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E.Y. Industrial Sales, Inc. v. Shen Dar Electricity and Machinery Co., Ltd.

(G.R. No. 184850, 20 Oct. 2010)

E.Y. Industrial Sales Inc. (EYIS) and Shen Dar Electricity and Machinery Co. (Shen Dar) both claim to have
the right to register the trademark “VESPA” for air compressors. The Supreme Court rules that EYIS is
the prior user of the mark. The use by EYIS in the concept of owner is shown by commercial documents
and sales invoices unambiguously describing the goods as “VESPA” air compressors.

“Ownership of a mark or trade name may be acquired not necessarily by registration but by adoption
and use in trade or commerce. As between actual use of a mark without registration, and registration of
the mark without actual use thereof, the former prevails over the latter. For a rule widely accepted and
firmly entrenched, because it has come down through the years, is that actual use in commerce or
business is a pre-requisite to the acquisition of the right of ownership.”


By itself, registration is not a mode of acquiring ownership.

Ecole De Cuisine Manille Inc. v. Renaud Cointreau & Cie and Le Condron Bleu Int’l B.V.

(GR 185830, June 5, 2013)

Obligations under the Paris Convention

In view of the obligations under the Paris Convention, the Philippines is obligated to assure nationals of
the signatory-countries that they are afforded an effective protection against violation of their
intellectual property rights in the Philippines in the same way that their own countries are obligated to
accord similar protection to Philippine nationals. "Thus, under Philippine law, a trade name of a 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. Thus, the applicant for
registration of trademark is not the lawful owner thereof and is not entitled to registration if the
trademark has been in prior use by a national of a country which is a signatory to the Paris Convention

Rule 205

…Nothing in this Rule shall entitle the owner of a registration granted under these Regulations to sue for
acts committed prior to the date on which its mark was registered in the Philippines; Provided, That,
notwithstanding the foregoing, the owner of a well-known mark, as defined in the IP Code and these
Regulations, that is not registered in the Philippines, may, against an identical or confusingly similar
mark, oppose its registration, or petition the cancellation of its registration or sue for unfair
competition, without prejudice to availing itself of other remedies provided for under the law.