8. Fredco Manufacturing Corporation v. President and Fellows of Harvard CollegeG.R. No 185917, June 11, 2011

Fredco Manufacturing Corporation filed before the Bureau of Legal Affairs of the Philippine Intellectual Property Office a Petition for Cancellation of Registration No. 56561 issued to President and Fellows of Harvard College for the mark Harvard Veritas Shield Symbol.

Fredco claimed that Harvard University had no right to register the mark, since its Philippine registration was based on a foreign registration. Hence,Harvard University could not have been considered as a prior user of the mark in the Philippines.

Fredco explained that the mark was first used in the Philippines by its predecessor-in-interest New York Garments as early as 1982, and a certificate of registration was then issued in 1988 for goods under class 25. Although the registration was cancelled for the non-filing of an affidavit of use, the fact remained that the registration preceded Harvard Universitys use of the subject mark in the Philippines.

Harvard University, on the other hand claimed that the name and mark Harvard was adopted in 1639 as the name of Harvard College of Cambridge, Massachusetts, USA.

The Bureau of Legal Affairs ruled in favor of Fredco and ordered the cancellation of Registration No. 56561. It found Fredco to be the prior user and adopter of the mark Harvard in the Philippines. On appeal, the Office of the Director General of the Intellectual Property Office reversed the BLA ruling on the ground that more than the use of the trademark in the Philippines, the applicant must be the owner of the mark sought to be registered. Fredco, not being the owner of the mark, had no right to register it.

The Court Appeals affirmed the decision of the Office of the Director General. Fredco appealed the decision with the Supreme Court. In its appeal, Fredco insisted that the date of actual use in the Philippines should prevail on the issue of who had a better right to the mark.

The SC held that:

Under Section 2 of Republic Act No. 166, 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. As pointed out by Harvard University in its Comment:

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.

In any event, under Section 239.2 of Republic Act No. 8293 (R.A. No. 8293), "[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.

The Supreme Court further ruled that Harvard University is entitled to protection in the Philippines of its trade name Harvard even without registration of such trade name in the Philippines. It explained:

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.

13. Victorio P. Diaz vs People of the Philippines and Levi Strauss [Phils.], Inc.G.R. No. 180677 February 18, 2003

Facts: Levi Strauss Philippines, Inc. (Levis Philippines) is a licensee of Levis. After receiving information that Diaz was selling counterfeit LEVIS 501 jeans in his tailoring shops in Almanza and Talon, Las Pias City, Levis Philippines hired a private investigation group to verify the information. Surveillance and the purchase of jeans from the tailoring shops of Diaz established that the jeans bought from the tailoring shops of Diaz were counterfeit or imitations of LEVIS 501. Armed with search warrants, NBI agents searched the tailoring shops of Diaz and seized several fake LEVIS 501 jeans from them. Levis Philippines claimed that it did not authorize the making and selling of the seized jeans; that each of the jeans were mere imitations of genuine LEVIS 501 jeans by each of them bearing the registered trademarks, like the arcuate design, the tab, and the leather patch; and that the seized jeans could be mistaken for original LEVIS 501 jeans due to the placement of the arcuate, tab, and two-horse leather patch.

On his part, Diaz admitted being the owner of the shops searched, but he denied any criminal liability. Diaz stated that he did not manufacture Levis jeans, and that he used the label LS Jeans Tailoring in the jeans that he made and sold; that the label LS Jeans Tailoring was registered with the Intellectual Property Office; that his shops received clothes for sewing or repair; that his shops offered made-to-order jeans, whose styles or designs were done in accordance with instructions of the customers; that since the time his shops began operating in 1992, he had received no notice or warning regarding his operations; that the jeans he produced were easily recognizable because the label LS Jeans Tailoring, and the names of the customers were placed inside the pockets, and each of the jeans had an LSJT red tab; that LS stood for Latest Style; and that the leather patch on his jeans had two buffaloes, not two horses.

Issue: Whether there exists a likelihood of confusion between the trademarks of Levis and Diaz.

Held: The Court held, through the application of the holistic test, that there was no likelihood of confusion between the trademarks involved. Accordingly, the jeans trademarks of Levis Philippines and Diaz must be considered as a whole in determining the likelihood of confusion between them. The maongpants or jeans made and sold by Levis Philippines, which included LEVIS 501, were very popular in the Philippines. The consuming public knew that the original LEVIS 501 jeans were under a foreign brand and quite expensive. Such jeans could be purchased only in malls or boutiques as ready-to-wear items, and were not available in tailoring shops like those of Diazs as well as not acquired on a made-to-order basis. Under the circumstances, the consuming public could easily discern if the jeans were original or fake LEVIS 501, or were manufactured by other brands of jeans.Diaz used the trademark LS JEANS TAILORING for the jeans he produced and sold in his tailoring shops. His trademark was visually and aurally different from the trademark LEVI STRAUSS & CO appearing on the patch of original jeans under the trademark LEVIS 501. The word LS could not be confused as a derivative from LEVI STRAUSS by virtue of the LS being connected to the word TAILORING, thereby openly suggesting that the jeans bearing the trademark LS JEANS TAILORINGcame or were bought from the tailoring shops of Diaz, not from the malls or boutiques selling original LEVIS 501 jeans to the consuming public.

The prosecution also alleged that the accused copied the two horse design of the petitioner-private complainant but the evidence will show that there was no such design in the seized jeans. Instead, what is shown is buffalo design. Again, a horse and a buffalo are two different animals which an ordinary customer can easily distinguish. The prosecution further alleged that the red tab was copied by the accused. However, evidence will show that the red tab used by the private complainant indicates the word LEVIS while that of the accused indicates the letters LSJT which means LS JEANS TAILORING. Again, even an ordinary customer can distinguish the word LEVIS from the letters LSJT.

In terms of classes of customers and channels of trade, the jeans products of the private complainant and the accused cater to different classes of customers and flow through the different channels of trade. The customers of the private complainant are mall goers belonging to class A and B market group while that of the accused are those who belong to class D and E market who can only afford Php 300 for a pair of made-to-order pants.