Case Digest (G.R. No. 185830) Core Legal Reasoning Model
Core Legal Reasoning Model
Facts:
In Ecole de Cuisine Manille (Cordon Bleu of the Philippines), Inc. v. Renaud Cointreau & Cie and Le Cordon Bleu Int’l, B.V., Renaud Cointreau & Cie (a French partnership) filed on June 21, 1990 before the Bureau of Patents, Trademarks, and Technology Transfer (BPTTT) its application to register the mark “LE CORDON BLEU & Device” for goods under various classes of the Nice Classification, based on its French Home Registration No. 1,390,912 of November 25, 1986. The application was published for opposition in 1993. On July 23, 1993, Ecole de Cuisine Manille, Inc. (Ecole) opposed, claiming prior use of the mark in the Philippines since 1948 and asserting ownership and goodwill in its culinary and restaurant services. Cointreau answered, averring worldwide use since 1895 and arguing that Ecole’s claim was fraudulent. In July 2006, the Intellectual Property Office’s Bureau of Legal Affairs (BLA) sustained Ecole’s opposition for lack of proof of Cointreau’s prior Philippine use. Coint... Case Digest (G.R. No. 185830) Expanded Legal Reasoning Model
Expanded Legal Reasoning Model
Facts:
- Application for Registration
- On June 21, 1990, Renaud Cointreau & Cie (Cointreau), a French partnership, filed before the Bureau of Patents, Trademarks, and Technology Transfer an application for the mark “LE CORDON BLEU & DEVICE” covering goods under Nice Classes 8, 9, 16, 21, 24, 25, 29, and 30. The application relied on French Home Registration No. 1,390,912 (Nov. 25, 1986) and bore Serial No. 72264.
- The application was published in the BPTTT Gazette (Mar–Apr 1993) and released for circulation on May 31, 1993.
- Opposition and Administrative Proceedings
- On July 23, 1993, petitioner Ecole De Cuisine Manille, Inc. (Ecole) opposed the application, alleging:
- Prior use of the mark “LE CORDON BLEU, ECOLE DE CUISINE MANILLE” since 1948 in its culinary and restaurant business;
- Existence of goodwill and likelihood of confusion if Cointreau were allowed to register the mark.
- Cointreau filed its answer on October 7, 1993, asserting worldwide registrations and use of “LE CORDON BLEU” since 1895 in its Paris culinary school, and characterized Ecole’s claim as fraudulent.
- During the proceedings, Cointreau secured Certificates of Registration Nos. 60631 (“CORDON BLEU & DEVICE”) and 54352 (“LE CORDON BLEU PARIS 1895 & DEVICE”) in the Philippines for Classes 21 and 41, respectively.
- Decisions of Administrative Bodies
- Bureau of Legal Affairs Decision (July 31, 2006):
- Sustained Ecole’s opposition; rejected Cointreau’s application for lack of proof of actual use in Philippine commerce; applied the doctrine of territoriality under R.A. No. 166.
- IPO Director General Decision (April 21, 2008):
- Reversed the BLA; held that ownership under Section 2-A of R.A. No. 166 depends on actual use anywhere (not necessarily in the Philippines);
- Found Cointreau’s undisputed use of the mark since 1895 and concluded Ecole had unjustly appropriated the mark in bad faith.
- Judicial Appeals
- Court of Appeals Decision (Dec 23, 2008):
- Affirmed the IPO Director General in toto; declared Cointreau true and lawful owner of the subject mark under Section 37 of R.A. No. 166;
- Held Ecole’s prior Philippine use ineffective due to bad-faith appropriation and lack of prior registration or notice.
- Supreme Court Review (June 5, 2013):
- Ecole’s petition for review on certiorari under Rule 45;
- Resolved in favor of Cointreau.
Issues:
- Ownership and Registrability
- Whether the Court of Appeals correctly upheld the IPO Director General’s finding that Cointreau is the true and lawful owner of the mark “LE CORDON BLEU & DEVICE.”
- Whether Ecole’s asserted prior use in the Philippines bars Cointreau’s registration under R.A. No. 166.
Ruling:
- (Subscriber-Only)
Ratio:
- (Subscriber-Only)
Doctrine:
- (Subscriber-Only)