Case Digest (G.R. No. 193569)
Facts:
Edmond Lim and Gerd Paland, Petitioners, vs. Catalina See, Respondent, G.R. No. 193569, January 25, 2023, Supreme Court Second Division, Lopez, J., writing for the Court. Petitioners Edmond Lim and Gerd Paland filed a Petition for Review on Certiorari assailing the Court of Appeals’ Decision (April 21, 2010) and Resolution (August 12, 2010) in CA‑G.R. SP No. 108067, which had reinstated the Bureau of Legal Affairs’ December 22, 2006 Decisions that denied Lim and Paland’s oppositions to several trademark applications of Catalina See (filed originally by Chai Seng Ang) except for the mark SCHISO & DEVICE.On March 20, 2000, Ang filed six trademark applications with the Intellectual Property Office (IPO) covering marks used on nippers, scissors, nail cutters and similar goods. Ang later executed Assignments of Trademark in favor of See and See filed Declarations of Actual Use in 2003. In October 2004, Lim and Paland filed verified Oppositions before the IPO Bureau of Legal Affairs, alleging that the marks were identical to marks owned and used by Paland (manufacturer in Solingen, Germany) and exclusively distributed in the Philippines by Lim.
The Bureau of Legal Affairs (December 22, 2006) found that See had satisfactorily shown adoption and prior use of the marks in the Philippines and denied Lim and Paland’s oppositions except as to SCHISO & DEVICE (which it allowed). Lim and Paland appealed to the Office of the Director General, which on March 13, 2009, reversed the Bureau of Legal Affairs and granted the oppositors, finding that the Bureau erred in crediting See’s claim of ownership and that Ang was not established as owner. See then filed a petition with the Court of Appeals.
The Court of Appeals (April 21, 2010) reversed the Office of the Director General, reinstating the Bureau of Legal Affairs’ December 22, 2006 decisions on the ground that See had established adoption and use and that the “first‑to‑apply” pri...(Pro-only)
Issues:
- Did Lim and Paland substantially comply with the verification requirement when Lim signed the verification for their opposition despite Paland asserting ownership?
- Is Catalina See entitled to register the subject trademarks, i.e., was her registration in good faith or tainted by bad faith (trademark squatting / regist...(Pro-only)
Ruling:
- (Pro-only)
Ratio:
- (Pro-only)
Doctrine:
- (Pro-only)