of Goods and Services.
Fredco alleged
[ G.R. No. 185917, June
01, 2011 ]
FREDCO MANUFACTURING
CORPORATION, PETITIONER, VS.
PRESIDENT AND FELLOWS OF
HARVARD COLLEGE (HARVARD
UNIVERSITY), RESPONDENTS.
DECISION
CARPIO, J.:
The Case
Before the Court is a petition for
review[1] assailing the 24 October 2008
Decision[2] and 8 January 2009
Resolution[3] of the Court of Appeals in
CA-G.R. SP No. 103394.
The Antecedent Facts
On 10 August 2005, petitioner Fredco
Manufacturing Corporation (Fredco), a
corporation organized and existing under
the laws of the Philippines, filed a
Petition for Cancellation of Registration
No. 56561 before the Bureau of Legal
Affairs of the Intellectual Property Office
(IPO) against respondents President and
Fellows of Harvard College (Harvard
University), a corporation organized and
existing under the laws of Massachusetts,
United States of America. The case was
docketed as Inter Partes Case No. 14-
2005-00094.
Fredco alleged that Registration No.
56561 was issued to Harvard University
on 25 November 1993 for the mark
"Harvard Veritas Shield Symbol" for
decals, tote bags, serving trays,
sweatshirts, t-shirts, hats and flying
discs under Classes 16, 18, 21, 25 and
28 of the Nice International Classification
that the mark "Harvard" for t-shirts, polo
shirts, sandos, briefs, jackets and slacks
was first used in the Philippines on 2
January 1982 by New York Garments
Manufacturing & Export Co., Inc. (New
York Garments), a domestic corporation
and Fredco's predecessor-in-interest. On
24 January 1985, New York Garments
filed for trademark registration of the
mark "Harvard" for goods under Class 25.
The application matured into a
registration and a Certificate of
Registration was issued on 12 December
1988, with a 20-year term subject to
renewal at the end of the term. The
registration was later assigned to Romeo
Chuateco, a member of the family that
owned New York Garments.
Fredco alleged that it was formed and
registered with the Securities and
Exchange Commission on 9 November
1995 and had since then handled the
manufacture, promotion and marketing
of "Harvard" clothing articles. Fredco
alleged that at the time of issuance of
Registration No. 56561 to Harvard
University, New York Garments had
already registered the mark "Harvard"
for goods under Class 25. Fredco alleged
that the registration was cancelled on 30
July 1998 when New York Garments
inadvertently failed to file an affidavit of
use/non-use on the fifth anniversary of
the registration but the right to the mark
"Harvard" remained with its predecessor
New York Garments 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. Among the countries where
Harvard University has registered its
name and mark "Harvard" are:
1. Argentina 26. South
Korea
 2. Benelux[4] 27. adopted in 1639 as the name of Harvard
Malaysia College[6] of Cambridge, Massachusetts,
3. Brazil 28. U.S.A. The name and mark "Harvard"
Mexico was allegedly used in commerce as early
4. Canada 29. New as 1872. Harvard University is over 350
Zealand years old and is a highly regarded
5. Chile 30. institution of higher learning in the
Norway United States and throughout the world.
6. China P.R. 31. Peru Harvard University promotes, uses, and
7. Colombia 32. advertises its name "Harvard" through
Philippines various publications, services, and
8. Costa Rica 33. Poland products in foreign countries, including
9. Cyprus 34. the Philippines. Harvard University
Portugal further alleged that the name and the
10. Czech Republic 35. mark have been rated as one of the most
Russia famous brands in the world, valued
11. Denmark 36. between US $750,000,000 and US
South Africa $1,000,000,000.
12. Ecuador 37.
Switzerland Harvard University alleged that in March
13. Egypt 38. 2002, it discovered, through its
Singapore international trademark watch program,
14. Finland 39. Fredco's website www.harvard-usa.com.
Slovak Republic The website advertises and promotes the
15. France 40. brand name "Harvard Jeans USA"
Spain without Harvard University's consent.
16. Great Britain 41. The website's main page shows an
Sweden oblong logo bearing the mark "Harvard
17. Germany 42. Jeans USA®," "Established 1936," and
Taiwan "Cambridge, Massachusetts." On 20 April
18. Greece 43. 2004, Harvard University filed an
Thailand administrative complaint against Fredco
19. Hong Kong 44. before the IPO for trademark
Turkey infringement and/or unfair competition
20. India 45. with damages.
United Arab Emirates
21. Indonesia 46. Harvard University alleged that its valid
Uruguay and existing certificates of trademark
22. Ireland 47. registration in the Philippines are:
United States of America
23. Israel 4 1. Trademark Registration No. 56561
8. Venezuela issued on 25 November 1993 for
24. Italy 49. "Harvard Veritas Shield Design" for
Zimbabwe goods and services in Classes 16,
25. Japan 50. 18, 21, 25 and 28 (decals, tote
[5]
European Community bags, serving trays, sweatshirts, t-
shirts, hats and flying discs) of the
Nice International Classification of
The name and mark "Harvard" was Goods and Services;
 2. Trademark Registration No. 57526
issued on 24 March 1994 for
"Harvard Veritas Shield Symbol"
for services in Class 41; Trademark
Registration No. 56539 issued on
25 November 1998 for "Harvard"
for services in Class 41; and
3. Trademark Registration No. 66677
issued on 8 December 1998 for
"Harvard Graphics" for goods in
Class 9. Harvard University further
alleged that it filed the requisite
affidavits of use for the mark
"Harvard Veritas Shield Symbol"
with the IPO.
Further, on 7 May 2003 Harvard
University filed Trademark Application No.
4-2003-04090 for "Harvard Medical
International & Shield Design" for
services in Classes 41 and 44. In 1989,
Harvard University established the
Harvard Trademark Licensing Program,
operated by the Office for Technology
and Trademark Licensing, to oversee and
manage the worldwide licensing of the
"Harvard" name and trademarks for
various goods and services. Harvard
University stated that it never authorized
or licensed any person to use its name
and mark "Harvard" in connection with
any goods or services in the Philippines.
In a Decision[7] dated 22 December 2006,
Director Estrellita Beltran-Abelardo of the
Bureau of Legal Affairs, IPO cancelled
Harvard University's registration of the
mark "Harvard" under Class 25, as
follows:
WHEREFORE, premises considered, the
Petition for Cancellation is hereby
GRANTED. Consequently, Trademark
Registration Number 56561 for the
trademark "HARVARD VE RI TAS
`SHIELD' SYMBOL" issued on November
25, 1993 to PRESIDENT AND FELLOWS
OF HARVARD COLLEGE (HARVARD
UNIVERSITY) should be CANCELLED only
with respect to goods falling under Class
25. On the other hand, considering that
the goods of Respondent-Registrant
falling under Classes 16, 18, 21 and 28
are not confusingly similar with the
Petitioner's goods, the Respondent-
Registrant has acquired vested right over
the same and therefore, should not be
cancelled.
Let the filewrapper of the Trademark
Registration No. 56561 issued on
November 25, 1993 for the trademark
"HARVARD VE RI TAS `SHIELD' SYMBOL",
subject matter of this case together with
a copy of this Decision be forwarded to
the Bureau of Trademarks (BOT) for
appropriate action.
SO ORDERED.[8]
Harvard University filed an appeal before
the Office of the Director General of the
IPO. In a Decision[9] dated 21 April 2008,
the Office of the Director General, IPO
reversed the decision of the Bureau of
Legal Affairs, IPO.
The Director General ruled that more
than the use of the trademark in the
Philippines, the applicant must be the
owner of the mark sought to be
registered. The Director General ruled
that 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 mark. The Director
General noted that the mark covered by
Harvard University's Registration No.
56561 is not only the word "Harvard" but
also the logo, emblem or symbol of
Harvard University. The Director General
ruled that Fredco failed to explain how its
predecessor New York Garments came
up with the mark "Harvard." In addition,
there was no evidence that Fredco or
New York Garments was licensed or
authorized by Harvard University to use
its name in commerce or for any other
use.
The dispositive portion of the decision of
the Office of the Director General, IPO
reads:
WHEREFORE, premises considered, the
instant appeal is GRANTED. The appealed
decision is hereby REVERSED and SET
ASIDE. Let a copy of this Decision as well
as the trademark application and records
be furnished and returned to the Director
of Bureau of Legal Affairs for appropriate
action. Further, let also the Directors of
the Bureau of Trademarks and the
Administrative, Financial and Human
Resources Development Services Bureau,
and the library of the Documentation,
Information and Technology Transfer
Bureau be furnished a copy of this
Decision for information, guidance, and
records purposes.
SO ORDERED.[10]
Fredco filed a petition for review before
the Court of Appeals assailing the
decision of the Director General.
The Decision of the Court of Appeals
In its assailed decision, the Court of
Appeals affirmed the decision of the
Office of the Director General of the IPO.
The Court of Appeals adopted the
findings of the Office of the Director
General and ruled that the latter
correctly set aside the cancellation by the
Director of the Bureau of Legal Affairs of
Harvard University's trademark
registration under Class 25. The Court of
Appeals ruled that Harvard University
was able to substantiate that it
appropriated and used the marks
"Harvard" and "Harvard Veritas Shield
Symbol" in Class 25 way ahead of Fredco
and its predecessor New York Garments.
The Court of Appeals also ruled that the
records failed to disclose any explanation
for Fredco's use of the name and mark
"Harvard" and the words "USA,"
"Established 1936," and "Cambridge,
Massachusetts" within an oblong device,
"US Legend" and "Europe's No. 1 Brand."
Citing Shangri-La International Hotel
Management, Ltd. v. Developers Group
of Companies, Inc.,[11] the Court of
Appeals ruled:
One who has imitated the trademark of
another cannot bring an action for
infringement, particularly against the
true owner of the mark, because he
would be coming to court with unclean
hands. Priority is of no avail to the bad
faith plaintiff. Good faith is required in
order to ensure that a second user may
not merely take advantage of the
goodwill established by the true
owner.[12]
The dispositive portion of the decision of
the Court of Appeals reads:
WHEREFORE, premises considered, the
petition for review is DENIED. The
Decision dated April 21, 2008 of the
Director General of the IPO in Appeal No.
14-07-09 Inter Partes Case No. 14-2005-
00094 is hereby AFFIRMED.
SO ORDERED.[13]
Fredco filed a motion for reconsideration.
In its Resolution promulgated on 8
January 2009, the Court of Appeals
denied the motion for lack of merit.
Hence, this petition before the Court.
The Issue
The issue in this case is whether the
Court of Appeals committed a reversible
error in affirming the decision of the
Office of the Director General of the IPO.
The Ruling of this Court
The petition has no merit.
There is no dispute that the mark
"Harvard" used by Fredco is the same as
the mark "Harvard" in the "Harvard
Veritas Shield Symbol" of Harvard
University. It is also not disputed that
Harvard University was named Harvard
College in 1639 and that then, as now,
Harvard University is located in
Cambridge, Massachusetts, U.S.A. It is
also unrefuted that Harvard University
has been using the mark "Harvard" in
commerce since 1872. It is also
established that Harvard University has
been using the marks "Harvard" and
"Harvard Veritas Shield Symbol" for
Class 25 goods in the United States since
1953. Further, there is no dispute that
Harvard University has registered the
name and mark "Harvard" in at least 50
countries.
On the other hand, Fredco's predecessor-
in-interest, New York Garments, started
using the mark "Harvard" in the
Philippines only in 1982. New York
Garments filed an application with the
Philippine Patent Office in 1985 to
register the mark "Harvard," which
application was approved in 1988. Fredco
insists that the date of actual use in the
Philippines should prevail on the issue of
who has the better right to register the
marks.
Under Section 2 of Republic Act No.
166,[14] as amended (R.A. No. 166),
before a trademark can be registered, it
must have been actually used in
commerce for not less than two months
in the Philippines prior to the filing of an
application for its registration. 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 of the mark "Harvard Veritas
Shield Symbol" before its application for
registration of the mark "Harvard" with
the then Philippine Patents Office.
However, Harvard University's
registration of the name "Harvard" is
based on home registration which is
allowed under Section 37 of R.A. No.
166.[15] As pointed out by Harvard
University in its Comment:
Although Section 2 of the Trademark law
(R.A. 166) requires for the registration of
trademark that the applicant thereof
must prove that the same has been
actually in use in commerce or services
for not less than two (2) months in the
Philippines before the application for
registration is filed, 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 Philippines for the said
period is not necessary. An applicant for
registration based on home certificate of
registration need not even have used the
mark or trade name in this country.[16]
Indeed, in its Petition for Cancellation of
Registration No. 56561, Fredco alleged
that Harvard University's registration "is
based on `home registration' for the
mark `Harvard Veritas Shield' for Class
25."[17]
In any event, under Section 239.2 of
Republic Act No. 8293 (R.A. No.
8293),[18] "[m]arks registered under
Republic Act No. 166 shall remain in
force but shall be deemed to have
been granted under this Act x x x,"
which does not require actual prior use of
the mark in the Philippines. Since the
mark "Harvard Veritas Shield Symbol" is
now deemed granted under R.A. No.
8293, any alleged defect arising from the
absence of actual prior use in the
Philippines has been cured by Section
239.2.[19] In addition, Fredco's
registration was already cancelled on 30
July 1998 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
Fredco's filing of the Petition for
Cancellation before the Bureau of Legal
Affairs of the IPO, Fredco was no longer
the registrant or presumptive owner of
the mark "Harvard."
There are two compelling reasons why
Fredco's petition must fail.
First, Fredco's registration of the mark
"Harvard" and its identification of origin
as "Cambridge, Massachusetts" falsely
suggest that Fredco or its goods are
connected with Harvard University, which
uses the same mark "Harvard" and is
also located in Cambridge,
Massachusetts. This can easily be
gleaned from the following oblong logo of
Fredco that it attaches to its clothing
line: (see image)
Fredco's registration of the mark
"Harvard" should not have been allowed
because Section 4(a) of R.A. No. 166
prohibits the registration of a mark
"which may disparage or falsely
suggest a connection with persons,
living or dead, institutions, beliefs x x
x." Section 4(a) of R.A. No. 166
provides:
Section 4. Registration of trade-marks,
trade-names and service- marks on the
principal register. ? There is hereby
established a register of trade-mark,
trade-names and service-marks which
shall be known as the principal register.
The owner of a trade-mark, a trade-
name or service-mark used to distinguish
his goods, business or services from the
goods, business or services of others
shall have the right to register the same
on the principal register, unless it:
(a) Consists of or comprises immoral,
deceptive or scandalous manner, or
matter which may disparage or falsely
suggest a connection with persons,
living or dead, institutions, beliefs, or
national symbols, or bring them into
contempt or disrepute;
(b) x x x (emphasis supplied)
Fredco's use of the mark "Harvard,"
coupled with its claimed origin in
Cambridge, Massachusetts, obviously
suggests a false connection with Harvard
University. On this ground alone,
Fredco's registration of the mark
"Harvard" should have been disallowed.
Indisputably, Fredco does not have any
affiliation or connection with Harvard
University, or even with Cambridge,
Massachusetts. Fredco or its predecessor
New York Garments was not established
in 1936, or in the U.S.A. as indicated by
Fredco in its oblong logo. Fredco offered
no explanation to the Court of Appeals or
to the IPO why it used the mark
"Harvard" on its oblong logo with the
words "Cambridge, Massachusetts,"
"Established in 1936," and "USA." Fredco
now claims before this Court that it used
these words "to evoke a `lifestyle' or
suggest a `desirable aura' of petitioner's
clothing lines." Fredco's belated
justification merely confirms that it
sought to 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.
Section 4(a) of R.A. No. 166 is identical
to Section 2(a) of the Lanham Act,[20] the
trademark law of the United States.
These provisions are intended to protect
the right of publicity of famous
individuals and institutions from
commercial exploitation of their goodwill
by others.[21] What Fredco has done in
using the mark "Harvard" and the words
"Cambridge, Massachusetts," "USA" to
evoke a "desirable aura" to its products
is precisely to exploit commercially the
goodwill of Harvard University without
the latter's consent. This is a clear
violation of Section 4(a) of R.A. No. 166.
Under Section 17(c)[22] of R.A. No. 166,
such violation is a ground for cancellation
of Fredco's registration of the mark
"Harvard" because the registration was
obtained in violation of Section 4 of R.A.
No. 166.
Second, the Philippines and the United
States of America are both signatories to
the Paris Convention for the Protection of
Industrial Property (Paris Convention).
The Philippines became a signatory to
the Paris Convention on 27 September
1965. Articles 6bis and 8 of the Paris
Convention state:
ARTICLE 6bis
(i) The countries of the Union undertake
either administratively if their legislation
so permits, or at the request of an
interested party, to refuse or to cancel
the registration and to prohibit the use of
a trademark which constitutes a
reproduction, imitation or translation,
liable to create confusion or a mark
considered by the competent authority of
the country as being already the mark
of a person entitled to the benefits of
the present Convention and used for
identical or similar goods. These
provisions shall also apply when the
essential part of the mark
constitutes a reproduction of any
such well-known mark or an
imitation liable to create confusion
therewith.
ARTICLE 8
A trade name shall be protected in all the
countries of the Union without the
obligation of filing or registration,
whether or not it forms part of a
trademark. (Emphasis supplied)
Thus, this Court has ruled that the
Philippines is obligated to assure
nationals of countries of the Paris
Convention 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.[23]
Article 8 of the Paris Convention has
been incorporated in Section 37 of R.A.
No. 166, as follows:
Section 37. Rights of foreign registrants.
-- Persons who are nationals of,
domiciled in, or have a bona fide or
effective business or commercial
establishment in any foreign country,
which is a party to any international
convention or treaty relating to marks or
trade-names, or the repression of unfair
competition to which the Philippines may
be a party, shall be entitled to the
benefits and subject to the provisions of
this Act to the extent and under the
conditions essential to give effect to any
such convention and treaties so long as
the Philippines shall continue to be a
party thereto, except as provided in the
following paragraphs of this section.
xxxx
Trade-names of persons described in
the first paragraph of this section
shall be protected without the
obligation of filing or registration
whether or not they form parts of
marks.[24]

x x x x (Emphasis supplied)
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."
"Harvard" is the trade name of the world
famous Harvard University, and it is also
a trademark of Harvard University. Under
Article 8 of the Paris Convention, as well
as Section 37 of R.A. No. 166, Harvard
University is entitled to protection in the
Philippines of its trade name "Harvard"
even without registration of such trade
name in the Philippines. This means that
no educational entity in the Philippines
can use the trade name "Harvard"
without the consent of Harvard
University. Likewise, no entity in the
Philippines can claim, expressly or
impliedly through the use of the name
and mark "Harvard," that its products or
services are authorized, approved, or
licensed by, or sourced from, Harvard
University without the latter's consent.
Article 6bis of the Paris Convention has
been administratively implemented in the
Philippines through two directives of the
then Ministry (now Department) of Trade,
which directives were upheld by this
Court in several cases.[25] On 20
November 1980, then Minister of Trade
Secretary Luis Villafuerte issued a
Memorandum directing the Director of
Patents to reject, pursuant to the Paris
Convention, all pending applications for
Philippine registration of signature and
other world-famous trademarks by
applicants other than their original
owners.[26] The Memorandum states:
Pursuant to the Paris Convention for the
Protection of Industrial Property to which
the Philippines is a signatory, you are
hereby directed to reject all pending
applications for Philippine registration of
signature and other world-famous
trademarks by applicants other than its
original owners or users.
The conflicting claims over internationally
known trademarks involve such name
brands as Lacoste, Jordache, Vanderbilt,
Sasson, Fila, Pierre Cardin, Gucci,
Christian Dior, Oscar de la Renta, Calvin
Klein, Givenchy, Ralph Lauren, Geoffrey
Beene, Lanvin and Ted Lapidus.
It is further directed that, in cases where
warranted, Philippine registrants of such
trademarks should be asked to surrender
their certificates of registration, if any, to
avoid suits for damages and other legal
action by the trademarks' foreign or local
owners or original users.
You are also required to submit to the
undersigned a progress report on the
matter.
For immediate compliance.[27]
In a Memorandum dated 25 October
1983, then Minister of Trade and
Industry Roberto Ongpin affirmed the
earlier Memorandum of Minister
Villafuerte. Minister Ongpin directed the
Director of Patents to implement
measures necessary to comply with the
Philippines' obligations under the Paris
Convention, thus:
1. Whether the trademark under
consideration is well-known in the
Philippines or is a mark already
belonging to a person entitled to
the benefits of the CONVENTION,
this should be established,
pursuant to Philippine Patent Office
procedures in inter partes and ex
parte cases, according to any of
the following criteria or any
combination thereof:

(a) a declaration by the Minister of
Trade and Industry that the
trademark being considered is
already well-known in the
Philippines such that permission for
its use by other than its original
owner will constitute a
reproduction, imitation, translation
or other infringement;
(b) that the trademark is used in
commerce internationally,
supported by proof that goods
bearing the trademark are sold on
an international scale,
advertisements, the establishment
of factories, sales offices,
distributorships, and the like, in
different countries, including
volume or other measure of
international trade and commerce;
(c) that the trademark is duly
registered in the industrial
property office(s) of another
country or countries, taking
into consideration the dates of
such registration;
(d) that the trademark has been
long established and obtained
goodwill and general international
consumer recognition as belonging
to one owner or source;
(e) that the trademark actually
belongs to a party claiming
ownership and has the right to
registration under the provisions of
the aforestated PARIS
CONVENTION.
2. The word trademark, as used in
this MEMORANDUM, shall
include tradenames, service
marks, logos, signs, emblems,
insignia or other similar
devices used for identification
and recognition by consumers.
3. The Philippine Patent Office shall
refuse all applications for, or cancel
the registration of, trademarks
which constitute a reproduction,
translation or imitation of a
trademark owned by a person,
natural or corporate, who is a
citizen of a country signatory to the
PARIS CONVENTION FOR THE
PROTECTION OF INDUSTRIAL
PROPERTY.
x x x x[28] (Emphasis supplied)
In Mirpuri, the Court ruled that the
essential requirement under Article
6bis of the Paris Convention is that the
trademark to be protected must be "well-
known" in the country where protection
is sought.[29] The Court declared that the
power to determine whether a trademark
is well-known lies in the competent
authority of the country of registration or
use.[30] The Court then stated that the
competent authority would either be the
registering authority if it has the power
to decide this, or the courts of the
country in question if the issue comes
before the courts.[31]
To be protected under the two directives
of the Ministry of Trade, an
internationally well-known mark need not
be registered or used in the
Philippines.[32] All that is required is that
the mark is well-known internationally
and in the Philippines for identical or
similar goods, whether or not the mark is
registered or used in the Philippines. The
Court ruled in Sehwani, Incorporated v.
In-N-Out Burger, Inc.:[33]
The fact that respondent's marks are
neither registered nor used in the
Philippines is of no moment. The
scope of protection initially afforded by
Article 6bis of the Paris Convention has
been expanded in the 1999 Joint
Recommendation Concerning Provisions
on the Protection of Well-Known
Marks, wherein the World Intellectual
Property Organization (WIPO) General
Assembly and the Paris Union agreed to
a nonbinding recommendation that a
well-known mark should be
protected in a country even if the
mark is neither registered nor used
in that country. Part I, Article 2(3)
thereof provides:
(3) [Factors Which Shall Not Be
Required] (a) A Member State shall not
require, as a condition for determining
whether a mark is a well-known mark:
(i) that the mark has been used in, or
that the mark has been registered or
that an application for registration of the
mark has been filed in or in respect of,
the Member State:
(ii) that the mark is well known in, or
that the mark has been registered or
that an application for registration of the
mark has been filed in or in respect of,
any jurisdiction other than the Member
State; or
(iii) that the mark is well known by the
public at large in the Member
State.[34] (Italics in the original decision;
boldface supplied)
Indeed, Section 123.1(e) of R.A. No.
8293 now categorically states that "a
mark which is considered by the
competent authority of the Philippines to
be well-known internationally and in
the Philippines, whether or not it is
registered here," cannot be registered
by another in the Philippines. Section
123.1(e) does not require that the well-
known mark be used in commerce in the
Philippines but only that it be well-known
in the Philippines. Moreover, Rule 102 of
the Rules and Regulations on
Trademarks, Service Marks, Trade
Names and Marked or Stamped
Containers, which implement R.A. No.
8293, provides:
Rule 102. Criteria for determining
whether a mark is well-known. In
determining whether a mark is well-
known, the following criteria or any
combination thereof may be taken into
account:
(a) the duration, extent and geographical
area of any use of the mark, in particular,
the duration, extent and geographical
area of any promotion of the mark,
including advertising or publicity and the
presentation, at fairs or exhibitions, of
the goods and/or services to which the
mark applies;
(b) the market share, in the Philippines
and in other countries, of the goods
and/or services to which the mark
applies;
(c) the degree of the inherent or
acquired distinction of the mark;
(d) the quality-image or reputation
acquired by the mark;
(e) the extent to which the mark has
been registered in the world;
(f) the exclusivity of registration attained
by the mark in the world;
(g) the extent to which the mark has
been used in the world;
(h) the exclusivity of use attained by the
mark in the world;
(i) the commercial value attributed to the
mark in the world;
(j) the record of successful protection of
the rights in the mark;
(k) the outcome of litigations dealing
with the issue of whether the mark is a
well-known mark; and
(l) the presence or absence of identical
or similar marks validly registered for or
used on identical or similar goods or
services and owned by persons other
than the person claiming that his mark is
a well-known mark. (Emphasis supplied)
Since "any combination" of the
foregoing criteria is sufficient to
determine that a mark is well-known, it
is clearly not necessary that the mark be
used in commerce in the Philippines.
Thus, while under the territoriality
principle a mark must be used in
commerce in the Philippines to be
entitled to protection, internationally
well-known marks are the exceptions to
this rule.
In the assailed Decision of the Office of
the Director General dated 21 April 2008,
the Director General found that:
Traced to its roots or origin, HARVARD is
not an ordinary word. It refers to no
other than Harvard University, a
recognized and respected institution of
higher learning located in Cambridge,
Massachusetts, U.S.A. Initially referred
to simply as "the new college," the
institution was named "Harvard College"
on 13 March 1639, after its first principal
donor, a young clergyman named John
Harvard. A graduate of Emmanuel
College, Cambridge in England, John
Harvard bequeathed about four hundred
books in his will to form the basis of the
college library collection, along with half
his personal wealth worth several
hundred pounds. The earliest known
official reference to Harvard as a
"university" rather than "college"
occurred in the new Massachusetts
Constitution of 1780.
Records also show that the first use of
the name HARVARD was in 1638 for
educational services, policy courses of
instructions and training at the university
level. It has a Charter. Its first
commercial use of the name or mark
HARVARD for Class 25 was on 31
December 1953 covered by UPTON Reg.
No. 2,119,339 and 2,101,295.
Assuming in arguendo, that the Appellate
may have used the mark HARVARD in
the Philippines ahead of the Appellant, it
still cannot be denied that the Appellant's
use thereof was decades, even centuries,
ahead of the Appellee's. More
importantly, the name HARVARD was the
name of a person whose deeds were
considered to be a cornerstone of the
university. The Appellant's logos,
emblems or symbols are owned by
Harvard University. The name HARVARD
and the logos, emblems or symbols are
endemic and cannot be separated from
the institution.[35]
Finally, in its assailed Decision, the Court
of Appeals ruled:
Records show that Harvard University is
the oldest and one of the foremost
educational institutions in the United
States, it being established in 1636. It is
located primarily in Cambridge,
Massachusetts and was named after John
Harvard, a puritan minister who left to
the college his books and half of his
estate.
The mark "Harvard College" was first
used in commerce in the United States in
1638 for educational services, specifically,
providing courses of instruction and
training at the university level (Class 41).
Its application for registration with the
United States Patent and Trademark
Office was filed on September 20, 2000
and it was registered on October 16,
2001. The marks "Harvard" and "Harvard
Ve ri tas `Shield' Symbol" were first used
in commerce in the the United States on
December 31, 1953 for athletic uniforms,
boxer shorts, briefs, caps, coats, leather
coats, sports coats, gym shorts, infant
jackets, leather jackets, night shirts,
shirts, socks, sweat pants, sweatshirts,
sweaters and underwear (Class 25). The
applications for registration with the
USPTO were filed on September 9, 1996,
the mark "Harvard" was registered on
December 9, 1997 and the mark
"Harvard Ve ri tas `Shield' Symbol" was
registered on September 30, 1997.[36]
We also note that in a Decision[37] dated
18 December 2008 involving a separate
case between Harvard University and
Streetward International, Inc.,[38] the
Bureau of Legal Affairs of the IPO ruled
that the mark "Harvard" is a "well-known
mark." This Decision, which cites among
others the numerous trademark
registrations of Harvard University in
various countries, has become final and
executory.
mark "Harvard" in the Philippines, the
mark was already protected under Article
6bis and Article 8 of the Paris Convention.
Again, even without applying the Paris
Convention, Harvard University can
invoke Section 4(a) of R.A. No. 166
which prohibits the registration of a mark
"which may disparage or falsely
suggest a connection with persons,
living or dead, institutions, beliefs x x
x."
WHEREFORE, we DENY the petition.
We AFFIRM the 24 October 2008
Decision and 8 January 2009 Resolution
of the Court of Appeals in CA-G.R. SP No.
103394.
SO ORDERED.

There is no question then, and this Court

so declares, that "Harvard" is a well-
known name and mark not only in the
United States but also internationally,
including the Philippines. The mark
"Harvard" is rated as one of the most
famous marks in the world. It has been
registered in at least 50 countries. It has
been used and promoted extensively in
numerous publications worldwide. It has
established a considerable goodwill
worldwide since the founding of Harvard
University more than 350 years ago. It is
easily recognizable as the trade name
and mark of Harvard University of
Cambridge, Massachusetts, U.S.A.,
internationally known as one of the
leading educational institutions in the
world. As such, even before Harvard
University applied for registration of the

[ G.R. No. 100098,
December 29, 1995 ]
EMERALD GARMENT
MANUFACTURING
CORPORATION, PETITIONER, VS.
HON. COURT OF APPEALS,
BUREAU OF PATENTS,
TRADEMARKS AND TECHNOLOGY
TRANSFER AND H.D. LEE
COMPANY, INC., RESPONDENTS.
DECISION
KAPUNAN, J.:
In this petition for review on certiorari
under Rule 45 of the Revised Rules of
Court, Emerald Garment Manufacturing
Corporation seeks to annul the decision
of the Court of Appeals dated 29
November 1990 in CA-G.R. SP No. 15266
declaring petitioner's trademark to be
confusingly similar to that of private
respondent and the resolution dated 17
May 1991 denying petitioner's motion for
reconsideration.
The record reveals the following
antecedent facts:
On 18 September 1981, private
respondent H.D. Lee Co., Inc., a foreign
corporation organized under the laws of
Delaware, U.S.A., filed with the Bureau
of Patents, Trademarks & Technology
Transfer (BPTTT) a Petition for
Cancellation of Registration No. SR 5054
(Supplemental Register) for the
trademark "STYLISTIC MR. LEE" used on
skirts, jeans, blouses, socks, briefs,
jackets, jogging suits, dresses, shorts,
shirts and lingerie under Class 25, issued
on 27 October 1980 in the name of
petitioner Emerald Garment
Manufacturing Corporation, a domestic
corporation organized and existing under
Philippine laws. The petition was
docketed as Inter Partes Case No.
1558.[1]
Private respondent, invoking Sec. 37 of
R.A. No. 166 (Trademark Law) and Art.
VIII of the Paris Convention for the
Protection of Industrial Property, averred
that petitioner's trademark "so closely
resembled its own trademark, 'LEE' as
previously registered and used in the
Philippines, and not abandoned, as to be
likely, when applied to or used in
connection with petitioner's goods, to
cause confusion, mistake and deception
on the part of the purchasing public as to
the origin of the goods."[2]
In its answer dated 23 March 1982,
petitioner contended that its trademark
was entirely and unmistakably different
from that of private respondent and that
its certificate of registration was legally
and validly granted.[3]
On 20 February 1984, petitioner caused
the publication of its application for
registration of the trademark "STYLISTIC
MR. LEE" in the Principal Register."[4]
On 27 July 1984, private respondent filed
a notice of opposition to petitioner's
application for registration also on
grounds that petitioner's trademark was
confusingly similar to its "LEE"
trademark.[5] The case was docketed as
Inter Partes Case No. 1860.
On 21 June 1985, the Director of Patents,
on motion filed by private respondent
dated 15 May 1985, issued an order
consolidating Inter Partes Cases Nos.
1558 and 1860 on grounds that a
common question of law was involved.[6]
On 19 July 1988, the Director of Patents
rendered a decision granting private
respondent's petition for cancellation and
opposition to registration.
The Director of Patents found private
respondent to be the prior registrant of
the trademark "LEE" in the Philippines
and that it had been using said mark in
the Philippines.[7]
Moreover, the Director of Patents, using
the test of dominancy, declared that
petitioner's trademark was confusingly
similar to private respondent's mark
because "it is the word 'Lee' which draws
the attention of the buyer and leads him
to conclude that the goods originated
from the same manufacturer. It is
undeniably the dominant feature of the
mark."[8]
On 3 August 1988, petitioner appealed to
the Court of Appeals and on 8 August
1988, it filed with the BPTTT a Motion to
Stay Execution of the 19 July 1988
decision of the Director of Patents on
grounds that the same would cause it
great and irreparable damage and
injury. Private respondent submitted its
opposition on 22 August 1988.[9]
On 23 September 1988, the BPTTT
issued Resolution No. 88-33 granting
petitioner's motion to stay execution
subject to the following terms and
conditions:
1. That under this resolution,
Respondent-Registrant is authorized only
to dispose of its current stock using the
mark "STYLISTIC MR. LEE";
2. That Respondent-Registrant is strictly
prohibited from further production,
regardless of mode and source, of the
mark in question (STYLISTIC MR. LEE) in
addition to its current stock;
3. That this relief Order shall
automatically cease upon resolution of
the Appeal by the Court of Appeals and,
if the Respondent's appeal loses, all
goods bearing the mark "STYLISTIC MR.
LEE" shall be removed from the market,
otherwise such goods shall be seized in
accordance with the law.
SO ORDERED.[10]
On 29 November 1990, the Court of
Appeals promulgated its decision
affirming the decision of the Director of
Patents dated 19 July 1988 in all
respects.[11]
In said decision the Court of Appeals
expounded, thus:
xxx x
xx
xxx.
Whether or not a trademark causes
confusion and is likely to deceive the
public is a question of fact which is to be
resolved by applying the "test of
dominancy", meaning, if the competing
trademark contains the main or essential
or dominant features of another by
reason of which confusion and deception
are likely to result, then infringement
takes place; that duplication or imitation
is not necessary, a similarity in the
dominant features of the trademark
would be sufficient.
The word "LEE" is the most prominent
and distinctive feature of the appellant's
trademark and all of the appellee's "LEE"
trademarks. It is the mark which draws
the attention of the buyer and leads him
to conclude that the goods originated
from the same manufacturer. While it is
true that there are other words such as
"STYLISTIC", printed in the appellant's
label, such word is printed in such small
letters over the word "LEE" that it is not
conspicuous enough to draw the
attention of ordinary buyers whereas the
word "LEE" is printed across the label in
big, bold letters and of the same color,
style, type and size of lettering as that of
the trademark of the appellee. The
alleged difference is too insubstantial to
be noticeable. Even granting arguendo
that the word "STYLISTIC" is conspicuous
enough to draw attention, the goods may
easily be mistaken for just another
variation or line of garments under the
appellee's "LEE" trademarks in view of
the fact that the appellee has registered
trademarks which use other words in
addition to the principal mark "LEE" such
as "LEE RIDERS", "LEESURES" and "LEE
LEENS". The likelihood of confusion is
further made more probable by the fact
that both parties are engaged in the
same line of business. It is well to
reiterate that the determinative factor in
ascertaining whether or not the marks
are confusingly similar to each other is
not whether the challenged mark would
actually cause confusion or deception of
the purchasers but whether the use of
such mark would likely cause confusion
or mistake on the part of the buying
public.
xxx x respondent appropriated the style and
xx
xxx.
The appellee has sufficiently established
its right to prior use and registration of
the trademark "LEE" in the Philippines
and is thus entitled to protection from
any infringement upon the same. It is
thus axiomatic that one who has
identified a peculiar symbol or mark with
his goods thereby acquires a property
right in such symbol or mark, and if
another infringes the trademark, he
thereby invokes this property right.
The merchandise or goods being sold by
the parties are not that expensive as
alleged to be by the appellant and are
quite ordinary commodities purchased by
the average person and at times, by the
ignorant and the unlettered. Ordinary
purchasers will not as a rule examine the
small letterings printed on the label but
will simply be guided by the presence of
the striking mark "LEE". Whatever
difference there may be will pale in
insignificance in the face of an evident
similarity in the dominant features and
overall appearance of the labels of the
parties.[12]
xxx x
xx
xxx.
On 19 December 1990, petitioner filed a
motion for reconsideration of the above-
mentioned decision of the Court of
Appeals.
Private respondent opposed said motion
on 8 January 1991 on grounds that it
involved an impermissible change of
theory on appeal. Petitioner allegedly
raised entirely new and unrelated
arguments and defenses not previously
raised in the proceedings below such as
laches and a claim that private
appearance of petitioner's trademark
when it registered its "LEE" mark under
Registration No. 44220.[13]
On 17 May 1991, the Court of Appeals
issued a resolution rejecting petitioner's
motion for reconsideration and ruled
thus:
xxx x
xx
xxx.
A defense not raised in the trial court
cannot be raised on appeal for the first
time. An issue raised for the first time
on appeal and not raised timely in the
proceedings in the lower court is barred
by estoppel.
The object of requiring the parties to
present all questions and issues to the
lower court before they can be presented
to this Court is to have the lower court
rule upon them, so that this Court on
appeal may determine whether or not
such ruling was erroneous. The purpose
is also in furtherance of justice to require
the party to first present the question he
contends for in the lower court so that
the other party may not be taken by
surprise and may present evidence to
properly meet the issues raised.
Moreover, for a question to be raised on
appeal, the same must also be within the
issues raised by the parties in their
pleadings. Consequently, when a party
deliberately adopts a certain theory, and
the case is tried and decided based upon
such theory presented in the court below,
he will not be permitted to change his
theory on appeal. To permit him to do
so would be unfair to the adverse
party. A question raised for the first
time on appeal, there having opportunity
to raise them in the court of origin
constitutes a change of theory which is
not permissible on appeal.
In the instant case, appellant's main
defense pleaded in its answer dated
March 23, 1982 was that there was "no
confusing similarity between the
competing trademark involved. On
appeal, the appellant raised a single
issue, to wit:
The only issue involved in this case is
whether or not respondent-registrant's
trademark "STYLISTIC MR. LEE" is
confusingly similar with the petitioner's
trademarks "LEE or LEE RIDERS, LEE-
LEENS and LEE-SURES."
Appellant's main argument in this motion
for reconsideration on the other hand is
that the appellee is estopped by laches
from asserting its right to its
trademark. Appellant claims although
belatedly that appellee went to court
with "unclean hands" by changing the
appearance of its trademark to make it
identical to the appellant's trademark.
Neither defenses were raised by the
appellant in the proceedings before the
Bureau of Patents. Appellant cannot
raise them now for the first time on
appeal, let alone on a mere motion for
reconsideration of the decision of this
Court dismissing the appellant's appeal.
While there may be instances and
situations justifying relaxation of this rule,
the circumstance of the instant case,
equity would be better served by
applying the settled rule it appearing that
appellant has not given any reason at all
as to why the defenses raised in its
motion for reconsideration was not
invoked earlier.[14]
xxx x
xx
xxx.
Twice rebuffed, petitioner presents its
case before this Court on the following
assignment of errors:
I. THE COURT OF APPEALS ERRED IN
NOT FINDING THAT PRIVATE
RESPONDENT CAUSED THE ISSUANCE
OF A FOURTH "LEE" TRADEMARK
IMITATING THAT OF THE PETITIONER'S
ON MAY 5, 1989 OR MORE THAN EIGHT
MONTHS AFTER THE BUREAU OF
PATENT'S DECISION DATED JULY 19,
1988.
II. THE COURT OF APPEALS ERRED IN
RULING THAT THE DEFENSE OF
ESTOPPEL BY LACHES MUST BE RAISED
IN THE PROCEEDINGS BEFORE THE
BUREAU OF PATENTS, TRADEMARKS
AND TECHNOLOGY TRANSFER.
III. THE COURT OF APPEALS ERRED
WHEN IT CONSIDERED PRIVATE
RESPONDENT'S PRIOR REGISTRATION
OF ITS TRADEMARK AND DISREGARDED
THE FACT THAT PRIVATE RESPONDENT
HAD FAILED TO PROVE COMMERCIAL
USE THEREOF BEFORE FILING OF
APPLICATION FOR REGISTRATION.[15]
In addition, petitioner reiterates the
issues it raised in the Court of Appeals:
I. THE ISSUE INVOLVED IN THIS
CASE IS WHETHER OR NOT
PETITIONER'S TRADEMARK SYTLISTIC
MR. LEE, IS CONFUSINGLY SIMILAR
WITH THE PRIVATE RESPONDENT'S
TRADEMARK LEE OR LEE-RIDER, LEE-
LEENS AND LEE-SURES.
II. PETITIONER'S EVIDENCES ARE
CLEAR AND SUFFICIENT TO SHOW THAT
IT IS THE PRIOR USER AND ITS
TRADEMARK IS DIFFERENT FROM THAT
OF THE PRIVATE RESPONDENT.
III. PETITIONER'S TRADEMARK IS
ENTIRELY DIFFERENT FROM THE
PRIVATE RESPONDENT'S AND THE
REGISTRATION OF ITS TRADEMARK
IS PRIMA FACIE EVIDENCE OF GOOD
FAITH.
IV. PETITIONER'S "STYLISTIC MR.
LEE" TRADEMARK CANNOT BE
CONFUSED WITH PRIVATE
RESPONDENT'S LEE TRADEMARK.[16]
Petitioner contends that private
respondent is estopped from instituting
an action for infringement before the
BPTTT under the equitable principle of
laches pursuant to Sec. 9-A of R.A. No.
166, otherwise known as the Law on
Trade-marks, Trade-names and Unfair
Competition:
SEC. 9-A. Equitable principles to govern
proceedings.— In opposition proceedings
and in all other inter partes proceedings
in the patent office under this act,
equitable principles of laches, estoppel,
and acquiescence, where applicable, may
be considered and applied.
Petitioner alleges that it has been using
its trademark "STYLISTIC MR. LEE" since
1 May 1975, yet, it was only on 18
September 1981 that private respondent
filed a petition for cancellation of
petitioner's certificate of registration for
the said trademark. Similarly, private
respondent's notice of opposition to
petitioner's application for registration in
the principal register was belatedly filed
on 27 July 1984.[17]
Private respondent counters by
maintaining that petitioner was barred
from raising new issues on appeal, the
only contention in the proceedings below
being the presence or absence of
confusing similarity between the two
trademarks in question.[18]
We reject petitioner's contention.
Petitioner's trademark is registered in the
supplemental register. The Trademark
Law (R.A. No. 166) provides that "marks
and tradenames for the supplemental
register shall not be published for or be
subject to opposition, but shall be
published on registration in the Official
Gazette."[19] The reckoning point,
therefore, should not be 1 May 1975, the
date of alleged use by petitioner of its
assailed trademark but 27 October
1980,[20] the date the certificate of
registration SR No. 5054 was published
in the Official Gazette and issued to
petitioner.
It was only on the date of publication
and issuance of the registration
certificate that private respondent may
be considered "officially" put on notice
that petitioner has appropriated or is
using said mark, which, after all, is the
function and purpose of registration in
the supplemental register.[21] The record
is bereft of evidence that private
respondent was aware of petitioner's
trademark before the date of said
publication and issuance. Hence, when
private respondent instituted cancellation
proceedings on 18 September 1981, less
than a year had passed.
Corollarily, private respondent could
hardly be accused of inexcusable delay in
filing its notice of opposition to
petitioner's application for registration in
the principal register since said
application was published only on 20
February 1984.[22] From the time of
publication to the time of filing the
opposition on 27 July 1984 barely five
(5) months had elapsed. To be barred
from bringing suit on grounds of estoppel
and laches, the delay must be
lengthy.[23]
More crucial is the issue of confusing
similarity between the two
trademarks. Petitioner vehemently
contends that its trademark "STYLISTIC
MR. LEE" is entirely different from and
not confusingly similar to private
respondent's "LEE" trademark.
Private respondent maintains
otherwise. It asserts that petitioner's
trademark tends to mislead and confuse
the public and thus constitutes an
infringement of its own mark, since the
dominant feature therein is the word
"LEE."
The pertinent provision of R.A. No. 166
(Trademark Law) states thus:
SEC. 22. Infringement, what constitutes.
— Any person who shall use, without the
consent of the registrant, any
reproduction, counterfeit, copy or
colorable imitation of any registered
mark or trade-name in connection with
the sale, offering for sale, or advertising
of any goods, business or services on or
in connection with which such use is
likely to cause confusion or mistake or to
deceive purchasers or others as to the
source or origin of such goods or services,
or identity of such business; or
reproduce, counterfeit, copy or colorably
imitable any such mark or trade-name
and apply such reproduction, counterfeit,
copy, or colorable imitation to labels,
signs, prints, packages, wrappers,
receptacles or advertisements intended
to be used upon or in connection with
such goods, business or services, shall
be liable to a civil action by the registrant
for any or all of the remedies herein
provided.
Practical application, however, of the
aforesaid provision is easier said than
done. In the history of trademark cases
in the Philippines, particularly in
ascertaining whether one trademark is
confusingly similar to or is a colorable
imitation of another, no set rules can be
deduced. Each case must be decided on
its own merits.
In Esso Standard Eastern, Inc. v. Court
of Appeals,[24] we held:
... But likelihood of confusion is a relative
concept; to be determined only according
to the particular, and sometimes peculiar,
circumstances of each case. It is
unquestionably true that, as stated
in Coburn vs. Puritan Mills, Inc.: "In
trademark cases, even more than in
other litigation, precedent must be
studied in the light of the facts of the
particular case."
xxx x
xx
xxx.
Likewise, it has been observed that:

In determining whether a particular
name or mark is a "colorable imitation"
of another, no all-embracing rule seems
possible in view of the great number of
factors which must necessarily be
considered in resolving this question of
fact, such as the class of product or
business to which the article belongs; the
product's quality, quantity, or size,
including its wrapper or container; the
dominant color, style, size, form,
meaning of letters, words, designs and
emblems used; the nature of the
package, wrapper or container; the
character of the product's purchasers;
location of the business; the likelihood of
deception or the mark or name's
tendency to confuse; etc.[25]
Proceeding to the task at hand, the
essential element of infringement is
colorable imitation. This term has been
defined as "such a close or ingenious
imitation as to be calculated to deceive
ordinary purchasers, or such
resemblance of the infringing mark to
the original as to deceive an ordinary
purchaser giving such attention as a
purchaser usually gives, and to cause
him to purchase the one supposing it to
be the other."[26]
Colorable imitation does not mean such
similitude as amounts to identity. Nor
does it require that all the details be
literally copied. Colorable imitation refers
to such similarity in form, content, words,
sound, meaning, special arrangement, or
general appearance of the trademark or
tradename with that of the other mark or
tradename in their over-all presentation
or in their essential, substantive and
distinctive parts as would likely mislead
or confuse persons in the ordinary course
of purchasing the genuine article.[27]
In determining whether colorable
imitation exists, jurisprudence has
developed two kinds of tests--the
Dominancy Test applied in Asia Brewery,
Inc. v. Court of Appeals[28] and other
cases[29] and the Holistic Test developed
in Del Monte Corporation v. Court of
Appeals[30] and its proponent cases.[31]
As its title implies, the test of dominancy
focuses on the similarity of the prevalent
features of the competing trademarks
which might cause confusion or
deception and thus constitutes
infringement.
xxx x
xx
xxx.
.... If the competing trademark contains
the main or essential or dominant
features of another, and confusion and
deception is likely to result, infringement
takes place. Duplication or imitation is
not necessary; nor it is necessary that
the infringing label should suggest an
effort to imitate. [C. Neilman Brewing Co.
v. Independent Brewing Co., 191 F., 489,
495, citing Eagle White Lead Co., vs.
Pflugh (CC) 180 Fed. 579]. The question
at issue in cases of infringement of
trademarks is whether the use of the
marks involved would be likely to cause
confusion or mistakes in the mind of the
public or deceive purchasers. (Auburn
Rubber Corporation vs. Honover Rubber
Co., 107 F. 2d 588; xxx.)[32]
xxx x
xx
xxx.
On the other side of the spectrum, the
holistic test mandates that the entirety of
the marks in question must be
considered in determining confusing
similarity.
xxx x buyer is predisposed to be more cautious
xx
xxx.
In determining whether the trademarks
are confusingly similar, a comparison of
the words is not the only determinant
factor. The trademarks in their entirety
as they appear in their respective labels
or hang tags must also be considered in
relation to the goods to which they are
attached. The discerning eye of the
observer must focus not only on the
predominant words but also on the other
features appearing in both labels in order
that he may draw his conclusion whether
one is confusingly similar to the other.[33]
xxx x thing. Expensive and valuable items are
xx
xxx.
Applying the foregoing tenets to the
present controversy and taking into
account the factual circumstances of this
case, we considered the trademarks
involved as a whole and rule that
petitioner's "STYLISTIC MR. LEE" is not
confusingly similar to private
respondent's "LEE" trademark.
Petitioner's trademark is the whole
"STYLISTIC MR. LEE." Although on its
label the word "LEE" is prominent, the
trademark should be considered as a
whole and not piecemeal. The
dissimilarities between the two marks
become conspicuous, noticeable and
substantial enough to matter especially
in the light of the following variables that
must be factored in.
First, the products involved in the case at
bar are, in the main, various kinds of
jeans. These are not your ordinary
household items like catsup, soy sauce
or soap which are of minimal
cost. Maong pants or jeans are not
inexpensive. Accordingly, the casual
and discriminating in and would prefer to
mull over his purchase. Confusion and
deception, then, is less likely. In Del
Monte Corporation v. Court of
Appeals,[34] we noted that:
.... Among these, what essentially
determines the attitudes of the
purchaser, specifically his inclination to
be cautious, is the cost of the goods. To
be sure, a person who buys a box of
candies will not exercise as much care as
one who buys an expensive watch. As a
general rule, an ordinary buyer does not
exercise as much prudence in buying an
article for which he pays a few centavos
as he does in purchasing a more valuable
normally bought only after deliberate,
comparative and analytical
investigation. But mass products, low
priced articles in wide use, and matters
of everyday purchase requiring frequent
replacement are bought by the casual
consumer without great care....
Second, like his beer, the average
Filipino consumer generally buys his
jeans by brand. He does not ask the
sales clerk for generic jeans but for, say,
a Levis, Guess, Wrangler or even an
Armani. He is, therefore, more or less
knowledgeable and familiar with his
preference and will not easily be
distracted.
Finally, in line with the foregoing
discussions, more credit should be given
to the "ordinary purchaser." Cast in this
particular controversy, the ordinary
purchaser is not the "completely unwary
consumer" but is the "ordinarily
intelligent buyer" considering the type of
product involved.
The definition laid down in Dy Buncio v.
Tan Tiao Bok[35] is better suited to the
present case. There, the "ordinary
purchaser" was defined as one
"accustomed to buy, and therefore to
some extent familiar with, the goods in
question. The test of fraudulent
simulation is to be found in the likelihood
of the deception of some persons in
some measure acquainted with an
established design and desirous of
purchasing the commodity with which
that design has been associated. The
test is not found in the deception, or the
possibility of deception, of the person
who knows nothing about the design
which has been counterfeited, and who
must be indifferent between that and the
other. The simulation, in order to be
objectionable, must be such as appears
likely to mislead the ordinary intelligent
buyer who has a need to supply and is
familiar with the article that he seeks to
purchase."
There is no cause for the Court of
Appeal's apprehension that petitioner's
products might be mistaken as "another
variation or line of garments under
private respondent's 'LEE'
trademark."[36] As one would readily
observe, private respondent's variation
follows a standard format "LEERIDERS,"
"LEESURES" and "LEELEENS." It is,
therefore, improbable that the public
would immediately and naturally
conclude that petitioner's "STYLISTIC MR.
LEE" is but another variation under
private respondent's "LEE" mark.
As we have previously intimated the
issue of confusing similarity between
trademarks is resolved by considering
the distinct characteristics of each
case. In the present controversy, taking
into account these unique factors, we
conclude that the similarities in the
trademarks in question are not sufficient
as to likely cause deception and
confusion tantamount to infringement.
Another way of resolving the conflict is to
consider the marks involved from the
point of view of what marks are
registrable pursuant to Sec. 4 of R.A. No.
166, particularly paragraph 4(e):
CHAPTER II-A.— The Principal Register
(Inserted by Sec. 2, Rep. Act No.638.)
SEC. 4. Registration of trade-marks,
trade-names and service-marks on the
principal register.-There is hereby
established a register of trade-marks,
trade-names and service-marks which
shall be known as the principal
register. The owner of a trade-mark,
trade-name or service-mark used to
distinguish his goods, business or
services from the goods, business or
services of others shall have the right to
register the same on the principal
register, unless it:
xxx x
xx
xxx.
(e) Consists of a mark or trade-name
which, when applied to or used in
connection with the goods, business or
services of the applicant is merely
descriptive or deceptively misdescriptive
of them, or when applied to or used in
connection with the goods, business or
services of the applicant is primarily
geographically descriptive or deceptively
misdescriptive of them, or is primarily
merely a surname; ( Italics ours.)
xxx x
xx
xxx.
"LEE" is primarily a surname. Private
respondent cannot, therefore, acquire
exclusive ownership over and singular
use of said term.
.... It has been held that a personal
name or surname may not be
monopolized as a trademark or
tradename as against others of the same
name or surname. For in the absence of
contract, fraud, or estoppel, any man
may use his name or surname in all
legitimate ways. Thus, "Wellington" is a
surname, and its first user has no cause
of action against the junior user of
"Wellington" as it is incapable of
exclusive appropriation.[37]
In addition to the foregoing, we are
constrained to agree with petitioner's
contention that private respondent failed
to prove prior actual commercial use of
its "LEE" trademark in the Philippines
before filing its application for
registration with the BPTTT and hence,
has not acquired ownership over said
mark.
Actual use in commerce in the Philippines
is an essential prerequisite for the
acquisition of ownership over a
trademark pursuant to Sec. 2 and 2-A of
the Philippine Trademark Law (R.A. No.
166) which explicitly provides that:
CHAPTER II. Registration of Marks and
Trade-names.
SEC. 2. What are registrable.— Trade-
marks, trade-names, and service marks
owned by persons, corporations,
partnerships or associations domiciled in
the Philippines and by persons,
corporations, partnerships, or
associations domiciled in any foreign
country may be registered in accordance
with the provisions of this
act: Provided, That said trade-marks,
trade-names, or service marks are
actually in use in commerce and services
not less than two months in the
Philippines before the time the
applications for registration are
filed: And Provided, further, That the
country of which the applicant for
registration is a citizen grants by law
substantially similar privileges to citizens
of the Philippines, and such fact is
officially certified, with a certified true
copy of the foreign law translated into
the English language, by the government
of the foreign country to the Government
of the Republic of the Philippines. (As
amended.) (Italics ours.)
SEC. 2-A. Ownership of trade-marks,
trade-names and service-marks; how
acquired.-Anyone who lawfully produces
or deals in merchandise of any kind or
who engages in lawful business, or who
renders any lawful service in commerce,
by actual use hereof in manufacture or
trade, in business, and in the service
rendered; may appropriate to his
exclusive use a trade-mark, a trade-
name, or a service-mark not so
appropriated by another, to distinguish
his merchandise, business or services
from others. The ownership or
possession of trade-mark, trade-name,
service-mark, heretofore or hereafter
appropriated, as in this section provided,
shall be recognized and protected in the
same manner and to the same extent as
are other property rights to the law. (As
amended.) (Italics ours.)
The provisions of the 1965 Paris
Convention for the Protection of
Industrial Property[38] relied upon by
private respondent and Sec. 21-A of the
Trademark Law (R.A. No. 166)[39] were
sufficiently expounded upon and qualified
in the recent case of Philip Morris, Inc. v.
Court of Appeals:[40]
xxx x
xx
xxx.
Following universal acquiescence and
comity, our municipal law on trademarks
regarding the requirement of actual use
in the Philippines must subordinate an
international agreement inasmuch as the
apparent clash is being decided by a
municipal tribunal (Mortisen vs.
Peters, Great Britain, High Court of
Judiciary of Scotland, 1906, 8 Sessions,
93; Paras, International Law and World
Organization, 1971 Ed., p. 20). Withal,
the fact that international law has been
made part of the law of the land does not
by any means imply the primacy of
international law over national law in the
municipal sphere. Under the doctrine of
incorporation as applied in most
countries, rules of international law are
given a standing equal, not superior, to
national legislative enactments.
xxx x A rule widely accepted and firmly
xx
xxx.
In other words, (a foreign corporation)
may have the capacity to sue for
infringement irrespective of lack of
business activity in the Philippines on
account of Section 21-A of the
Trademark Law but the question of
whether they have an exclusive right
over their symbol as to justify issuance
of the controversial writ will depend on
actual use of their trademarks in the
Philippines in line with Sections 2 and 2-
A of the same law. It is thus
incongruous for petitioners to claim that
when a foreign corporation not licensed
to do business in the Philippines files a
complaint for infringement, the entity
need not be actually using its trademark
in commerce in the Philippines. Such a
foreign corporation may have the
personality to file a suit for infringement
but it may not necessarily be entitled to
protection due to absence of actual use
of the emblem in the local market.
xxx x of course, has value: it is an
xx
xxx.
Undisputably, private respondent is the
senior registrant, having obtained
several registration certificates for its
various trademarks "LEE," "LEE RIDERS,"
and "LEESURES" in both the
supplemental and principal registers, as
early as 1969 to 1973.[41] However,
registration alone will not suffice.
In Sterling Products International, Inc. v.
Farbenfabriken Bayer
Aktiengesellschaft,[42] we declared:
xxx x
xx
xxx.
entrenched because it has come down
through the years is that actual use in
commerce or business is a prerequisite in
the acquisition of the right of ownership
over a trademark.
xxx x
xx
xxx.
It would seem quite clear that adoption
alone of a trademark would not give
exclusive right thereto. Such right
"grows out of their actual use." Adoption
is not use. One may make
advertisements, issue circulars, give out
price lists on certain goods; but these
alone would not give exclusive right of
use. For trademark is a creation of
use. The underlying reason for all these
is that purchasers have come to
understand the mark as indicating the
origin of the wares. Flowing from this is
the trader's right to protection in the
trade he has built up and the goodwill he
has accumulated from use of the
trademark. Registration of a trademark,
administrative act declaratory of a
pre?existing right. Registration does not,
however, perfect a trademark
right. (Italics ours.)
xxx x the Supreme Court provided they are
xx
xxx.
To augment its arguments that it was,
not only the prior registrant, but also the
prior user, private respondent invokes
Sec. 20 of the Trademark Law, thus:
SEC. 20. Certificate of registration prima
facie evidence of validity.— A certificate
of registration of a mark or tradename
shall be a prima facie evidence of the
validity of the registration, the
registrant's ownership of the mark or
trade-name, and of the registrant's
exclusive right to use the same in
connection with the goods, business or
services specified in the certificate,
subject to any conditions and limitations
stated therein.
The credibility placed on a certificate of
registration of one's trademark, or its
weight as evidence of validity, ownership
and exclusive use, is qualified. A
registration certificate serves merely
as prima facie evidence. It is not
conclusive but can and may be rebutted
by controverting evidence.
Moreover, the aforequoted provision
applies only to registrations in the
principal register.[43] Registrations in the
supplemental register do not enjoy a
similar privilege. A supplemental
register was created precisely for the
registration of marks which are not
registrable on the principal register due
to some defects.[44]
The determination as to who is the prior
user of the trademark is a question of
fact and it is this Court's working
principle not to disturb the findings of the
Director of Patents on this issue in the
absence of any showing of grave abuse
of discretion. The findings of facts of the
Director of Patents are conclusive upon
supported by substantial evidence.[45]
In the case at bench, however, we
reverse the findings of the Director of
Patents and the Court of Appeals. After a
meticulous study of the records, we
observe that the Director of Patents and
the Court of Appeals relied mainly on the
registration certificates as proof of use
by private respondent of the trademark
"LEE" which, as we have previously
discussed are not sufficient. We cannot
give credence to private respondent's
claim that its "LEE" mark first reached
the Philippines in the 1960's through
local sales by the Post Exchanges of the
U.S. Military Bases in the
Philippines[46] based as it was solely on
the self-serving statements of Mr.
Edward Poste, General Manager of Lee
(Phils.), Inc., a wholly owned subsidiary
of the H.D. Lee, Co., Inc., U.S.A., herein
private respondent.[47] Similarly, we give
little weight to the numerous vouchers
representing various advertising
expenses in the Philippines for "LEE"
products.[48] It is well to note that these
expenses were incurred only in 1981 and
1982 by LEE (Phils.), Inc. after it entered
into a licensing agreement with private
respondent on 11 May 1981.[49]
On the other hand, petitioner has
sufficiently shown that it has been in the
business of selling jeans and other
garments adopting its "STYLISTIC MR.
LEE" trademark since 1975 as evidenced
by appropriate sales invoices to various
stores and retailers.[50]
Our rulings in Pagasa Industrial Corp. v.
Court of Appeals[51] and Converse Rubber
Corp. v. Universal Rubber Products,
Inc.,[52] respectively, are instructive:
The Trademark Law is very clear. It WHEREFORE, premises considered, the
requires actual commercial use of the questioned decision and resolution are
mark prior to its registration. There is no hereby REVERSED and SET ASIDE.
dispute that respondent corporation was
the first registrant, yet it failed to fully SO ORDERED.
substantiate its claim that it used in
trade or business in the Philippines the
subject mark; it did not present proof to
invest it with exclusive, continuous
adoption of the trademark which should
consist among others, of considerable
sales since its first use. The invoices
submitted by respondent which were
dated way back in 1957 show that the
zippers sent to the Philippines were to be
used as "samples" and "of no commercial
value." The evidence for respondent
must be clear, definite and free from
inconsistencies. "Samples" are not for
sale and therefore, the fact of exporting
them to the Philippines cannot be
considered to be equivalent to the "use"
contemplated by law. Respondent did
not expect income from such
"samples." There were no receipts to
establish sale, and no proof were
presented to show that they were
subsequently sold in the Philippines.

xxx x
xx
xxx.

The sales invoices provide the best proof

that there were actual sales of
petitioner's product in the country and
that there was actual use for a
protracted period of petitioner's
trademark or part thereof through these
sales.

For lack of adequate proof of actual use

of its trademark in the Philippines prior
to petitioner's use of its own mark and
for failure to establish confusing
similarity between said trademarks,
private respondent's action for
infringement must necessarily fail.