Facts:
- Background and Distribution Relationship
- Cymar International, Inc.
1) Philippine corporation manufacturing, marketing, selling baby products.
2) Began importing FARLIN-branded products in early 1980s under distributor role.
- Farling Industrial Co., Ltd.
1) Taiwanese manufacturer of plastic and baby products since the 1970s.
2) Registered FARLIN mark in Taiwan (since October 1, 1978) and in various foreign countries.
- Distribution Agreement and Operations (c. 1982–1993)
1) Undated agreement: Farling authorized Cymar to import, distribute, promote FARLIN-branded goods in the Philippines.
2) Records of letters of credit, invoices, packing lists, bills of lading (1983–1993) show shipments of nipples, bottles, aspirators, cotton swabs and related infant care articles from Farling to Cymar.
3) Joint marketing efforts: cost-sharing disputes over advertising allowances and promotional materials.
- 1994 Cancellation Case (G.R. No. 177974)
- Farling’s Petitions (June 20, 1994)
1) Sought cancellation of five Cymar trademarks (Nos. 48144, 50483, 54569, 8348, 8328) covering FARLIN and FARLIN LABEL for infant products.
2) Alleged rightful ownership and prior use by Farling (Taiwan registration since 1978), fraud on Cymar’s part, violation of Paris Convention.
1) First user in the Philippines (since 1983); statutory prima facie presumption under R.A. 166; Farling lacked capacity/legal basis; foreign registration not specific/protected.
- Administrative Proceedings
1) BLA-IPO (Dec. 26, 2002): denied cancellation—actual use in Philippine commerce controlled rights; foreign use/registration not recognized without local filing.
2) DG-IPO (Oct. 22, 2003): granted Farling’s appeal—overturned presumption; found Cymar importer/distributor with no right to register; cancelled certificates.
1) CA Decision (July 26, 2005): affirmed DG-IPO—Cymar’s late “Authorization” (May 26, 1988) deemed a waiver of copyright, not trademark rights; bad faith registration.
2) CA Resolution (May 17, 2007): denied reconsideration—“Authorization” not newly discovered; improper change of theory.
3) Cymar’s petition filed with Supreme Court (G.R. No. 177974).
- Opposition Cases and Further Appeals
- 2006 Opposition (G.R. No. 206121)
1) Cymar filed composite mark “FARLIN YOUR BABY IS OUR CONCERN (with logo)” application (Dec. 18, 2002).
2) Farling opposed (Dec. 19, 2006); BLA-IPO (Feb. 28, 2009) and DG-IPO (Apr. 23, 2012) sustained opposition; CA (Mar. 4, 2013) denied review; Supreme Court docketed G.R. No. 206121.
- 2007 Opposition (G.R. No. 219072)
1) Cymar applied for “FARLIN DISPOSABLE BABY DIAPERS (with icon)” (Apr. 23, 2003).
2) Farling opposed (Sept. 4, 2007); BLA-IPO (Feb. 28, 2009) and DG-IPO (Apr. 23, 2012) sustained; CA (June 25, 2015) denied; Supreme Court docketed G.R. No. 219072.
- 2008 Opposition (G.R. No. 228802)
1) Cymar applied for “FARLIN BLUE BUNNY AND BUNNY DEVICE” (Aug. 22, 2007).
2) Farling opposed (Aug. 26, 2008); BLA-IPO (Dec. 22, 2009) and DG-IPO (Sept. 3, 2012) sustained; CA (Oct. 12, 2016) denied; Supreme Court docketed G.R. No. 228802.
- Supreme Court Consolidation and Pleadings
- Cases consolidated (July 24, 2013; Feb. 29, 2016; Apr. 23, 2018).
- Parties filed memoranda on the consolidated petitions.
Issues:
- Forum Shopping and Res Judicata
- Whether the 1994 Cancellation Case bars the subsequent opposition cases.
- Whether Farling committed forum shopping by not disclosing pendency.
- Admissibility and Use of Evidence from 1994 Case
- Validity of photocopies and foreign registrations without strict authentication.
- IPO’s official notice of prior records.
- Clarity of DG-IPO Decision in Second 2009 BLA-IPO Appeal
- Compliance with Article VIII, Section 14, Constitution.
- Recognition of Foreign Use and Registration
- Whether Farling’s foreign rights (Taiwan and elsewhere) confer Philippine rights absent local registration.
- Prior User versus First Registrant Rights
- Under R.A. 166 (prior use) and IPC (first-to-file), who has superior claim.
- Capacity to Sue and Right to Register
- Cymar’s capacity as distributor and alleged waiver.
- Effect of “Authorization” Document
- Whether waiver of copyright transferred trademark rights.
Ruling:
Ratio:
Doctrine: