G.R. No. L-33773 - Lorenzana vs. Macagba

In August 1956, petitioner Godofredo L. Lorenzana filed an application with the Philippine Patent Office for registration of the trademark "LORENZANA & DESIGN" in the Supplemental Register, asserting its use in his bagoong and patis business since 1940.
After summary proceedings, a Certificate of Registration (No. SR-275) was issued on September 3, 1959.

On March 21, 1962 (noting a discrepancy with the CA decision which mentions March 26), Solomon L. Lorenzana, Godofredo’s brother and one of the private respondents, initiated a petition (Inter Partes Case No. 263) for the cancellation of Certificate No. SR-275.
Solomon contended that the trademark "LORENZANA & DESIGN" was part of the estate of their late father, Felipe Lorenzana, who had been active in the fish products business since circa 1925, thereby questioning Godofredo’s sole right to the registration.

After protracted hearings lasting over five years, the Director of Patents in Decision No. 443 (dated June 26, 1967) reaffirmed Godofredo’s entitlement to the registration under the Supplemental Register.
A petition for review of this decision filed by Solomon in the Court of Appeals was dismissed on technical grounds (being filed one day late).

On September 8, 1967, petitioner Godofredo filed a new application with the Patent Office for registration of the trademark "LORENZANA" in the Principal Register.
On August 21, 1968, six of the eleven children of the late Felipe Lorenzana (including Crispina L. Macagba, Solomon L. Lorenzana, Cristeta L. Alvarez, Gabriel L. Lorenzana, Antonio L. Camins, and Sostenes L. Lorenzana) opposed this new application by filing Inter Partes Case No. 485.
Petitioner moved to dismiss the opposition, invoking the doctrine of res judicata based on the earlier proceedings in Inter Partes Case No. 263.

On February 14, 1969, the Director of Patents dismissed the opposition (Decision No. 516) relying on the argument of res judicata.
The private respondents appealed the dismissal to the Court of Appeals.
On May 18, 1971, the Court of Appeals reversed the dismissal, holding that:

There was no identity of subject matter or cause of action between the cancellation case (Inter Partes Case No. 263) and the opposition case (Inter Partes Case No. 485).
A clear distinction exists between registration in the Supplemental Register and the Principal Register, both in procedural nature and legal effects.
The differences in parties’ claims (including issues of privity among family members) further mitigated against an application of res judicata.

Petitioner Godofredo later filed a petition for review on certiorari before the Supreme Court.
He contended that the Court of Appeals had disregarded the res judicata principle, arguing that remanding Inter Partes Case No. 485 would simply duplicate the five-year-long proceedings of Inter Partes Case No. 263.
Additionally, Godofredo claimed that the other respondents were privies of Solomon and should be bound by the earlier decision in his favor under the Supplemental Register.
The Supreme Court rejected these contentions on the grounds of material differences between the proceedings involving the Supplemental and Principal Registers, and the necessary requisites for res judicata were not met.

Whether the doctrine of res judicata applies between Inter Partes Cases No. 263 (involving registration in the Supplemental Register) and No. 485 (involving registration in the Principal Register).

Is there identity of subject matter, cause of action, and parties between the two cases?
Can the earlier decision in the Supplemental Register proceeding bar the later proceedings?

Whether the dismissal of the opposition by the Director of Patents on the grounds of res judicata was proper.

Were the differences in the nature and legal effects of the two types of registrations adequately considered?
Does the distinct procedural regime governing each register affect the applicability of res judicata?

Whether the alleged privity of the private respondents with respect to Solomon L. Lorenzana justifies binding them to the earlier decision rendered in Inter Partes Case No. 263.

Did the evidence support that the co-owners derived their claims from the same source as Solomon?
Are the objections regarding privity sufficient to bar the new opposition proceedings?