. The BLA, IPO cancelled the registration of the mark
"Harvard" under Class 25 but was reversed by the Director General, IPO rationing that more
than the use of the trademark, the application must be the owner of the mark sought to be
registered. The CA affirmed the Director General.
ISSUE: Whether or nor Registration No. 56561 Class 25 must be cancelled
RULING: No. While Harvard University had actual prior use of its marks abroad for a long time,
it did not have actual prior use in the Philippines. However, Harvard University's registration of
the name "Harvard" is based on home registration which is allowed under Section 37 of RA 166.
Also, under Section 239.2 of RA 8293, "marks registered under RA 166 shall remain in force but
shall be deemed to have been granted under this Actxxx" which does not require actual prior
use of the mark in the Philippines. In addition, Article 8 of the Paris Convention, to which both
the Philippines and the US are signatories, has been incorporated in Section 37 of RA 166;
thus, under Philippine laws, a trade name of national of a State that is a party to the Paris
Convention, whether or not the trade name forms part of a trademark, is protected without the
obligation of filing or registration. Be it noted that Fredco's registration was already cancelled
when it failed to file the required Affidavit of Use/Non-Use for the fifth anniversary of the mark's
registration. Hence, at the time of the filing of the Petition for Cancellation, Fredco was no longer
the registrant or presumptive owner of the mark "Harvard."

BERRIS AGRICULTURAL CO., INC. vs. NORVY ABYADANG. G.R. No. 183404.
October 13, 2010
FACTS:

Abyadang filed a trademark application with the IPO for the mark "NS D-10 PLUS" for use in
connection with Fungicide. Berris Agricultural Co., Inc. filed an opposition against the trademark
citing that it is confusingly similar with their trademark, "D-10 80 WP" which is also used for
Fungicide also with the same active ingredient.
The IPO ruled in favor of Berries but on appeal with the CA, the CA ruled in favor of Abyadang.
ISSUE: Whether there is confusing similarity between the trademarks.

RULING:
Yes. The SC found that both products have the component D-10 as their ingredient and that it is
the dominant feature in both their marks. Applying the Dominancy Test, Abyadang's product is
similar to Berris' and that confusion may likely to occur especially that both in the same type of
goods. Also using the Holistic Test, it was more obvious that there is likelihood of confusion in
their packaging and color schemes of the marks. The SC states that buyers would think that
Abyadang's product is an upgrade of Berris'.