Title
Fredco Manufacturing Corp. vs. President and Fellows of Harvard College
Case
G.R. No. 185917
Decision Date
Jun 1, 2011
Fredco claimed ownership of "Harvard" mark; Supreme Court ruled in favor of Harvard University, citing prior use, global reputation, and protection under Paris Convention.
trademark registration
cancellation of registration
international trademark

Case Summary (G.R. No. 185917)

Factual Background

Fredco Manufacturing Corporation filed a petition before the Bureau of Legal Affairs of the Intellectual Property Office (IPO) seeking cancellation of Trademark Registration No. 56561 issued to Harvard University for the mark “Harvard Veritas Shield Symbol” covering goods in Classes 16, 18, 21, 25 and 28. Fredco alleged predecessor New York Garments Manufacturing & Export Co., Inc. first used the mark “Harvard” in the Philippines on 2 January 1982, applied for registration on 24 January 1985, and secured a certificate of registration on 12 December 1988, which was later assigned to Romeo Chuateco. Fredco asserted that it was formed on 9 November 1995 and had handled manufacture and marketing of “Harvard” clothing. Fredco further alleged that New York Garments’ registration was cancelled on 30 July 1998 for failure to file the affidavit of use/non-use but that the right to the mark remained with its predecessor and now with Fredco.

Harvard University’s Assertions

Harvard University asserted ownership of the name and marks “Harvard” and “Harvard Veritas Shield Symbol” in numerous countries including the Philippines, and asserted longstanding use in commerce dating from the nineteenth century and Class 25 use in the United States since 1953. Harvard alleged it never authorized or licensed Fredco to use its name or marks in the Philippines, described its global trademark licensing program, and identified several Philippine trademark registrations including Registration No. 56561 issued 25 November 1993 for the shield design.

Administrative Proceedings Before the IPO

The Bureau of Legal Affairs, IPO, Director Estrellita Beltran-Abelardo rendered a Decision dated 22 December 2006 that granted Fredco’s Petition for Cancellation only with respect to goods under Class 25, cancelling Harvard University’s Registration No. 56561 insofar as Class 25 was concerned, while upholding registrations for Classes 16, 18, 21 and 28. Harvard University appealed to the Office of the Director General of the IPO.

Director General’s Reversal

The Office of the Director General, IPO reversed the Bureau decision in a Decision dated 21 April 2008. The Director General ruled that registration rights depend on ownership and that Harvard University’s registration was valid because Harvard had appropriated and used the marks long before Fredco or its predecessor. The Director General noted the mark at issue comprised the word “Harvard” and the shield emblem, and found Fredco failed to explain how New York Garments adopted the mark or to show authorization from Harvard University. The Director General therefore set aside the Bureau decision.

Court of Appeals Proceedings and Ruling

Fredco petitioned for review to the Court of Appeals. The Court of Appeals, in its decision dated 24 October 2008, affirmed the Director General’s decision. The Court of Appeals concluded that Harvard University had appropriated and used the marks in Class 25 well before Fredco and New York Garments, and that Fredco offered no satisfactory explanation for its adoption of the Harvard name and associated indicia such as “USA,” “Established 1936,” and “Cambridge, Massachusetts.” The Court of Appeals invoked the equitable principle articulated in Shangri-La International Hotel Management, Ltd. v. Developers Group of Companies, Inc., that a party who imitates another’s trademark may not obtain relief against the true owner because priority cannot aid a plaintiff who acted in bad faith.

Issue Presented to the Supreme Court

The principal issue presented was whether the Court of Appeals committed reversible error in affirming the Director General’s decision of the IPO reversing the Bureau of Legal Affairs’ partial cancellation and thereby upholding Harvard University’s trademark registration for Class 25.

Supreme Court Disposition

The Supreme Court denied the petition and affirmed the Court of Appeals’ Decision dated 24 October 2008 and Resolution dated 8 January 2009. The Court held that the petition lacked merit.

Ownership, Prior Use, and Home Registration Principle

The Court recognized that the mark “Harvard” used by Fredco was the same as the mark in Harvard University’s “Harvard Veritas Shield Symbol,” and that Harvard University had used the name and mark in commerce since 1872 and for Class 25 goods in the United States since 1953. The Court explained that although R.A. No. 166, Section 2, requires actual use in commerce in the Philippines for two months prior to application, the home registration doctrine under Section 37 of R.A. No. 166 permits registration based on prior foreign registration by nationals of Paris Convention countries, thereby obviating the Philippines-use requirement for applicants covered by home registration.

Effect of the Intellectual Property Code and Deemed Registration

The Court observed that trademarks registered under R.A. No. 166 were deemed granted under R.A. No. 8293 by operation of Section 239.2, and that R.A. No. 8293 does not require prior actual use in the Philippines for such deemed registrations. The Court further noted Harvard University filed affidavits of use for the fifth and tenth anniversaries of Registration No. 56561.

Status of Fredco’s Registration

The Court emphasized that Fredco’s predecessor’s registration had been cancelled on 30 July 1998 for failure to file the required affidavit of use/non-use, so that at the time Fredco filed its Petition for Cancellation before the Bureau of Legal Affairs, Fredco was no longer the registrant or presumptive owner of the mark.

Registration Barred by Section 4(a) — False Suggestion of Connection

The Court held that Fredco’s use of the mark “Harvard,” together with indicia such as “Cambridge, Massachusetts,” “USA,” and “Established 1936,” falsely suggested a connection with Harvard University and therefore should have been disallowed under Section 4(a) of R.A. No. 166, which prohibits registration of marks that may “falsely suggest a connection with persons… institutions.” The Court found Fredco offered no satisfactory explanation for its adoption of those indicia and that Fredco’s claimed justification that it sought to evoke a “lifestyle” aura only confirmed an intent to ride on Harvard University’s goodwill. The Court concluded that registration obtained in violation of Section 4 was a ground for cancellation under Section 17(c) of R.A. No. 166.

Protection Under the Paris Convention and Well-Known Mark Doctrine

The Court analyzed the Paris Convention, particularly Article 6 bis and Article 8, and explained that the Philippines, as a signatory, must protect marks and trade names of nationals of other member states. The Court noted that Article 8 protects trade names without the obligation of filing or registration, and that Section 37 of R.A. No. 166 implements Article 8 by protecting trade names of nationals of Paris Convention countries whether or not filed or registered.

Well-Known Mark Criteria and Rule 102

The Court reiterated established doctrine that a mark must be shown to be “well-known” in the country where protection is sought for Article 6 bis protection to apply and that the competent authority determines wel

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