Case Summary (G.R. No. 213815)
Petitioner’s Application and Registration
Medina filed an application for registration of the mark “Mr. Gulaman (Stylized)” on May 9, 2005 for goods under Class 29. The IPO issued a certificate of registration in Medina’s name on June 25, 2006 (record cites the issued certificate as No. 4-2005-004181).
Respondent’s Use, Copyright, and Claim of Prior Rights
Global is a domestic corporation that manufactures and sells gulaman jelly powder mix stamped with the name and logo “Mr. Gulaman.” Global filed its own trademark application on February 1, 2006, and asserted that it had been using the mark in commerce since 2000. Global presented evidence that the name and logo were created and copyrighted by Benjamin Irao, Jr., with a certificate of copyright registration issued in 1996, and that Irao assigned his copyright rights to Global by Deed of Assignment dated February 14, 2005.
Procedural History up to Cancellation at the IPO
Global opposed Medina’s earlier application and, after Medina’s registration issued, filed a Petition for Cancellation with the IPO Bureau of Legal Affairs. Service and procedural compliance led to Medina’s default for failure to file an answer within the reglementary period; her motion for reconsideration of the default finding was denied and that denial was the subject of a separate, subsequently final Court of Appeals decision (CA‑G.R. SP No. 100742). On August 8, 2008, the BLA granted Global’s Petition for Cancellation, finding the registration had been obtained fraudulently or contrary to the Intellectual Property Code. The BLA compared the respective marks, relied on Irao’s affidavit, Global’s sample packaging, sales invoices and assignment, and concluded that Medina’s mark was a copy and that Global was the prior user and originator of the stylized mark. The Director General of the IPO affirmed on May 28, 2012. The Court of Appeals subsequently affirmed the IPO decisions, and the Supreme Court denied review.
Evidence Presented by Respondent
Global’s supporting exhibits included: a certified copy of Irao’s Certificate of Copyright Registration (1996) for “Mr. Gulaman” with logo design; a Deed of Assignment executed February 14, 2005 by Irao in favor of Global; samples of product packaging showing the mark and logo; sales invoices evidencing commercial transactions under the mark; and Irao’s affidavit attesting to creation and assignment and authorizing Global’s use.
Petitioner’s Procedural and Evidentiary Contentions
Medina argued that (1) her certificate of registration constitutes prima facie proof of ownership that respondent failed to overcome; (2) the respondent’s documentary evidence was inadmissible because they were photocopies in breach of the Best Evidence Rule and IPO rules requiring originals; (3) sales invoices were allegedly tampered with; (4) a copyright registration alone cannot create trademark rights; (5) the registered marks were not confusingly similar; and (6) she was denied due process when declared in default and prevented from presenting evidence.
Legal Framework: Trademark Ownership and Prima Facie Presumption
The Intellectual Property Code (Republic Act No. 8293) defines a mark (secs. 121, 121.1), provides that rights in a mark are acquired through registration in accordance with the law (sec. 122), and declares that a certificate of registration is prima facie evidence of validity, ownership and exclusive right to use the mark (sec. 138). Section 151 identifies grounds and timeframes for cancellation, including registration obtained fraudulently or contrary to the Act (sec. 151(b)). The Code also requires actual use declarations at specified intervals.
Doctrinal Development: Registration vs. Prior Use
The Court analyzed this dispute in light of controlling jurisprudence. Historically trademark ownership was acquired by actual prior use, but under the current IP Code ownership is acquired by registration made validly in accordance with the Code. Nevertheless, the prima facie presumption created by registration is rebuttable: registration does not become an indefeasible title when the registrant obtained the registration in bad faith, by fraud, or when another can show better rights through doctrines recognized in the Code and preceding jurisprudence. The Court cited Berris Agricultural Co., Inc. v. Abyadang and Birkenstock Orthopaedie GmbH v. Phil. Shoe Expo to explain that while registration ordinarily vests ownership, the presumption of ownership may be overcome by proof of prior use, fraud, or other statutory defects leading to cancellation. The later decision in Zuneca Pharmaceutical v. Natrapharm, Inc. was also referenced for the proposition that the IP Code changed the ownership regime to focus on registration, but that cancellation is still available for bad faith or fraud.
Standard of Review and Deference to IPO Findings
The Supreme Court emphasized Rule 45’s limit to questions of law and reiterated that it is not a trier of facts: factual findings of appellate courts and the IPO supported by substantial evidence are final and binding. Given IPO’s expertise in intellectual property matters, its factual findings concerning bad faith, fraud, and prior use are accorded substantial respect and are reversible only on limited statutory or jurisprudential grounds (e.g., findings based on speculation, contradictory evidence, grave abuse of discretion).
IPO and Appellate Findings on Bad Faith, Fraud and Prior Use
The BLA‑IPO compared the marks and found that the dominant element “Mr. Gulaman” in both marks was identical in presentation (same style and color), that Medina’s mark was a variation of the respondent’s mark, and that Medina’s registration was obtained contrary to the Code or possibly in bad faith because respondent demonstrated prior creation, ownership and commercial use. The IPO found corroboration in Irao’s affidavit, the copyright certificate, the Deed of Assignment, samples of product labels, and sales invoices showing commercial use as early as 2000. The IPO also observed that petitioner herself submitted photographs in her Declaration of Actual Use showing respondent’s packaging, which reinforced the conclusion of copying.
Court of Appeals’ Ruling
The Court of Appeals affirmed the IPO’s rulings, holding that Medina’s certificate of registration was a prima facie evidence of ownership but that this presumption was overcome by substantial evidence of prior use and origin presented by Global. The CA relied on the IPO’s factual findings, the documentary evidence, and existing jurisprudence recognizing that a later registration may be cancelled where prior rights and bad faith or fraud are proved.
Supreme Court’s Analysis and Disposition
The Supreme Court declined to revisit the procedural due process/default issue because that matter had already been finally resolved by the Court of Appeals in a separate, final
Case Syllabus (G.R. No. 213815)
Case Caption and Citation
- Supreme Court Third Division decision in G.R. No. 213815, dated February 08, 2021, reported at 119 O.G. No. 30, 5558 (July 24, 2023).
- Parties: Ma. Sharmaine R. Medina / Rackey Crystal Top Corporation (Petitioners) v. Global Quest Ventures, Inc. (Respondent).
- Decision authored by Justice Leonen; concurred in by Justices Hernando, Inting, Delos Santos, and J. Lopez.
Nature of the Case and Relief Sought
- Petition for Review on Certiorari under Rule 45 of the Rules of Court seeking reversal of the Court of Appeals Decision and Resolution in CA-G.R. SP No. 125161.
- Underlying administrative action: cancellation of Certificate of Trademark Registration No. 4-2005-004181 issued in petitioner Medina’s name.
Core Legal Question Presented
- Whether the Court of Appeals erred in affirming the cancellation of petitioner’s Certificate of Registration No. 4-2005-004181, i.e., whether the registrant’s prima facie presumption of ownership was successfully rebutted and whether cancellation was proper under the Intellectual Property Code.
Relevant Statutory Provisions and Doctrines Cited
- Definition of mark and related provisions: Republic Act No. 8293 (1997), secs. 121, 121.1 (definition of “Mark”).
- Acquisition of rights in a mark: RA 8293, sec. 122 — “The rights in a mark shall be acquired through registration made validly in accordance with the provisions of this law.”
- Certificates of Registration as prima facie evidence: RA 8293, sec. 138 — certificate of registration is prima facie evidence of validity, ownership and exclusive right.
- Cancellation grounds: RA 8293, sec. 151 — grounds include registration obtained fraudulently or contrary to the Act, abandonment, genericness, misrepresentation of source, and other enumerated circumstances.
- Doctrinal precedents discussed: Berris Agricultural Co., Inc. v. Abyadang; Birkenstock Orthopaedie GmbH and Co. KG v. Phil. Shoe Expo Marketing Corp.; Zuneca Pharmaceutical v. Natrapharm, Inc.; Pascual v. Burgos; Mustang-A Bekleidungswerke GmbH + Co. KG v. Hung Chiu Ming (IPO decision cited for definitions of bad faith and fraud).
Factual Background — Goods, Marks, and Prior Use Allegations
- Respondent Global Quest Ventures, Inc. (Global) manufactures and sells gulaman jelly powder mix, with the copyrighted name “Mr. Gulaman” and a logo design printed on packaging box and sachet (Rollo, p. 157).
- Global filed a trademark application for “Mr. Gulaman” on February 1, 2006 (Rollo, p. 157).
- Petitioner Ma. Sharmaine R. Medina filed an earlier trademark application on May 9, 2005 for the mark “‘Mr. Gulaman’ (Stylized),” covering goods under Class 29 (Rollo, pp. 157-158).
- Certificate of Registration No. 4-2005-004181 was issued in Medina’s name on June 25, 2006 (Rollo, p. 157).
Global’s Claims and Documentary Basis
- Global alleged that the “Mr. Gulaman” mark with logo design is the copyrighted work of Benjamin Irao, Jr. (Irao), whom Global commissioned to create and register “Mr. Gulaman” with logo as a copyright (Rollo, pp. 157-158).
- A Certificate of Copyright Registration for “Mr. Gulaman” with logo design was issued in Irao’s name in 1996 (Rollo, p. 484; p. 162).
- Global claimed it had been using “Mr. Gulaman” as a trademark for its gulaman jelly products since 2000 and that Irao assigned rights to Global by Deed of Assignment dated February 14, 2005 (Rollo, pp. 162; 458).
- Evidence Global submitted before the IPO included: sample product box packaging; certified Xerox copy of the Copyright Registration for Mr. Gulaman in Irao’s name; Deed of Assignment executed February 14, 2005 from Irao to Global; and affidavit of Benjamin Irao, Jr., among other documents (Rollo, pp. 159-160).
Procedural History at the Intellectual Property Office (IPO) — Bureau of Legal Affairs (BLA-IPO)
- Global filed a Petition for Cancellation of Medina’s Certificate of Trademark Registration (Rollo, p. 157).
- IPO sent a registered mail notice directing Medina to file an Answer on September 7, 2006; Medina did not file an Answer within the reglementary period, prompting the BLA-IPO to declare waiver of Medina’s right to file an Answer and supporting documents (Rollo, pp. 160; 473-474).
- Medina sought reconsideration of the order declaring her in default; BLA-IPO denied the motion (Rollo, pp. 473-474; 204-207).
- On August 8, 2008, the BLA-IPO granted Global’s Petition for Cancellation, finding the registration was obtained fraudulently or contrary to the Intellectual Property Code (Rollo, pp. 157-164; 163).
- The BLA-IPO relied on Irao’s affidavit corroborating Global’s prior use claim; concluded Global acquired ownership by actual use in commerce since 1996; compared marks and found Medina’s mark merely copied Global’s mark, noting the dominant word “Mr. Gulaman” in both marks are identical (Rollo, pp. 162-163).
- Medina moved for reconsideration of the BLA-IPO decision; her motion was denied in the BLA-IPO’s October 20, 2009 Resolution (Rollo, pp. 617-618; 618; 31-32).
Administrative Appeal to the Office of the Director General
- Medina appealed to the Office of the Director General; Global filed a Comment attaching sales invoices (Rollo, pp. 204-207; 33-34).
- On May 28, 2012, the Office of the Director General affirmed the BLA-IPO decision, finding substantial evidence of Global’s prior use of the “Mr. Gulaman” mark (Rollo, pp. 122-128; 34-35).
- The Office of the Director General noted Global presented: certificate of copyright registration (1996 in Irao’s favor), sample product labels showing MR GULAMAN (with logo), and sales invoices showing sales as early as 2000; emphasized the visual similarity, notably the same style and green color of the words “MR GULAMAN,” concluding the marks give impression of same source (Rollo, pp. 122-128; 35).
Court of Appeals Proceedings and Ruling
- Medina filed a Petition for Certiorari before the Court of Appeals (CA-G.R. SP No. 100742) challenging the IPO’s refusal to admit her Answer; the Court of Appeals in its June 18, 2008 Decision found no grave abuse of discretion by IPO in declaring Medina in default for failing to file an Answer and for disregarding verification requirements (Rollo, pp. 470-480; 60).
- Medina later filed a Petition for Review in CA-G.R. SP No. 125161 from the Office of the Director General’s affirmation; the Court of Appeals affirmed the Office of the Director General’s findings, holding that the prima facie presumption afforded by Medina’s certificate of registration may be overcome by evidence of prior use by another, and found Global’s origin of right plus sales invoices overcame the presumption (Rollo, pp. 54-73; 54-72; 69-71).