Title
La Chemise Lacoste, S.A. vs. Ferdez
Case
G.R. No. 63796-97
Decision Date
May 21, 1984
La Chemise Lacoste, a French corporation, contested the quashing of search warrants against Hemandas for selling counterfeit Lacoste products. The Supreme Court ruled in favor of Lacoste, reinstating the warrants, affirming its right to sue, and upholding trademark protection under the Paris Convention.

Case Digest (G.R. No. 63796-97)
Expanded Legal Reasoning Model

Facts:

  • Parties and Trademarks
    • Petitioner La Chemise Lacoste, S.A.: a French corporation, owner of the trademarks “LACOSTE,” “CHEMISE LACOSTE,” “CROCODILE DEVICE,” and a composite mark, used on clothing and sporting apparel marketed worldwide and in the Philippines since 1964.
    • Respondent Gobindram Hemandas (via Hemandas & Co.): a Philippine firm that in 1975 obtained Reg. No. SR-2225 (Supplemental Register) for the mark “CHEMISE LACOSTE & CROCODILE DEVICE,” applied in 1977 to the Principal Register, and assigned all rights to Gobindram Hemandas.
  • Intellectual Property Proceedings
    • November 1980: La Chemise applied for Philippine registration of “CROCODILE DEVICE” (approved for publication) and “LACOSTE” (opposed by Games and Garments, IPC No. 1658).
    • 1982: La Chemise filed for cancellation of Reg. SR-2225 (IPC No. 1689). Both cases reached this Court in G.R. No. 65659.
  • Criminal Complaint and Search Warrants
    • March 21, 1983: La Chemise filed a complaint with the NBI for unfair competition under Article 189, Revised Penal Code.
    • NBI obtained Search Warrants Nos. 83-128 and 83-129 from RTC Branch XLIX; executed the warrants and seized apparel bearing the “LACOSTE” mark.
    • Hemandas moved to quash the warrants on grounds that (a) his mark differed from petitioner’s and (b) the warrants were premature due to pending administrative proceedings. The RTC granted the motion, recalled the warrants, and ordered return of seized items.
  • Minister of Trade Memoranda (G.R. No. 65659)
    • November 20, 1980: Minister Villafuerte memo directing Patents Office to reject world-famous trademark applications by non-original owners, implementing Paris Convention art. 6bis.
    • October 7, 1983: Executive Order 913 broadened Minister Ongpin’s adjudicatory powers; Ongpin issued a memorandum reiterating and expanding the 1980 directive.

Issues:

  • In G.R. Nos. L-63796-97 (La Chemise petition)
    • Did the RTC judge gravely abuse discretion and lack jurisdiction by reversing his own finding of probable cause and quashing valid search warrants based on matters of defense?
    • Was the issuance of the search warrants premature given (a) pending Patent Office opposition/cancellation proceedings (IPC Nos. 1658, 1689) and (b) Hemandas’s registration on the Supplemental Register?
  • In G.R. No. 65659 (Hemandas petition)
    • Did Minister Ongpin exceed authority or violate law by issuing a memorandum directing the Patents Office to refuse or cancel registrations of world-famous trademarks under Paris Convention art. 6bis?

Ruling:

  • (Subscriber-Only)

Ratio:

  • (Subscriber-Only)

Doctrine:

  • (Subscriber-Only)

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