Case Digest (G.R. No. 194307)
Facts:
Birkenstock Orthopaedie GmbH and Co. KG v. Philippine Shoe Expo Marketing Corporation, G.R. No. 194307, November 20, 2013, Supreme Court Second Division, Perlas-Bernabe, J., writing for the Court.Petitioner Birkenstock Orthopaedie GmbH & Co. KG (a German corporation) filed three trademark applications with the Intellectual Property Office (IPO): TASN 4-1994-091508 for "BIRKENSTOCK" (Class 25, filed March 11, 1994), TASN 4-1994-091509 for "BIRKENSTOCK BAD HONNEF-RHEIN & device" (Class 25, filed March 11, 1994), and TASN 4-1994-095043 for the same BAD HONNEF-RHEIN device (Class 10, filed September 5, 1994) (collectively, the subject applications). Registration of these applications was initially suspended because Philippine Shoe Expo Marketing Corporation (through its predecessor Shoe Town International and Industrial Corporation) held Registration No. 56334 for "BIRKENSTOCK AND DEVICE" dated October 21, 1993.
Petitioner earlier filed (May 27, 1997) a cancellation case against Registration No. 56334 claiming ownership of the Birkenstock marks. Meanwhile, respondent/predecessor failed to file the required 10th Year Declaration of Actual Use (DAU) on or before October 21, 2004; as a result Registration No. 56334 was cancelled and the pending cancellation case was dismissed as moot. After cancellation, the subject applications were published in the IPO e-Gazette on February 2, 2007.
Respondent filed three oppositions (Inter Partes Case Nos. 14-2007-00108, -00115, and -00116), asserting among other things prior use of the mark in the Philippines (including a claimed copyright for the word BIRKENSTOCK and a re-application TASN 4-2006-010273), and asked the IPO Bureau of Legal Affairs (BLA) to reject petitioner’s applications. The IPO BLA, by Decision No. 2008-102 dated May 28, 2008, consolidated the oppositions and sustained respondent’s opposition, finding confusing similarity, prior use by respondent, and that petitioner’s documentary proofs were inadmissible photocopies.
Petitioner appealed to the IPO Director General, who in a Decision dated December 22, 2009 reversed the BLA and allowed registration, finding petitioner the true and lawful owner and holding that respondents’ copyright claim was irrelevant to trademark ownership. Respondent then sought review with the Court of Appeals (CA). The CA, in a Decision dated June 25, 2010, reversed the IPO Director General and reinstated the BLA, ruling that the marks were confusingly similar and that respondent’s continuous use preserved its ownership despite the cancelled registration; the CA denied petition...(Pro-only)
Issues:
- Were petitioner’s documentary exhibits (photocopies) admissible in the IPO proceedings despite Section 8.1 of the Rules on Inter Partes Proceedings?
- Did petitioner prove ownership of the mark BIRKENSTOCK and thus the right to register it in the Philippines despite respondent’s prior registration that was cancelled for failur...(Pro-only)
Ruling:
- (Pro-only)
Ratio:
- (Pro-only)
Doctrine:
- (Pro-only)