G.R. No. L-53672 - Bata Industries, Ltd. vs. Court of Appeals

On October 27, 1980, the petition in this case was denied for lack of merit.
A motion for reconsideration was subsequently filed, with a hearing held on June 7, 1982.
The case stemmed from an Inter Partes proceeding (Case No. 654) before the Philippine Patent Office regarding the registration of the trademark BATA.

A Canadian corporation claiming prior right to the trademark BATA based on historical use.
Asserted that it owned the trademark and had not abandoned its rights despite not being licensed to do business in the Philippines.
Claimed that, although it had sold footwear under the trademark in the Philippines in the past, it was not currently active in this market as it had no local licensing agreement.

A domestic corporation that sought registration of the mark BATA for casual rubber shoes.
Asserted its right to the trademark based on lawful and continuous use since July 1, 1970.
Demonstrated that it had expended considerable funds and efforts in popularizing the trademark through advertising, creating significant goodwill in the Philippine market.

Testimonies and documentary evidence revealed that Bata shoes manufactured by Gerbec and Hrdina of Czechoslovakia were sold in the Philippines before World War II.
Some footwear made by Bata of Canada was available in the Philippines until 1948.
Despite such sales history, there was no registration of the trademark BATA by any foreign entity in the Philippines.

Bata Industries, Ltd. had no license to conduct business in the Philippines.
It was not actively selling footwear under the trademark BATA in the country.
There was no existing local licensing agreement with an entity or firm to market its products in the Philippines.

The Philippine Patent Office found that, due to the lack of registration and current use, Bata Industries, Ltd. had effectively abandoned its trademark in the Philippines.
The Office ruled in favor of New Olympian Rubber Products Co., Inc., granting registration based on overwhelming evidence of its continuous use, substantial advertising campaigns, and the resultant goodwill.
Bata Industries, Ltd. appealed the decision to the Court of Appeals, where an initial decision by a division of three justices reversed the Patent Office ruling.
A motion for reconsideration was filed by the respondent, and a subsequent resolution by a new set of justices (Justice Hugo E. Gutierrez with Justices Corazon J. Agrava and Rodolfo A. Nocon) set aside the reversal, thereby affirming the director’s decision and upholding the registration.

Bata Industries, Ltd. questioned the appropriateness of having a new set of justices render a different perspective upon reconsideration.
The Court clarified that reconsideration by different justices is permissible and can offer a fresh, unbiased evaluation without being encumbered by previous opinions.

Whether the opposer, Bata Industries, Ltd., had effectively abandoned its trademark BATA in the Philippines due to its non-use and lack of registration in the local market.
Whether historical sales and earlier usage by foreign entities were sufficient to sustain its claim to the trademark.

Whether New Olympian Rubber Products Co., Inc. had overwhelmingly and convincingly established its right to the trademark through continuous use, significant advertising expenditure, and the creation of substantial goodwill in the Philippines.
The significance of securing copyright registrations to fortify the domestic applicant’s claim.

Whether the issuance of a new decision by a different set of justices in the motion for reconsideration had any impact on the validity of the previous rulings.
The legitimacy of the reconsideration process in light of the changes in the panel of justices and the fresh perspectives they provided.