G.R. No. 210693 - Emerald Garment Manufacturing Corp. vs. The H.D. Lee Co., Inc.

H.D. Lee filed an application for the registration of the trademark “LEE & OGIVE CURVE DESIGN” before the Intellectual Property Office (IPO) on December 21, 2001, claiming its initial use in the Philippines on October 31, 1996.
The application, categorized under Class 25 for outer clothing (including jeans, trousers, shorts, jackets, and other apparel), was accompanied by a Declaration of Actual Use within three years of filing.
The application was eventually published in the Intellectual Property Philippines’ Electronic Gazette for Trademarks on January 5, 2007.

Emerald Garment Manufacturing Corporation opposed H.D. Lee’s trademark application on the ground that its own marks – “DOUBLE REVERSIBLE WAVE LINE” used since October 1, 1973 and “DOUBLE CURVE LINES” used since January 8, 1980 – were already well established in the market.
Emerald contended that the approval of H.D. Lee’s application would violate its exclusive rights and contravene Section 123.1(d) of Republic Act No. 8293, as the marks were confusingly similar, especially given the identical nature of the goods on which they were used.

On February 27, 2009, the then Director of the Bureau of Legal Affairs, Atty. Estrellita Beltran Abelardo, denied H.D. Lee’s application after noting that:

H.D. Lee failed to prove prior use or ownership of “LEE & OGIVE CURVE DESIGN” in the Philippines.
Evidence showed that Emerald’s trademark applications (for “DOUBLE REVERSIBLE WAVE LINE” and “DOUBLE CURVE LINES”) preceded H.D. Lee’s filing and were supported by continuous commercial use.

The denial emphasized that trademark ownership is grounded in actual use in commerce, with registration being a recognition of that pre-existent right.

On August 10, 2012, DG Blancaflor reversed Atty. Abelardo’s rejection of H.D. Lee’s application by asserting that:

H.D. Lee had demonstrated substantial evidence of being the owner of “LEE & OGIVE CURVE DESIGN” based on registrations and applications in 115 countries, including a certificate reportedly issued in the USA on April 10, 1984.
Advertising activities and sales invoices were submitted to prove use, and the international reputation of the mark was asserted.

The Director General’s decision noted that the mere existence of Emerald’s pending trademark applications and earlier registrations did not automatically preclude H.D. Lee’s registration given the international evidence adduced.

The Court of Appeals (CA) reversed the IPO’s prior decision on April 8, 2013 and subsequently issued a Resolution on January 6, 2014, setting aside the approval of H.D. Lee’s trademark application.
The CA’s judgment was based on factors including:

The chronological evidence of trademark use by both parties.
The registration history, wherein Emerald’s marks were registered earlier and shown to have been in continuous commercial use.
The notion that a mark is entitled to protection when it is well known both locally and internationally even without local registration.

Emerald’s further petitions, relying on prior final and executory decisions (notably in G.R. No. 195415 and Inter Partes Case No. 3498), emphasized that the issues relating to confusing similarity and prior use had been conclusively resolved.

Emerald argued that the issues of prior use and confusing similarity were already decided with finality and should preclude H.D. Lee from further pursuing registration of “LEE & OGIVE CURVE DESIGN.”
H.D. Lee maintained its stance as the earlier user and owner of the mark, citing international registration efforts and advertising evidence, though it failed to produce certain authenticated documents.
The appellate review involved an analysis of whether the principle of the conclusiveness of judgment (res judicata) applied, given the earlier decisions on related marks and the repeated issues regarding confusing similarity.
After reiterations by both parties and a motion for reconsideration by Emerald, the instant petition was reinstated on November 28, 2016 to fully explore the issues raised.

Whether H.D. Lee met all the procedural and substantive requirements for registration of its mark.
Whether its evidence sufficed to establish its ownership and prior use of the mark, taking into account its alleged first use internationally (in 1946) versus its actual commercial use in the Philippines (starting in 1996).

The degree of similarity between H.D. Lee’s “LEE & OGIVE CURVE DESIGN” and Emerald’s established marks “DOUBLE REVERSIBLE WAVE LINE” and “DOUBLE CURVE LINES.”
Whether the use of similar design elements in the marks creates a likelihood of confusion among consumers regarding the source of the goods.

Whether the final and executory decisions in earlier cases (G.R. No. 195415 and Inter Partes Case No. 3498) should bar the current petition regarding the registration of H.D. Lee’s mark.
The possibility of raising issues about prior registration and conflicting evidence already resolved in earlier proceedings.