Case Digest (G.R. No. L-53672)
Facts:
Bata Industries, Ltd. v. The Honorable Court of Appeals; Tiburcio S. Evalle, Director of Patents; New Olympian Rubber Products Co., Inc., G.R. No. 53672, May 31, 1982, the Supreme Court Second Division, Abad Santos, J., writing for the Court.In Inter Partes Case No. 654 before the Philippine Patent Office, New Olympian Rubber Products Co., Inc. applied to register the mark BATA for casual rubber shoes, alleging lawful use since July 1, 1970. Bata Industries, Ltd. (a Canadian corporation) opposed registration, asserting ownership of and non-abandonment of the BATA trademark. The parties stipulated that Bata Industries had no license to do business in the Philippines, was not presently selling footwear under the mark in the Philippines, and had no local licensing agreement.
The Philippine Patent Office found that historical sales of Bata shoes in the Philippines had been by Czechoslovakian makers (Gerbec and Hrdina) before World War II and perhaps some Canadian-made shoes until 1948, but that no foreign entity had registered the mark locally and that opposer had, "to all intents and purposes, technically abandoned its trademark BATA in the Philippines." It also found that New Olympian had lawfully used the mark since 1970, invested heavily in advertising, generated the local goodwill, and had copyright registrations reinforcing its claim; the PTO dismissed the opposition and ordered registration in favor of New Olympian.
Bata Industries appealed to the Court of Appeals, which in a decision dated August 9, 1979 (Justice Justiniano P. Cortez, with Justices Serrano and Jimenez concurring) reversed the PTO. New Olympian moved for reconsideration; that motion was denied by the same panel on October 17, 1979. A second motion for reconsideration was later resolved by a different CA panel — a resolution penned by Justice Hugo E. Gutierrez, with Justices Corazon J. Agrava and Rodolfo A. Nocon concurring (Justice Agrava filing a separate opinion) — which set aside the August 9, 1979 judgment and affirmed the Director of Patents.
A petition involving these events reached the Supreme Court; the Supreme Court initially denied the petition on Octo...(Pro-only)
Issues:
- Was there any impropriety in the Court of Appeals’ rehearing and reversal by a different panel of justices that resulted in affirmance of the Director of Patents?
- Did the Director of Patents and the Court of Appeals correctly conclude that Bata Industries had abandoned the BATA mark in the Philippines and that New Olympian had established the right to registratio...(Pro-only)
Ruling:
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Ratio:
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Doctrine:
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