Case Digest (G.R. No. 75420)
Facts:
Kabushi Kaisha Isetan, Also Known and Trading as Isetan Co., Ltd. v. The Intermediate Appellate Court, The Director of Patents, and Isetann Department Store, Inc., G.R. No. 75420, November 15, 1991, Special Former Second Division, Gutierrez, Jr., J., writing for the Court.Petitioner Kabushi Kaisha Isetan is a Japanese corporation that owns the trademark “Isetan” and a “Young Leaves Design,” claiming first use in 1936 and registration in Japan covering many classes of goods. Private respondent Isetann Department Store, Inc. is a Philippine corporation which registered the corporate name “Isetann Department Store, Inc.” and a mark “Isetann and Flower Design” in May 1980 (SR Nos. 4701 and 4714) and used the name in commerce in the Philippines beginning in 1979.
On November 28, 1980, petitioner filed two petitions for cancellation (Inter Partes Cases Nos. 1460 and 1461) in the Philippine Patent Office, alleging confusing similarity between its marks and the respondent’s registrations and invoking the Paris Convention. Petitioner also filed with the Securities and Exchange Commission a separate petition to cancel the corporate name registration (SEC Case No. 2051). The SEC Hearing Officer denied cancellation on May 17, 1985; on appeal the SEC Commission reversed on February 25, 1986 (ordering amendment of articles), but on further reconsideration the Commission on September 10, 1987 reinstated the Hearing Officer’s denial, concluding the petitioner’s mark lacked reputation or goodwill in the Philippines.
On January 24, 1986 the Director of Patents dismissed Inter Partes Cases Nos. 1460 and 1461, holding petitioner failed to prove use of the mark in the Philippines; petitioner’s motion for reconsideration was denied April 2, 1986. Petitioner appealed to the Intermediate Appellate Court (IAC, now Court of Appeals), but the IAC dismissed the appeal on June 2, 1986 for late filing; the IAC denied reconsideration on July 11, 1986.
Petitioner filed a petition for review on certiorari with the Supreme Court (Rule 45). The Court initially dismissed the petition as filed fourteen days late (resolution dated July 8, 1987), but on petitioner’s motion for reconsideration the Court afforded due course to the petition on equitable grounds (resolution dated May 1...(Subscriber-Only)
Issues:
- Procedural: Whether the Supreme Court should entertain the petition for review despite the petitioner’s late filing (i.e., whether equitable considerations justify relaxing the reglementary periods).
- Substantive: Whether petitioner is entitled to cancellation of respondent’s registrations/tradename in the Philippines based on prior foreign use/registration and the Paris Convention (i.e., whether petitioner had an ownership r...(Subscriber-Only)
Ruling:
- (Subscriber-Only)
Ratio:
- (Subscriber-Only)
Doctrine:
- (Subscriber-Only)