Case Digest (G.R. No. 100098)
Facts:
Emerald Garment Manufacturing Corporation v. Hon. Court of Appeals, Bureau of Patents, Trademarks and Technology Transfer and H.D. Lee Company, Inc., G.R. No. 100098, December 29, 1995, the Supreme Court First Division, Kapunan, J., writing for the Court.On 18 September 1981, H.D. Lee Co., Inc. (private respondent), a Delaware corporation, filed with the Bureau of Patents, Trademarks & Technology Transfer (BPTTT) a petition for cancellation of Supplemental Register No. SR 5054 (issued 27 October 1980) for the mark “STYLISTIC MR. LEE,” registered in the name of Emerald Garment Manufacturing Corporation (petitioner). The cancellation case was docketed as Inter Partes Case No. 1558; H.D. Lee alleged confusing similarity to its prior “LEE” marks and invoked Section 37 of R.A. No. 166 and the Paris Convention.
Petitioner answered (23 March 1982) denying confusing similarity and asserting its registration was valid. Petitioner also applied to register “STYLISTIC MR. LEE” on the Principal Register and caused publication of that application on 20 February 1984; on 27 July 1984 H.D. Lee filed an opposition to that application (Inter Partes Case No. 1860). On motion, the Director of Patents consolidated Cases Nos. 1558 and 1860 (21 June 1985).
On 19 July 1988 the Director of Patents granted H.D. Lee’s petition for cancellation and opposition, finding H.D. Lee to be the prior registrant and applying the dominancy test to conclude that the word “LEE” was the dominant element of petitioner’s label and likely to cause confusion. Petitioner appealed to the Court of Appeals (3 August 1988) and sought a stay from the BPTTT; the BPTTT granted a conditional stay on 23 September 1988 limiting petitioner to disposing of existing stock and prohibiting further production under the challenged mark.
The Court of Appeals, in a decision promulgated 29 November 1990 (CA-G.R. SP No. 15266), affirmed the Director of Patents, applying the dominancy test and concluding that “LEE” was the prominent and distinctive feature that would likely mislead ordinary buyers. Petitioner’s motion for reconsideration was denied by the Court of Appeals on 17 May 1991 for raising new defenses (laches, estoppel, and an assertion that H.D. Lee adopted petitioner’s style) that were not presented before the BPTTT.
Petitioner brought a Rule 45 petition for review on certiorari to the Supreme Court, assigning errors including (a) that H.D. Lee registered a fourth “LEE” mark after the Director’s decision; (b) that the Court of Appeals erred in ruling that estoppel by laches must be raised before the BPTTT; and (c) that H.D. Lee failed to prove commercial use of its “LEE” mark in the Philippines before filing for registration. The Supreme Court considered statutory provisions (e.g., Sec. 19‑A, Sec. 22, Secs. 2 and 2‑A, Sec. 4(e), Sec. 9‑A, Sec. 20, Sec. 21‑A, and the Paris Convention) and relevant precedents including Esso Standard Eastern, Inc. v. Court of Appeals, Del Monte Corporation v. Court of Appeals, Philip Morris, Inc. v. Court of Appeals, and Sterling Products International, Inc. v. Farbenfabriken Bayer Aktiengesellschaft.
The Supreme Court reversed the Director of Patents and the Cou...(Subscriber-Only)
Issues:
- May the defense of laches or estoppel be raised for the first time on appeal or in a motion for reconsideration when it was not presented before the Bureau of Patents, Trademarks & Technology Transfer?
- Was H.D. Lee barred by laches or estoppel from seeking cancellation/opposition given the timing of its filings against petitioner’s registrations?
- Was petitioner’s trademark “STYLISTIC MR. LEE” confusingly similar to H.D. Lee’s earlier “LEE” trademarks such that infringement or cancellation was warranted?
- Did private respondent H.D. Lee establish prior actual commercial use of its “LEE” trademark in the Philippines suf...(Subscriber-Only)
Ruling:
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Ratio:
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Doctrine:
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