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FREDCO MANUFACTURING CORPORATION v. PRESIDENT

FACTS:

Petitioner Fredco Manufacturing Corporation (Fredco) filed a Petition for Cancellation of Registration No. 56561 before the Intellectual Property Office (IPO) against respondent Harvard University. Fredco alleged that it had registered the mark "Harvard" for clothing articles in the Philippines in 1985, while Harvard University claimed that it is the lawful owner of the name and mark "Harvard" in numerous countries, including the Philippines. Harvard University alleged that it discovered Fredco's website advertising and promoting the brand name "Harvard Jeans USA" without its consent, and filed an administrative complaint for trademark infringement and unfair competition. Harvard University presented various certificates of trademark registration in the Philippines for the mark "Harvard" for different goods and services.

Harvard University's registration of the mark "Harvard" under Class 25 was cancelled by the Bureau of Legal Affairs, IPO. The cancellation only applied to goods falling under Class 25, while the registration for goods falling under Classes 16, 18, 21, and 28 were allowed to remain. Harvard University appealed the decision before the Office of the Director General of the IPO, which reversed the decision and reinstated the trademark registration.

Fredco, the company using the mark "Harvard", filed a petition for review before the Court of Appeals, challenging the decision of the Director General. The Court of Appeals affirmed the decision of the Director General, ruling that Harvard University had prior appropriation and use of the marks "Harvard" and "Harvard Veritas Shield Symbol" in Class 25. Fredco's motion for reconsideration was denied, prompting them to file a petition before the Supreme Court.

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 in 1982. New York Garments filed an application to register the mark in 1985, which was approved in 1988.

Under Republic Act 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. While Harvard University had prior use of its marks abroad, it did not have actual prior use of the mark "Harvard Veritas Shield Symbol" in the Philippines. However, Harvard University's registration of the name "Harvard" is based on home registration, which is allowed under the law.

Additionally, under Republic Act No. 8293, marks registered under Republic Act No. 166 shall remain in force. Fredco's registration was already cancelled when it failed to file the required affidavit of use/non-use for the fifth anniversary of the mark's registration.

Furthermore, Fredco's registration of the mark "Harvard" falsely suggests a connection with Harvard University. This violates Section 4(a) of Republic Act No. 166, which prohibits the registration of a mark that may disparage or falsely suggest a connection with persons or institutions.

ISSUES:

  1. Whether the Court of Appeals committed a reversible error in affirming the decision of the Office of the Director General of the IPO.

RULING:

  1. The petition has no merit. The mark "Harvard" is a well-known mark, internationally and in the Philippines, and is protected under both the Paris Convention and Philippine law (R.A. No. 166 and R.A. No. 8293). The registration of the mark "Harvard" by Fredco was correctly canceled because it falsely suggested a connection with Harvard University and violated Section 4(a) of R.A. No. 166. Furthermore, Harvard University’s registration in the Philippines is valid through home registration under the Paris Convention, and no actual prior use in the Philippines is necessary.

PRINCIPLES:

  1. Well-Known Marks Protection: Marks that are well-known internationally and in the Philippines are protected under Article 6bis and Article 8 of the Paris Convention and Philippine law, even without registration in the Philippines.

  2. False Suggestion of Connection: Section 4(a) of R.A. No. 166 prohibits the registration of marks that may disparage or falsely suggest a connection with persons, institutions, or beliefs.

  3. Home Registration Principle: Foreign marks registered in their home countries (Paris Convention member countries) can be registered in the Philippines without actual prior use in the Philippines (Section 37 of R.A. No. 166).

  4. Cancellation on Grounds of False Connection: Any mark found to create a false connection with a well-known institution or person is ground for cancellation of registration.

  5. Trademark Use Requirements: While local laws may require prior use in commerce before registration, treaties like the Paris Convention allow for exceptions, especially concerning well-known marks.

  6. Uniform Protection Obligations: Signatory states to the Paris Convention must afford similar protections against intellectual property rights violations to nationals of other member states.