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ECOLE DE CUISINE MANILLE v. RENAUIL COINTREAU

FACTS:

The petition for review on certiorari involves the dispute over the ownership and registration of the mark "LE CORDON BLEU & DEVICE." Respondent Renaud Cointreau & Cie (Cointreau), a French partnership, filed a trademark application for the subject mark under various classes with the Bureau of Patents, Trademarks, and Technology Transfer (BPTTT). Petitioner Ecole De Cuisine Manille, Inc. (Ecole) opposed the application, claiming to be the owner of the mark "LE CORDON BLEU, ECOLE DE CUISINE MANILLE" since 1948. Cointreau argued that it is the true and lawful owner of the subject mark based on its use and registration in various jurisdictions, including France. The Bureau of Legal Affairs (BLA) of the IPO ruled in favor of Ecole, finding that Cointreau failed to establish prior use of the subject mark in the Philippines and that Ecole's mark has been known and used since 1948. However, the IPO Director General reversed the BLA's decision, granting Cointreau's appeal and allowing the registration of the subject mark. The Court of Appeals (CA) affirmed the IPO Director General's decision, declaring Cointreau as the true owner of the subject mark and entitled to register the same in the Philippines. Ecole filed a petition for review with the Supreme Court.

ISSUES:

  1. Whether Cointreau is the true and lawful owner of the mark "LE CORDON BLEU & DEVICE" and entitled to register the same under its name.

  2. Whether the CA was correct in upholding the IPO Director General's ruling.

RULING:

  1. Yes, Cointreau is the true and lawful owner of the mark "LE CORDON BLEU & DEVICE" and entitled to register the same under its name. The IPO Director General reversed and set aside the Bureau of Legal Affairs (BLA)'s decision and granted Cointreau's appeal. The IPO Director General held that while actual use of the mark in commerce in the Philippines is required, only the owner has the right to register it. Cointreau's use of the mark since 1895 for its culinary school in Paris, France, and its undisputed use of the mark established its ownership. On the other hand, Ecole failed to explain how it came up with the same name and mark.

  2. Yes, the CA was correct in upholding the IPO Director General's ruling. The CA affirmed that Cointreau is the true and actual owner of the subject mark with the right to register it in the Philippines. The CA also held that Ecole's prior use of the mark does not bar Cointreau's right to register it because Ecole's appropriation of the mark was done in bad faith and it had no certificate of registration. Ecole's application for trademark registration for the same mark was still pending at the IPO.

PRINCIPLES:

  • The adoption and use of a trademark must be in commerce in the Philippines and not abroad.

  • The law on trademarks rests upon the doctrine of nationality or territoriality.

  • Only the owner of a mark has the right to register it, regardless of actual use in commerce.

  • Prior use of a mark does not bar the right to register it if the appropriation was done in bad faith and there is no certificate of registration.