Case Summary (G.R. No. 193569)
Case Background
The case revolves around a petition for review filed by Lim and Paland challenging the ruling of the Court of Appeals that reversed the decision of the Intellectual Property Office's Director General. The issue primarily concerns the registration of several trademarks that Lim and Paland opposed on the grounds that these marks were already owned and used by Paland's predecessor companies for a considerable period.
Trademark Applications and Opposition
In 2000, Chai Seng Ang, See's predecessor, filed applications for various trademarks including "CROWN DEVICE", "JOWIKA & DEVICE", and "SCHISO & DEVICE". Lim and Paland contested these applications on the grounds that the marks were identical to those used by Paland, who had a long history of manufacturing and distributing nipper products. They filed an opposition in 2004, claiming ownership of the contested marks based on substantial use and prior registrations in Germany.
See's Claims and Evidence
See claimed that she was the owner of Lena’s Enterprises, which had been distributing the contested marks directly since 1981. She testified about early exposure to these trademarks from her father's bazaar operations and alleged that her father had engaged Ang for these products. However, her claims were supported mainly by witness testimonies and less by concrete documentary evidence.
Evidence from Lim and Paland
Lim and Paland provided various forms of evidence to substantiate their claim of ownership, including affidavits, certificates of registration from Germany, and invoices showing sales of products bearing the contested trademarks. They emphasized long-standing usage and legal registrations that predated See's claims.
Bureau of Legal Affairs Rulings
The Bureau of Legal Affairs initially ruled in favor of Lim and Paland for only the "SCHISO & DEVICE" mark while allowing See’s other trademarks. The Bureau recognized See's self-proclaimed use but found insufficient evidence regarding the nature of her claims against Lim and Paland’s established connections to the trademarks.
Decision by the Office of the Director General
Reversing the Bureau's decision in 2009, the Office of the Director General found that See's claims lacked substantiation. It concluded that Ang's actions as merely an importer did not confer ownership of the trademarks. Evidence presented by Lim and Paland illustrated that the subject marks were used by them or their predecessors before See's claims.
Court of Appeals Decision
The Court of Appeals subsequently reversed the Office of the Director General's ruling, restating that See had established ownership of the marks through formative uses dating back to her family's history with them. The CA also emphasized that See filed for registration before Lim and Paland, aligning with th
...continue readingCase Syllabus (G.R. No. 193569)
Background and Parties Involved
- Petitioners: Edmond Lim and Gerd Paland
- Respondent: Catalina See
- Dispute concerns the ownership and registration of several trademarks for nippers, scissors, nail cutters, cutlery, files, spoons, and knives.
- The trademarks in question are "CROWN DEVICE," "JOWIKA & DEVICE," "SCHISO & DEVICE," "DEVICE MARK," "CROWN," and "ORO & DEVICE."
- Initial applications for these trademarks were filed by Chai Seng Ang (Ang), predecessor of Catalina See.
- Ang assigned the trademarks to See.
- Lim claims the marks were owned and used by Paland and distributed exclusively by Lim in the Philippines.
Procedural History
- Lim and Paland filed opposition against See's trademark registration applications with the Bureau of Legal Affairs (BLA), Intellectual Property Office (IPO).
- BLA allowed a joint trial and ultimately denied the opposition for all marks except "SCHISO & DEVICE," granting opposition only on the last.
- The Office of the Director General of the IPO reversed BLA's decision, granting the opposition and setting aside the registration of the trademarks.
- Court of Appeals (CA) reversed the Director General's decision, reinstating BLA's rulings that allowed See's registration except for "SCHISO & DEVICE."
- The Supreme Court reviewed the case by petition for review on certiorari.
Factual Summary
- Ang filed trademark applications on March 20, 2000, and later assigned the marks to See on February 26, 2003.
- Lim and Paland claimed prior ownership and use of identical marks which Paland's predecessor companies had used since the 1970s, including SCHISO & DEVICE since 1970, and other marks including CROWN, ORO, JOWIKA, and STORK from 1974.
- Paland is president of Gerd Paland Solingen, Germany, manufacturer and distributor of products bearing contested marks.
- See, via Lena's Enterprises, claimed prior use and ownership through her family since the 1960s.
- See's evidence included affidavits, certificates of registrations from Germany, product samples, sales invoices, trademarks applications, assignments by Ang, and internet search results.
- Lim and Paland submitted affidavits, exclusive distributorship agreement, and sales invoices evidencing the use and distribution of the marks.
Contentions of the Parties
- Lim and Paland argued that See's predecessor Ang was