G.R. No. 185830 - Ecole de Cuisine Manille, Inc. vs. Renaud Cointreau and Cie

Case Summary (G.R. No. 185830)

Facts — Origin and Use of the Mark

Cointreau (a French partnership) has used the mark “Le Cordon Bleu” for its culinary school since 1895 in France and secured Home Registration No. 1,390,912 in France on November 25, 1986. Cointreau filed a Philippine trademark application for “LE CORDON BLEU & DEVICE” on June 21, 1990 (Serial No. 72264) under multiple Nice Classification classes, claiming priority from its French registration. Ecole claims use of the mark in the Philippines since 1948 for its culinary activities and restaurant business. Ms. Dayrit, Ecole’s directress, trained at Le Cordon Bleu in Paris.

Procedural History — Administrative Proceedings

Cointreau’s Philippine application was published (March–April 1993 issue; released May 31, 1993). Ecole filed opposition on July 23, 1993, alleging senior use and goodwill in the Philippines and contending Cointreau’s registration would cause confusion and damage. Cointreau answered on October 7, 1993, asserting prior international use and registrations and claiming Ecole’s exclusivity was fraudulent. During the proceedings, Cointreau obtained Philippine registrations for related marks in classes 21 and 41.

Bureau of Legal Affairs (BLA) Ruling

On July 31, 2006, the BLA sustained Ecole’s opposition and rejected Cointreau’s application. The BLA found Cointreau’s foreign registrations and foreign use insufficient to establish proprietary rights in the Philippines because trademark rights are territorial and require actual use in commerce in the Philippines. The BLA recognized Ecole’s use since 1948 and an existing Philippine registration under the name “Ecole de Cuisine Manille (The Cordon Bleu of the Philippines), Inc.” dated May 9, 1980.

IPO Director General Ruling

On April 21, 2008, the IPO Director General reversed the BLA and allowed Cointreau’s registration, holding that: (a) Section 2 of R.A. No. 166 requires actual use in the Philippines for registration, but ownership of a mark is not ipso facto established by user status in the Philippines; (b) Section 2-A does not require actual use in the Philippines to acquire ownership of a mark; and (c) Cointreau’s undisputed use since 1895 and its foreign registrations established ownership, whereas Ecole failed to explain how it adopted the mark and had unjustly appropriated it, placing Ecole outside the protection of Section 4(d) of R.A. No. 166.

Court of Appeals (CA) Ruling

The Court of Appeals, in its December 23, 2008 Decision, affirmed the IPO Director General in toto. The CA held that Cointreau was the true and actual owner entitled to register under Section 37 of R.A. No. 166 because it had registered the mark in its country of origin in 1986. The CA further concluded that Ecole’s local prior use did not bar Cointreau’s right of registration because Ecole appropriated the mark in bad faith, and Ecole had no Philippine certificate of registration for the subject mark at the time (its application for Class 41 services was filed only on February 24, 1992).

Issue Presented to the Supreme Court

Whether the Court of Appeals correctly upheld the IPO Director General’s ruling that Cointreau is the true and lawful owner of the “LE CORDON BLEU & DEVICE” mark and entitled to registration in the Philippines under R.A. No. 166 and Section 37 thereof (in light of Paris Convention obligations).

Legal Framework Applied by the Court

The Court applied R.A. No. 166 (the law in force at the time of Cointreau’s application) and incorporated international obligations under the Paris Convention, via Section 37. Key provisions construed include: Section 2 (registrability requires actual use in commerce in the Philippines for two months before filing), Section 2-A (how ownership is acquired by actual use without requiring Philippine use), Section 4(d) (bar against registration where a mark so resembles a registered or previously used mark as to cause confusion), and Article 8 of the Paris Convention protecting trade names without need for filing or registration. The Court also noted that subsequent legislation (R.A. 8293) dispensed with the prior actual-use requirement for registration.

Court’s Analysis — Ownership, Territoriality, and International Protection

The Court emphasized the distinction between ownership and registrability under R.A. No. 166: ownership may be acquired by actual use (Section 2-A) and that Section 2’s Philippine-use requirement governs the right to register locally. The Court recognized the territorial doctrine but explained that the Paris Convention imposes obligations on signatory states (including the Philippines) to protect foreign trade names and well-known marks without obligation of filing. In the present facts, Cointreau’s continuous use since 1895 and French home registration (1986) established its ownership and entitled it to protection under the Paris Convention and Section 37 of R.A. No. 166, notwithstanding Ecole’s asserted earlier domestic use.

Court’s Analysis — Bad Faith Appropriation and Notice

The Court found Ecole’s claim of prior Philippine use insufficient to defeat Cointreau’s owner

Case Syllabus (G.R. No. 185830)

Facts

On June 21, 1990, Renaud Cointreau & Cie (Cointreau), a partnership registered under the laws of France, filed before the Bureau of Patents, Trademarks, and Technology Transfer (BPTTT) of the Department of Trade and Industry a trademark application for the mark “LE CORDON BLEU & DEVICE” for goods falling under classes 8, 9, 16, 21, 24, 25, 29, and 30 of the Nice Classification (the subject mark), pursuant to Section 37 of Republic Act No. 166 on the basis of Home Registration No. 1,390,912 issued on November 25, 1986 in France.
The application, bearing Serial No. 72264, was published for opposition in the March–April 1993 issue of the BPTTT Gazette and released for circulation on May 31, 1993.
On July 23, 1993, petitioner Ecole De Cuisine Manille, Inc. (Ecole) filed an opposition asserting: (a) ownership of the mark “LE CORDON BLEU, ECOLE DE CUISINE MANILLE,” used since 1948 in cooking and other culinary activities including a restaurant business; and (b) that Cointreau’s use of the subject mark would cause confusion and deception and would injure Ecole’s reputation and goodwill as a senior user.
On October 7, 1993, Cointreau filed its answer, claiming to be the true and lawful owner of the subject mark and asserting (a) that it had filed applications for the mark’s registration in various jurisdictions including the Philippines, (b) that Le Cordon Bleu is a culinary school established in Paris, France in 1895 of worldwide acclaim, (c) that Le Cordon Bleu set the standard for classical French cuisine and pastry instruction, and (d) that it trained students from over eighty nationalities, including Ecole’s directress, Ms. Lourdes L. Dayrit, leading Cointreau to conclude that Ecole’s claim of exclusive ownership was a fraudulent misrepresentation.
During the proceedings, Cointreau obtained Certificates of Registration Nos. 60631 and 54352 for the marks “CORDON BLEU & DEVICE” and “LE CORDON BLEU PARIS 1895 & DEVICE” for goods and services under classes 21 and 41 of the Nice Classification, respectively.
Ecole had used the predecessor mark “LE CORDON BLEU MANILLE” in the Philippines since 1948 and had a registration under the name “ECOLE DE CUISINE MANILLE (THE CORDON BLEU OF THE PHILIPPINES), INC.” dated May 9, 1980; however, Ecole had no certificate of registration in respect of the subject mark itself and filed an application only on February 24, 1992 (pending before the IPO, covering services limited to Class 41).

Bureau of Legal Affairs (BLA) Ruling

In its Decision dated July 31, 2006, the BLA sustained Ecole’s opposition, resulting in the rejection of Cointreau’s application.
The BLA acknowledged certificates of registration and evidence of use of the subject mark outside the Philippines but found such evidence insufficient to establish Cointreau’s prior use in the Philippines.
The BLA emphasized that adoption and use of a trademark must be in commerce in the Philippines and not abroad, observing that trademark law rests on the doctrine of nationality or territoriality.
The BLA concluded that Cointreau had not established a proprietary right entitled to protection in the Philippines under the applicable law.
The BLA noted that the subject mark was known and used in the Philippines since 1948 and had been registered under the Ecole name on May 9, 1980.

IPO Director General Ruling

On April 21, 2008, the IPO Director General reversed and set aside the BLA Decision, granting Cointreau’s appeal and allowing registration of the subject mark.
The IPO Director General construed Section 2 of R.A. No. 166 to require actual use in commerce in the Philippines for two months prior to filing but held that only the owner has the right to register the mark, and that user in the Philippines is not ipso facto the owner.
He interpreted Section 2-A as not requiring actual use in the Philippines to acquire ownership of a mark and distinguished acquisition of ownership from the right to register in the Philippines.
The Director General relied on Cointreau’s undisputed use of the mark since 1895 for its culinary school in Paris (noting Ms. Lourdes L. Dayrit as an alumna of that school) and found that Ecole, while showing prior Philippine use since 1948, failed to satisfactorily explain how it came to use the name and mark.
He concluded that Ecole had unjustly appropriated the subject mark, placing it beyond the protection of Section 4(d) of R.A. No. 166, and thus allowed Cointreau’s registration.

Court of Appeals (CA) Ruling

In its Decision dated December 23, 2008, the Court of Appeals affirmed the IPO Director General’s Decision in toto.
The CA declared Cointreau the true and actual owner of the subject mark and held that it had the right to register the mark in the Philippines under Section 37 of R.A. No. 166, in view of Cointreau’s registration of the mark in its country of origin on November 25, 1986.
The CA held that Ecole’s prior use in the Philippines as early as 1948 could not bar Cointreau’s right to register because Ecole’s appropriation of the mark had been done in bad faith.
The CA observed that Ecole had no certificate of registration