Case Digest (G.R. No. L-27906)
Facts:
Converse Rubber Corporation v. Universal Rubber Products, Inc. and Tiburcio S. Evalle, G.R. No. L-27906, January 08, 1987, Supreme Court Second Division, Fernan, J., writing for the Court.Petitioner Converse Rubber Corporation (a Massachusetts corporation) sought to prevent registration by respondent Universal Rubber Products, Inc. of the mark “UNIVERSAL CONVERSE AND DEVICE” for rubber shoes and slippers. The Director of Patents, Tiburcio S. Evalle, dismissed petitioner’s opposition and, on reconsideration, denied petitioner relief; petitioner thereafter instituted the instant petition for review with the Court.
At the administrative opposition, the parties stipulated that petitioner had existed since July 31, 1946, manufactured rubber shoes, used the trademarks “CHUCK TAYLOR” and “ALL STAR AND DEVICE”, was not licensed to do business in the Philippines and was not itself doing business there. Petitioner’s lone witness, a retail merchant, testified she had sold “Converse” shoes in the Philippines since 1956 (12–20 pairs a month) and produced invoices bearing descriptions such as “Converse Chuck Taylor” and “Converse All Star.” She also testified she had no business connections with petitioner and identified the shoes as coming from the United States.
Respondent’s witness (its corporate secretary) testified that respondent sold goods under the “Universal Converse” mark since 1962–1963, presented wholesale invoices, and professed ignorance of why the corporation chose the word “Converse” or of petitioner’s existence prior to respondent’s use.
The Director of Patents found petitioner’s proof insufficient: the Director emphasized petitioner’s lack of business license and actual operations in the Philippines, characterized sales evidence as limited to a single witness, and concluded there was no showing that the single word “CONVERSE” in petitioner’s ...(Pro-only)
Issues:
- May a foreign corporation that is not licensed and not doing business in the Philippines maintain and prevail in an action to protect its corporate name/tradename against registration of a confusingly similar mark by a local registrant?
- Did respondent’s adoption of the mark “UNIVERSAL CONVERSE AND DEVICE” create a likelihood of confusion and, on the record of prior sales and use,...(Pro-only)
Ruling:
- (Pro-only)
Ratio:
- (Pro-only)
Doctrine:
- (Pro-only)