Case Summary (G.R. No. 185830)
Trademark Application and Opposition
On June 21, 1990, Cointreau filed in the Philippines a trademark application for “LE CORDON BLEU & DEVICE” covering goods in multiple Nice Classification classes, based on its French Home Registration No. 1,390,912 (November 25, 1986). Publication occurred in 1993. On July 23, 1993, Ecole opposed, asserting prior use since 1948 of “LE CORDON BLEU, ECOLE DE CUISINE MANILLE” and alleging likelihood of confusion and damage to its goodwill. Cointreau answered on October 7, 1993, claiming global ownership of the mark since 1895 and accusing Ecole of fraudulent appropriation.
Initial Bureau Ruling (BLA)
By Decision dated July 31, 2006, the IPO’s Bureau of Legal Affairs sustained Ecole’s opposition and rejected Cointreau’s application. The BLA held that foreign use outside the Philippines could not establish proprietary rights locally and that Cointreau had failed to show actual commercial use of the mark in the Philippines as required by R.A. No. 166.
IPO Director General Ruling
On April 21, 2008, the IPO Director General reversed the BLA. He distinguished ownership from local use, noting that Section 2-A of R.A. 166 does not mandate Philippine use to acquire ownership and that Cointreau’s undisputed global use since 1895 established ownership. Conversely, Ecole could not explain the origin of its mark and had appropriated it in bad faith.
Court of Appeals Ruling
In its December 23, 2008 Decision, the Court of Appeals affirmed the IPO Director General in toto. It declared Cointreau the lawful owner of “LE CORDON BLEU & DEVICE” under Section 37 of R.A. 166 by virtue of its French registration and use, and ruled that Ecole’s Philippine use since 1948 was undertaken with knowledge of the French origin, thus precluding any right to register.
Issue Presented
Whether the Court of Appeals correctly held that Cointreau, not Ecole, is the true and lawful owner of the mark “LE CORDON BLEU & DEVICE” and entitled to its registration in the Philippines under R.A. No. 166 and international conventions.
Applicable Law
– 1987 Philippine Constitution: mandates protection of intellectual property rights and the State’s commitment to uphold property.
– Republic Act No. 166 (old Trademark Law):
• Section 2: registration requires actual use in Philippine commerce for two months prior to application.
• Section 2-A: ownership arises by actual use in trade, without territorial limitation, provided no bad-faith appropriation.
• Section 4(d): bars registration of marks confusingly similar to prior marks.
• Section 37: incorporates Paris Convention provisions, granting protection to well-known foreign trade names without local registration.
– Paris Convention (Arts. 6bis and 8): protects well-known marks and trade names of signatory states against confusing uses.
Supreme Court Analysis
Ownership vs. Local Use
– Under Section 2-A, Cointreau’s global use since 1895 conferred ownership.
– Ecole’s local use since 1948, with full awareness of Cointreau’s mark (its directress trained in Paris), constituted bad-faith appropriation.Territoriality and International Obligations
– While R.A. 166 requires local use for registration, the Paris Con
Case Syllabus (G.R. No. 185830)
Case Caption and Procedural Posture
- 710 Phil. 305; 110 OG No. 8, 1063 (February 24, 2014), Second Division
- G.R. No. 185830, June 05, 2013
- Petition for review on certiorari under Rule 45 seeking reversal of the Court of Appeals’ December 23, 2008 Decision in CA-G.R. SP No. 104672
- CA had affirmed in toto the IPO Director General’s April 21, 2008 Decision declaring respondent Cointreau the true and lawful owner of the mark “LE CORDON BLEU & DEVICE”
Facts
- June 21, 1990: Renaud Cointreau & Cie (“Cointreau”), a French partnership, filed trademark application Serial No. 72264 for “LE CORDON BLEU & DEVICE” under Nice Classes 8, 9, 16, 21, 24, 25, 29, and 30
- Basis: French Home Registration No. 1,390,912 issued November 25, 1986
- Publication: March–April 1993 issue of the BPTTT Gazette; circulated May 31, 1993
- July 23, 1993: Petitioner Ecole De Cuisine Manille, Inc. (“Ecole”) opposed, alleging prior use of “LE CORDON BLEU, ECOLE DE CUISINE MANILLE” since 1948 in culinary activities and restaurants, and invoked inconvenience, confusion, and damage to goodwill
- October 7, 1993: Cointreau answered, asserting worldwide use of the mark since 1895, numerous foreign registrations, and training of Ecole’s directress at the original Paris school
Administrative Proceedings
- During opposition: Cointreau obtained Philippine Certificates of Registration Nos. 60631 (“CORDON BLEU & DEVICE”) and 54352 (“LE CORDON BLEU PARIS 1895 & DEVICE”) for Classes 21 and 41
- July 31, 2006 – BLA Decision: Sustained Ecole’s opposition; held Cointreau lacked evidence of Philippine use; emphasized territoriality doctrine; recognized Ecole’s use since 1948 and its May 9, 1980