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Manage your Intellectual Property in South-East Asia

Case Study 10 – Unjust Appropriation of Famous Trade Mark by Local Firm in the Philippines

Background

A famous French culinary school tried to register its 1895 trade mark LE CORDON BLEU in the Philippines but it was opposed by a local entity which was owned by one of the graduates of the same school. The graduate started using the same mark in the Philippines long before the French school tried to register but never applied for trade mark registration. The local entity argued that it was the first to use the mark in the Philippines, thus it should be entitled to register the mark ahead of the French school. Subsequent to filing the opposition, the local entity filed its own trade mark application covering the same mark.

Action

Initially, the Bureau of Legal Affairs of the Intellectual Property Office of the Philippines rejected the French school’s application on the grounds that there was not sufficient evidence to establish their prior use of the mark in the Philippines. It further stated that adoption and use of the trade mark must be in Philippine commerce and not abroad. 

However, this decision was reversed by the Director General of the IPOPHIL, who held that the old Trademark Law did not require actual use in the Philippines in order to acquire ownership of the mark. The IPOPHIL Director General considered the earlier use of the mark outside the Philippines, and noted that the local entity failed to explain how it came up with the mark. For these reasons, the IPOPHIL Director General concluded that the local entity had unjustly appropriated the mark.

The decision of the IPOPHIL Director General was affirmed by the Court of Appeals and the Supreme Court.

Outcome

In denying the opposition, the Supreme Court explained that only the owner of a mark has the right to register the mark, and a prior user of the mark in the Philippines does not necessarily mean the user is the owner. A prior user of a mark in commerce can prove ownership only when the mark has not been validly appropriated by another. In this case, the Supreme Court noted that the French school had been using the subject mark in France well before the local entity started using it in the Philippines. The Court also noted that the Philippines and France are both signatories to the Paris Convention for the Protection of Industrial Property. Thus, the French school’s mark, even if not registered in the Philippines, was also afforded protection against infringement and/or unfair competition. The Court found that prior use of the mark in France effectively barred its subsequent registration by another party in the Philippines. That being the case, even if the local entity was the first to use the mark in the Philippines, it could not be said to have legally appropriated the mark, and hence was not entitled to registration.

IP Lessons Learned

• Protect your trade mark through registration.

• A famous mark will be granted registration even if there is a prior user in the country because ‘bad-faith’ use is not a right.

• This case is significant because it clarifies that prior use of a mark in the Philippines does not guarantee registration.

 

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