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A LOCAL
clothing manufacturer has asked the Court of Appeals
(CA) to nullify the ruling of the Office of the Director
General of the Intellectual Property Office (ODG-IPO)
canceling its registration for the exclusive use of
“Harvard” mark for clothing, footwear and headgear.
In a
36-page petition for review, Fredco Manufacturing Corp.,
through its lawyer Manuel Domingo Cordova, said the ODG-IPO
erred in reversing the decision of the IPO’s Bureau of
Legal Affairs (BLF) issued on December 22, 2006, which
declared Fredco’s registration for the “Harvard” mark as
valid and existing.
Fredco
is claiming ownership of the mark “Harvard” for
T-shirts, polo shirts, sandos, briefs, pants, jackets
and slacks under Class 25 of the Nice Classification.
This
classification is based on a multilateral treaty
administered by World Intellectual Property Office and
is called the Nice Agreement Concerning the
International Classification of Goods and Services for
the Purposes of the Registration of Marks, which was
concluded in 1957. Nice Agreement is open to states
party to the Paris Convention for the Protection of
Industrial Property.
The BLF-IPO
held that respondent
Harvard
University, based in Cambridge, Massachusetts, did not
acquire ownership and exclusive right over the “Harvard”
mark in the Philippines since its trademark registration
lacks legal ground as it is based on a “home”
registration, not on actual use in commerce.
Thus,
the BLF-IPO ordered the cancellation of registration for
the trademark “Harvard Ve Ri Tas ‘Shield’ Symbol” issued
on November 25, 1993, to President and Fellows of
Harvard College or Harvard University, with respect to
goods falling under Class 25.
Acting
on the appeal of
Harvard University,
the ODG-IPO issued a decision on April 21, 2007,
reversing the ruling of the BLF-IPO.
The ODG-IPO
held that Fredco, not being the owner of the “Harvard”
mark, had no right to register it. Thus, the
registration issued to the firm is not valid and cannot
be used as a ground to cancel Harvard University’s
trademark registration pursuant to Section 4 (d) of
Republic Act 166, or the Philippine Trademark Law.
The
agency further held that the “Harvard” mark for goods
under Class 25 is owned by the Harvard University for
being a recognized institution and prior user of the
mark based on its registration in the United States on
December 31,1953.
Thus,
Fredco’s registration in the Philippines, which precedes
respondent’s registration in the country, is not valid.
In its
petition before the CA, Fredco stressed that a
fundamental principle of Philippine trademark law is
that actual use in commerce is prerequisite to the
acquisition of ownership over a trademark.
“In the
case at bar, petitioner is the prior commercial user of
the ‘Harvard’ mark in the country for goods under Class
25. On the other hand, respondent merely adopted the
mark in the
Philippines,
allegedly through advertisements herein, without actual
use of such mark in commerce. It must be remembered that
adoption alone of a trademark would not give exclusive
right thereto, for adoption is not use,” the petitioner
said.
Furthermore, the petitioner noted that in acquiring a
trademark, not just an ordinary use of the mark is
required but the actual use of the mark in the
Philippines, pursuant to Section 2 and 2-A of the
Philippine Trademark Law.
“To
reiterate, since a trademark is acquired by adoption and
use thereof in commerce in the
Philippines,
it belongs to the person who first gave it value. The
person who has established prior adoption and use of the
trademark acquires ownership thereof on goods upon which
it is used or on goods or articles related thereto. He
is entitled to use it to the exclusion of others, to
register and to perpetually enjoin others from using
it,” the petitioner added.
The
petitioner further said Harvard University failed use
sales invoices to prove its actual use of the Harvard
mark for Class 25 goods in the country.
It said
the ODG-IPO merely relied on the “affidavits of use”
submitted by respondent to the IPO on the 5th and 10 th
anniversary of its trademark registration.
Fredco
recounted that its predecessor-in-interest New York
Garments Manufacturing and Export Cp. Inc. first used
the mark ‘Harvard’” for goods under Class 25 on January
2, 1982. It filed an application for trademark
registration on January 24, 1985 for the mark for goods
under Class 25.
The said
application matured into a registration and was later
issued a trademark certificate of registration on
December 12, 1988. The said registration was later
assigned to Romeo Chuateco, a family member of the
family-owned New York Garments Manufacturing and Export
co. Inc.
Believing that is registered for the term 20 years, the
firm spent huge amounts in advertisement and promotion
of the mark, thus, earning a nationwide reputation and
following.
However,
on October 3, 1991, the respondent filed a trademark
application for “Harvard Ve Ri Tas ‘Shield’ Symbol” for
goods under Class 25 which is identical with Fredco’s
‘Harvard’ mark.
Fredco
noted that the respondent filing of said trademark
application was made more than nine years after it
started using the ‘Harvard’ mark on January 2, 1982 and
almost three years after it registered the trademark.
On November 25, 1993, the respondent managed to secure a
Philippine trademark registration for the similar mark.
Fredco
later learned that is registration has been cancelled,
prompting it to file a petition before the BLF-IPO for
the cancellation of the respondent’s trademark
registration. |
