Case Digest (G.R. No. 139465)
Facts:
In Emerald Garment Manufacturing Corporation v. Hon. Court of Appeals, private respondent H.D. Lee Company, Inc., a Delaware corporation, filed on September 18, 1981 with the Bureau of Patents, Trademarks & Technology Transfer (BPTTT) Inter Partes Case No. 1558 seeking cancellation of petitioner’s Supplemental Register Certificate No. SR 5054 for the trademark “STYLISTIC MR. LEE” covering various garments. Petitioner, a Philippine corporation, answered on March 23, 1982, denying confusing similarity. Petitioner’s application to register the mark on the Principal Register was published February 20, 1984 and opposed by H.D. Lee on July 27, 1984 (Inter Partes Case No. 1860). The Director of Patents consolidated both cases on June 21, 1985, and on July 19, 1988, ordered cancellation of petitioner’s mark, applying the test of dominancy because the word “LEE” was deemed the dominant feature. Petitioner appealed to the Court of Appeals and secured a stay of execution on September 23, 1Case Digest (G.R. No. 139465)
Facts:
- Parties and Trademarks
- Private Respondent: H.D. Lee Co., Inc., a Delaware, U.S.A. corporation, owner of the “LEE” family of marks (e.g., “LEE,” “LEE RIDERS,” “LEESURES,” “LEE-LEENS”).
- Petitioner: Emerald Garment Manufacturing Corporation, a Philippine corporation, registrant of “STYLISTIC MR. LEE” on the Supplemental Register (Reg. No. SR 5054), issued 27 October 1980.
- Proceedings Before the Bureau of Patents, Trademarks & Technology Transfer (BPTTT)
- 18 September 1981 – Private respondent filed Inter Partes Case No. 1558 to cancel petitioner’s Supplemental-Register mark for confusing similarity under Sec. 37, R.A. No. 166 and the Paris Convention.
- 23 March 1982 – Petitioner answered, denying confusing similarity and asserting validity of its registration.
- 20 February 1984 – Petitioner applied to register “STYLISTIC MR. LEE” on the Principal Register; 27 July 1984 – Private respondent opposed in Inter Partes Case No. 1860.
- 21 June 1985 – Director of Patents consolidated Cases Nos. 1558 and 1860 for common issues.
- 19 July 1988 – Director of Patents granted cancellation and opposition, finding “LEE” dominant and confusingly similar under the dominancy test.
- 3 August 1988 – Petitioner appealed to the Court of Appeals and moved to stay execution; 23 September 1988 – BPTTT granted stay on limited terms.
- Proceedings in the Court of Appeals and Supreme Court
- 29 November 1990 – Court of Appeals affirmed the Director’s decision, applying the dominancy test and emphasizing the public’s focus on “LEE.”
- 19 December 1990 – Petitioner moved for reconsideration; 17 May 1991 – Court of Appeals denied it for raising new issues (laches, unclean hands) not presented below.
- Petitioner filed this Rule 45 petition, assigning errors on confusing similarity, laches/estoppel, and lack of proof of prior commercial use by private respondent.
Issues:
- Whether the mark “STYLISTIC MR. LEE” is confusingly similar to the private respondent’s “LEE” trademarks.
- Whether petitioner’s equitable defense of estoppel by laches could be raised for the first time on appeal.
- Whether private respondent proved actual prior commercial use of its “LEE” trademark in the Philippines before filing for registration.
Ruling:
- (Subscriber-Only)
Ratio:
- (Subscriber-Only)
Doctrine:
- (Subscriber-Only)