Case Digest (G.R. No. 63796-97)
Facts:
La Chemise Lacoste, S.A. v. Hon. Oscar C. Fernandez and Gobindram Hemandas; and Gobindram Hemandas Sujanani v. Hon. Roberto V. Ongpin et al., G.R. Nos. L-63796-97 and G.R. No. 65659, May 21, 1984, Supreme Court First Division, Gutierrez, Jr., J., writing for the Court.Petitioner La Chemise Lacoste, S.A. (a French corporation not doing business in the Philippines) owns internationally known trademarks including LACOSTE, CHEMISE LACOSTE, and the CROCODILE DEVICE, and has marketed goods under those marks in the Philippines since 1964. In 1975 Hemandas & Co. obtained registration SR-2225 on the Supplemental Register for the mark "CHEMISE LACOSTE & CROCODILE DEVICE" and later assigned its rights to respondent Gobindram Hemandas; Hemandas thereafter sought principal-register registration and relied on the supplemental registration in defending challenges.
In 1980 petitioner filed local trademark applications (Serial Nos. 43241, 43242) and, later, petitions for cancellation of SR-2225 (Inter Partes Case No. 1689) and related proceedings (including IPC No. 1658). After a 1983 letter-complaint to the National Bureau of Investigation (NBI) alleging unfair competition, the NBI sought and obtained from Branch XLIX, Regional Trial Court (presided by Judge Oscar C. Fernandez) Search Warrant Nos. 83-128 and 83-129 for violation of Article 189, Revised Penal Code; the warrants were executed and merchandise was seized from the Lacoste Sports Center and Games and Garments, both associated with Hemandas.
Hemandas moved to quash the search warrants contending his mark differed from petitioner’s and that criminal or civil action was premature pending Patent Office proceedings; the trial court (Branch XLIX) granted the motion on April 22, 1983, set aside the warrants and ordered return of the seized items. Petitioner filed a petition for certiorari with preliminary injunction before this Court challenging that order and seeking to restrain return of the seized goods. Separately, Hemandas filed petitions challenging a Minister of Trade memorandum (and related Patent Office directives) implementing Article 6bis of the Paris Convention; those petitions (including G.R. Nos. 63796-97, 63928-29, 63504, and 65659) generated related proceedings in this Court (some dismissed for lack of merit, some given due course). The present petitions reached the Court as petitions for certiorari (with preliminary relief); the Court issued and later acted on temporary restraining orders in the consolidated matters.
Issues:
- Does petitioner La Chemise Lacoste, S.A., a foreign corporation not doing business in the Philippines, have the capacity to invoke Philippine courts to protect its trademarks and to file the present petition?
- Did the respondent trial judge commit grave abuse of discretion amounting to lack of jurisdiction in reversing his own finding of probable cause, quashing Search Warrant Nos. 83-128 and 83-129, and ordering the return of seized items?
- Were the issuance and execution of the search warrants premature because (a) petitioner’s Philippine trademark registrations were then pending before the Patent Office (IPC No. 1658) and (b) Hemandas held a supplemental-register certificate (SR-2225) that presumptively established ownership?
Ruling:
- (Subscriber-Only)
Ratio:
- (Subscriber-Only)
Doctrine:
- (Subscriber-Only)