G.R. No. 199162 - Phil-Man Marine Agency, Inc. vs. Dedace, Jr.

Petitioner Kabushi Kaisha Isetan (Isetan Co., Ltd.) is a Japanese corporation owning the trademarks “Isetan” and “Young Leaves Design,” first used in 1936 and registered in Japan covering over 34 classes of goods.
Petitioner applied for registration of the said marks in the Philippines on October 3, 1983.
Private respondent Isetann Department Store, Inc. is a Philippine domestic corporation using the name “Isetann” since January 1979 on goods, specifically shirts, and registered the trade name and trademark with the Philippine Patent Office in 1980.
Isetann claimed the suffix “Tann” signifies “altar” in Chinese culture and harmonizes with their corporate logo symbolizing an offering to the Supreme Being.

On November 28, 1980, petitioner filed petitions to cancel Isetann’s registrations (Certificates of Supplemental Registration Nos. SR-4714 and SR-4701), alleging infringement as the marks were substantially identical except for an added letter “N.”
Petitioner claimed illegal and immoral intention by respondent to capitalize on petitioner’s goodwill and reputation, arguing likelihood of confusion due to identical goods moving through similar trade channels.
Petitioner invoked the Paris Convention for Protection of Industrial Property and stressed that trademarks of nationals of member countries (Japan and the Philippines) entitle protection.

Petitioner also filed a petition before the Securities and Exchange Commission (SEC) to cancel “Isetann” as a corporate name. Initially denied by SEC Hearing Officer, the Commission reversed the ruling on appeal but then reversed itself in 1987, dismissing the cancellation petition due to lack of reputation and use in commerce in the Philippines by petitioner.
The SEC decision was submitted as evidence by respondent in the Philippine Patent Office proceedings.

On January 24, 1986, the Director of Patents dismissed petitioner’s cancellation petitions, ruling that petitioner failed to show use of the trademark in commerce in the Philippines and thus failed to establish prior ownership rights.
Petitioner moved for reconsideration, which was denied.
Petitioner appealed to the Intermediate Appellate Court (IAC), which dismissed the appeal on June 2, 1986, citing late filing. A motion for reconsideration was also denied.
Petitioner filed a petition for review with the Supreme Court, which was initially dismissed for lateness but then given due course on motion for reconsideration to examine merits.

Petitioner was not licensed or doing business in the Philippines.
Petitioner’s trademark was unregistered under Philippine law before the cases, and had not been used in commerce in the Philippines.

Petitioner admitted no promotional activities had been conducted in the Philippines since it had no local business operations; advertising took place only abroad.
Respondent had conducted extensive promotion and advertising, establishing goodwill in the Philippines associated with the “Isetann” name.

Whether petitioner’s appeal from the Director of Patents’ decision was timely filed, and whether failure to observe the appeal period divests the courts of jurisdiction.
Whether petitioner acquired ownership or exclusive rights over the trademark “Isetan” and “Young Leaves Design” in the Philippines without actual use in commerce within the country.
Whether the adoption and prior registration of a trademark abroad suffices to claim exclusive rights in the Philippines under Philippine Trademark Law and the Paris Convention.
Whether the similarity between the petitioner’s “Isetan” and respondent’s “Isetann” marks causes infringement and damages petitioner’s goodwill.
Whether petitioner’s rights as foreign national are protected under Philippine law and applicable treaties absent actual use in the Philippine market.