Case Summary (G.R. No. 115115)
Background of the Trademark Registration
Fitrite filed applications for registration of the trademark 'SUNSHINE' in April 1982, establishing its exclusive use since March 31, 1981. By May 20, 1983, Fitrite had been granted a Certificate of Registration No. SR-6217 for 20 years in the Supplemental Register. An application for the Principal Register was approved on March 22, 1990, leading to Certificate of Registration No. 47590. Additionally, on June 28, 1984, Fitrite authorized sister company Victoria to use this trademark.
Allegations of Trademark Infringement
In June 1990, Fitrite discovered that Conrad had started importing, selling, and distributing food products under the 'SUNSHINE' trademark without consent. Despite Conrad's historic absence from the importation of similar goods, it was designated as the exclusive importer by Sunshine Biscuits, Inc., a company based in the United States, leading to allegations of infringement and unfair competition by Fitrite.
Initial Court Proceedings and Arguments
The case was filed with the Regional Trial Court (RTC) seeking an injunction and damages. Conrad filed a motion to dismiss based on claims of litis pendentia (overlapping litigations), primary jurisdiction, and failure to state a cause of action. The RTC granted the motion to dismiss, stating that the issue of trademark ownership should be resolved by the Bureau of Patents, Trademarks and Technology Transfer (BPTTT) due to its expertise.
Court of Appeals' Ruling
Dissatisfied with the RTC's ruling, Fitrite appealed to the Court of Appeals. The appellate court reversed the RTC's decision, reinstating the case and emphasizing that the issues raised were pertinent to the alleged acts of trademark infringement rather than the validity of the trademark registration itself, and thus fell within the jurisdiction of the ordinary courts.
Key Legal Issues on Appeal
Conrad sought to review the Court of Appeals' decision, arguing that the appellate court had erred by not recognizing the primary jurisdiction of the BPTTT and misapplying provisions of the Paris Convention. Additionally, Conrad contested the basis for the issuance of a preliminary injunction against its activities involving the trademark.
Supreme Court's Analysis
The Supreme Court agreed with the findings of the appellate court, affirming that the infringement suit was distinct from the administrative case before the BPTTT. The question was not about the trademark's registrability but whether Conrad's actions constituted trademark infringement. The Court also confirmed that while a cancellation action rests with BPTTT, clai
...continue readingCase Syllabus (G.R. No. 115115)
Case Overview
- The case revolves around a petition for review filed by Conrad and Company, Inc. against the Court of Appeals, which reversed a Regional Trial Court (RTC) decision dismissing a complaint for "Injunction with Damages with Prayer for Preliminary Injunction" filed by private respondents Fitrite, Inc. and Victoria Biscuits Co., Inc.
- The RTC initially dismissed the case based on the grounds of litis pendentia and primary jurisdiction, asserting that the matter should be resolved by the Bureau of Patents, Trademarks and Technology Transfer (BPTTT).
Parties Involved
- Petitioner: Conrad and Company, Inc. (defendant in the original complaint).
- Respondents: Fitrite, Inc. and Victoria Biscuits Co., Inc. (plaintiffs in the original complaint), both domestic corporations engaged in manufacturing and distributing biscuits and cookies under the trademark "SUNSHINE."
Background of the Trademark Registration
- Fitrite, Inc. filed for the registration of the "SUNSHINE" trademark in April 1982 and was granted a Certificate of Registration for both the Supplemental and Principal Registers.
- Victoria Biscuits Co., Inc., a sister company of Fitrite, was authorized to use the "SUNSHINE" trademark in June 1984.
- Fitrite assigned its trademark and business goodwill to Victoria Biscuits in September 1990.
- Both companies marketed their products extensively, establishing a strong presence in the Philippine market.
Allegations Against Conrad
- In June 1990, it was revealed that Conrad had been importing and distributing cookies and biscuits under the "SUNSHINE" trademark without permission.
- Conrad was designated as an exclusive importer for "Sunshine Biscuits, Inc." in 1988 a