Case Summary (G.R. No. L-26059)
Key Dates
• January 2, 1982 – First use in Philippines by New York Garments.
• January 24, 1985 – New York Garments applies for “Harvard” (Class 25).
• December 12, 1988 – Registration issued to New York Garments.
• November 25, 1993 – Registration No. 56561 issued to Harvard University.
• August 10, 2005 – Fredco files petition to cancel No. 56561.
• December 22, 2006 – IPO Bureau of Legal Affairs cancels Class 25 portion (favoring Fredco).
• April 21, 2008 – IPO Director General reverses cancellation.
• October 24, 2008 – Court of Appeals affirms Director General.
• June 1, 2011 – Supreme Court decision.
Applicable Law
• 1987 Philippine Constitution (post-1990 decisions).
• Republic Act No. 166 – Trademark law (Sections 2, 4(a), 17(c), 37).
• Republic Act No. 8293 – Intellectual Property Code (Section 239.2, 123.1(e)).
• Paris Convention for the Protection of Industrial Property (Articles 6 bis, 8).
• IPO Rules (Rule 102 on well-known marks).
Antecedent Facts
Fredco alleges its predecessor used “Harvard” on apparel in the Philippines since 1982, secured a Class 25 registration in 1988, and continued use after incorporation in 1995. Harvard University claims worldwide ownership of the “Harvard” name and marks since 1639, with Philippine registrations since 1993, and no authorization given to Fredco. Fredco’s predecessor’s registration lapsed in 1998 for non-filing of renewal affidavits.
IPO Proceedings
• Bureau of Legal Affairs (2006): Granted Fredco’s cancellation petition, invalidating Harvard’s Class 25 registration upon finding confusing similarity with Fredco’s goods.
• Director General (2008): Reversed cancellation, holding registration rights depend on ownership of mark, not mere use; Harvard’s home-country registration under the Paris Convention excused Philippine use requirement; Fredco failed to justify adoption of “Harvard.”
Court of Appeals Decision
The CA affirmed the Director General, ruling Harvard proved priority of appropriation and use of its marks internationally and in the U.S. since 1953 (Class 25), and Fredco lacked good faith explanation and could not invoke priority when using another’s goodwill.
Issue
Whether the Court of Appeals erred in affirming the IPO Director General’s reversal of the cancellation of Harvard University’s Class 25 registration.
Supreme Court Ruling
The petition lacks merit. Under the 1987 Constitution and applicable statutes, Harvard’s registration stands.
First Ground: False Suggestion of Connection (RA 166, Sec. 4(a))
Fredco’s use of “Harvard” with origin “Cambridge, Massachusetts,” and related legends falsely implies affiliation with Harvard University. Section 4(a) prohibits registration of marks that may falsely suggest connection with institutions. Fredco admitted the aura-evoking intent, thereby exploiting Harvard’s goodwill.
Second Ground: Par
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Antecedent Facts
- On August 10, 2005, Fredco Manufacturing Corporation (Fredco), a Philippine corporation, filed an inter partes Petition for Cancellation (No. 14-2005-00094) with the IPO’s Bureau of Legal Affairs against Harvard University’s Registration No. 56561 for the “Harvard Veritas Shield Symbol” covering goods under Classes 16, 18, 21, 25, and 28.
- Fredco traced its rights to New York Garments Manufacturing & Export Co., Inc., which first used the mark “Harvard” in the Philippines on January 2, 1982 for clothing goods and secured its registration under Class 25 in 1988, later assigned to Romeo Chuateco.
- Harvard University, founded as “New College” in 1636 and renamed Harvard College in 1639, is the owner of the trade name and marks “Harvard” and “Harvard Veritas Shield Symbol,” used in commerce since 1872 and registered in at least 50 jurisdictions, including the Philippines under Registration No. 56561 (1993), No. 57526 (1994), No. 56539 (1998), and No. 66677 (1998).
- In March 2002, Harvard discovered Fredco’s website advertising “Harvard Jeans USA” and, on April 20, 2004, filed its own administrative complaint for infringement and unfair competition before the IPO.
Proceedings Below
- December 22, 2006: IPO Bureau of Legal Affairs Director granted Fredco’s cancellation petition only as to Class 25 goods, upholding Harvard’s registration for Classes 16, 18, 21, and 28.
- May 7, 2003: Harvard filed a new application (No. 4-2003-04090) for “Harvard Medical International & Shield Design” (Classes 41 and 44).
- April 21, 2008: IPO Dire