Case Digest (G.R. No. 194307)
Facts:
In Birkenstock Orthopaedie GmbH and Co. KG v. Philippine Shoe Expo Marketing Corporation (G.R. No. 194307, November 20, 2013; decision August 18, 2014), petitioner, a German corporation, filed three trademark applications with the Intellectual Property Office (IPO) in 1994 for the mark BIRKENSTOCK and two composite devices under Nice Classes 25 and 10. Registration was initially suspended because respondent Philippine Shoe Expo’s predecessor, Shoe Town International, owned Registration No. 56334 for BIRKENSTOCK AND DEVICE since October 21, 1993. In May 1997, petitioner sought cancellation of Registration 56334, but this became moot after respondent failed to submit its tenth-year Declaration of Actual Use (DAU) by October 21, 2004, triggering automatic cancellation under Republic Act No. 166. Consequently, petitioner’s applications were published in February 2007, whereupon respondent opposed all three on grounds of prior use, confusing similarity, and its own copyright registraCase Digest (G.R. No. 194307)
Facts:
- Parties and Mark Applications
- Petitioner Birkenstock Orthopaedie GmbH & Co. KG, a German corporation, filed three trademark applications before the IPO:
- “BIRKENSTOCK” (TASN 4-1994-091508) for Class 25 goods, filed March 11, 1994
- “BIRKENSTOCK BAD HONNEF-RHEIN & DEVICE” (TASN 4-1994-091509) for Class 25 goods, filed March 11, 1994
- “BIRKENSTOCK BAD HONNEF-RHEIN & DEVICE” (TASN 4-1994-095043) for Class 10 goods, filed September 5, 1994
- Registration proceedings were suspended due to an existing Registration No. 56334 (BIRKENSTOCK AND DEVICE) owned by Shoe Town International & Industrial Corp., predecessor of respondent Philippine Shoe Expo Marketing Corp.
- Cancellation and Opposition Proceedings
- Petitioner filed a petition to cancel Registration No. 56334 on May 27, 1997. During pendency, respondent failed to file the 10th-Year Declaration of Actual Use (DAU) by October 21, 2004, resulting in automatic cancellation. The cancellation petition was dismissed as moot.
- The subject applications were published on February 2, 2007. Respondent filed three oppositions (Inter Partes Cases Nos. 14-2007-00108, 00115, and 00116), alleging prior use, confusing similarity, and a 1991 copyright registration for “BIRKENSTOCK.”
- IPO Bureau of Legal Affairs (BLA) Decision (May 28, 2008) sustained oppositions, rejecting petitioner’s applications for confusing similarity and lack of evidence of actual use by petitioner.
- IPO Director General Decision (December 22, 2009) reversed the BLA, allowed registrations, and recognized petitioner as true and prior owner, noting respondent’s copyright claim irrelevant.
- Court of Appeals Decision (June 25, 2010) reinstated the BLA, disallowed registrations for confusing similarity, upheld respondent’s prior use despite non-filing of DAU, and barred petitioner’s photocopied evidence. Motion for Reconsideration denied October 27, 2010. Petitioner elevated the case to the Supreme Court.
Issues:
- Whether the IPO Director General properly admitted petitioner’s photocopied documentary evidence despite Section 8.1 of the Rules on Inter Partes Proceedings.
- Whether petitioner is the true and lawful owner and entitled to registration of the “BIRKENSTOCK” marks, considering respondent’s prior registration and use.
Ruling:
- (Subscriber-Only)
Ratio:
- (Subscriber-Only)
Doctrine:
- (Subscriber-Only)