Case Digest (G.R. No. L-27906) Core Legal Reasoning Model
Core Legal Reasoning Model
Facts:
In Converse Rubber Corporation vs. Universal Rubber Products, Inc. and Tiburcio S. Evalle, Director of Patents (G.R. No. L-27906, January 8, 1987), Universal Rubber Products, Inc. applied to register the trademark “UNIVERSAL CONVERSE AND DEVICE” for rubber shoes and slippers with the Philippine Patent Office. Converse Rubber Corporation, organized under Massachusetts law since July 31, 1946, filed opposition on the ground that the mark’s dominant word “CONVERSE” is confusingly similar to the petitioner’s corporate name and would deceive purchasers into believing the goods originated from Converse, thus injuring its goodwill under Section 8, R.A. No. 166, as amended. At pretrial, the parties stipulated that petitioner is not licensed or doing business in the Philippines and that it manufactures rubber shoes under the trademarks “CHUCK TAYLOR” and “ALL STAR AND DEVICE.” Petitioner presented a licensed merchant witness who testified to selling twelve to twenty pairs monthly of Conv Case Digest (G.R. No. L-27906) Expanded Legal Reasoning Model
Expanded Legal Reasoning Model
Facts:
- Parties
- Petitioner: Converse Rubber Corporation, a Massachusetts corporation organized July 31, 1946, manufacturing rubber shoes under the marks “CHUCK TAYLOR” and “ALL STAR AND DEVICE.”
- Respondents: Universal Rubber Products, Inc. (applicant for the mark) and Tiburcio S. Evalle, Director of Patents.
- Application and Opposition
- Universal Rubber filed for registration of the trademark “UNIVERSAL CONVERSE AND DEVICE” for rubber shoes and slippers.
- Converse Rubber opposed, alleging confusing similarity to “CONVERSE” in its corporate name, likely deception of the public, injury to petitioner’s reputation and goodwill under Sec. 8, R.A. No. 166.
- Stipulated and Trial Facts
- Stipulations:
- Converse Rubber is not licensed or doing business in the Philippines, uses only “CHUCK TAYLOR” and “ALL STAR AND DEVICE” on its products.
- Despite no local franchise, Converse goods enter the Philippines through independent traders.
- Petitioner’s witness (Mrs. Carmen Pacquing):
- Has sold “CONVERSE” rubber shoes since 1956, averaging 12–20 pairs monthly to basketball players.
- Invoiced sales as “Converse Chuck Taylor,” “Converse All Star,” etc.; no business tie to Converse Rubber.
- Respondent’s witness (corporate secretary):
- Wholesale sales of “Universal Converse” sandals since 1962 and shoes since 1963; invoices offered.
- No knowledge why “CONVERSE” was chosen or of Converse Rubber prior to adoption of the mark.
- Director of Patents Decision
- Dismissed opposition: held petitioner failed to prove “CONVERSE” in its corporate name had acquired secondary meaning in the Philippines; sales were insignificant and indirect; petitioner not licensed locally; no specimen labels shown; no likelihood of confusion.
- Denial of reconsideration prompted Supreme Court review.
Issues:
- Whether respondent’s appropriation of the dominant part of petitioner’s corporate name (“CONVERSE”) in its trademark is of such character as to deceive or confuse the public to petitioner’s injury.
- Whether a foreign corporation not licensed to do business in the Philippines but whose products enter the market may invoke trade-name or trademark protection.
Ruling:
- (Subscriber-Only)
Ratio:
- (Subscriber-Only)
Doctrine:
- (Subscriber-Only)