Title
Wolverine Worldwide, Inc. vs. Court of Appeals
Case
G.R. No. 78298
Decision Date
Jan 30, 1989
Wolverine Worldwide sought to cancel Lolito Cruz's "HUSH PUPPIES" trademark in the Philippines, claiming unfair competition. The Supreme Court ruled the petition barred by res judicata, as prior final decisions on the same issue precluded relitigation.
trademark cancellation
res judicata
previous cases

Case Summary (G.R. No. L-56224-26)

Parties, Forum, and Governing Legal Framework

On February 8, 1984, the petitioner filed in the Philippine Patent Office an inter partes petition for cancellation docketed as Inter Partes Case No. 1807. The petitioner sought cancellation of Certificate of Registration No. 24986-B issued to the private respondent for the trademark “HUSH PUPPIES” for use on shoes. The principal legal provision invoked throughout was Section 17 of Republic Act 166 (the Trademark Law), which concerns the cancellation of registered trademarks. The principal constitutional framework applied was not expressly discussed in the decision. The doctrinal anchor was the civil-law principle of res judicata, including its requisites for a judgment to bar a subsequent action.

Factual Background

In support of its petition for cancellation, the petitioner alleged that it was the registrant of the internationally known trademark HUSH PUPPIES and the device of a dog in the United States and in other member countries of the Paris Convention for the Protection of Industrial Property. It asserted that the goods sold by the private respondent and those sold by the petitioner belonged to the same class such that the private respondent’s use of the same trademark in the Philippines constituted unfair competition as defined in the Paris Convention.

The private respondent moved to dismiss the petition on the ground of res judicata. He averred that in 1973, more than ten years before the filing of Inter Partes Case No. 1807, the same petitioner had already filed two petitions for cancellation—Inter Partes Cases Nos. 700 and 701—and participated in an interference proceeding—Inter Partes Case No. 709—all involving the trademark HUSH PUPPIES and the dog device. In those earlier proceedings, the Director of Patents ruled in favor of the private respondent’s predecessor-in-interest, Roman Angeles.

Earlier Trademark Proceedings and Their Outcomes

The Director of Patents, in the earlier inter partes matters, made determinations favoring Roman Angeles as prior user and adopter of the trademark under the applicable application, while denying the petitions seeking cancellation of certain registrations. It also ordered cancellation of a registration in the name of Dexter Sales Company, which was identified as the assignor to the petitioner. Those earlier decisions were affirmed by the Court of Appeals on June 29, 1979.

The Present Inter Partes Case and Procedural History

After memoranda were filed in Inter Partes Case No. 1807, the Director of Patents issued the questioned decision granting the private respondent’s motion to dismiss, holding the petition barred by res judicata. The Director declared the certificate of registration in favor of the private respondent valid and subsisting for the duration of its term unless sooner cancelled in accordance with law.

On appeal, the Court of Appeals initially set aside the Director’s decision. Upon reconsideration, however, the Court of Appeals revived the Director’s dismissal and upheld the res judicata bar.

The Core Legal Question

The petition for review raised the principal legal question whether Inter Partes Case No. 1807 was barred by res judicata in light of the final and executory decisions in Inter Partes Cases Nos. 700, 701, and 709.

The Court’s Reasoning on Res Judicata

The Court ruled in the affirmative and restated the requisites for a prior judgment to bar a subsequent case. It held that a judgment must be a final judgment, that the court rendering it must have had jurisdiction over the subject matter and the parties, that it must be a judgment on the merits, and that there must be identity between the two cases as to the parties, subject matter, and cause of action.

The Court rejected the petitioner’s contrary position. It held that the judgments in Inter Partes Cases Nos. 700, 701, and 709 had “long since become final and executory.” The Court explained that Section 17 of the Trademark Law did not negate the finality required for res judicata, because a judgment is final for res judicata purposes if it can no longer be modified by the issuing court or by any other court.

The Court emphasized that the decisions from the earlier cancellation cases, as affirmed by the Court of Appeals, were not elevated to the Supreme Court. It reasoned that once the period to appeal lapsed without appeal being perfected, the earlier appellate affirmance became settled law in the case. The Court quoted the Court of Appeals’ characterization that the failure of the appellant-oppositor to elevate the Court of Appeals’ decision to the Supreme Court sounded “the death knell” of the later action.

Applicability of Res Judicata to Patent Office Proceedings

The Court further held that the doctrine of res judicata applies to all cases and proceedings in whatever form they may be. It expressly affirmed that the principle applies, in appropriate cases, to proceedings for cancellation of trademarks before the Philippine Patent Office. In support, it referred to Ipekjan Merchandising Co., Inc. vs. Court of Tax Appeals, observing that limiting res judicata only to decisions of bodies conventionally treated as courts would unreasonably circumscribe the doctrine. The Court reasoned that the Director of Patents’ final decisions, orders, and resolutions had judicial character because they were reviewable by the Court of Appeals and by the Supreme Court.

Identity of Parties, Subject Matter, and Cause of Action

Applying the requisites to the present case, the Court found substantial identity between the earlier and later proceedings. It identified the petitioner as Wolverine Worldwide, Inc. in all of the cases. It described the respondent-registrant in the present case as the assignee of Randelson Agro-Industrial Development, Inc. (formerly known as Randelson Shoes, Inc.), which acquired rights from Roman Angeles, the original respondent-registrant in the earlier proceedings.

As to subject matter, the Court held that both the earlier petitions and the present petition involved cancellation of the trademark HUSH PUPPIES and the device of a dog. As to cause of action, it held that both sought to contest the wrongful or erroneous registration of the subject trademark. It concluded that these issues had been previously litigated and settled in the earlier inter partes cases.

The Petitioner’s Paris Convention/Memorandum Argument and Its Rejection

The petitioner argued that res judicata should not apply because, when the earlier decision was issued by the Director of Patents, Executive Order No. 913 and the resulting memorandum of Minister Roberto Ongpin, issued on October 25, 1983, had not yet been issued. It invoked the subsequent issuance of that memorandum as a basis for bringing the present cancellation petition even after prior registration had already been granted.

The Court considered the petitioner’s reliance on the memorandum directive. The memorandum was quoted as requiring the rejection of pending applications for Philippine registration of signature and other world-famous trademarks filed by persons other than their original owners or users. It further stated that if such applicants had already obtained registration contrary to the Paris Convention and/or Philippine law, they should be directed to surrender their certificates for immediate cancellation proceedings.

The petitioner maintained that because the present cancellation petition was brought pursuant to the memorandum, it was not barred by res judicata even if the earlier petitions were filed under the Trademark Law. The Court rejected that framing. It held that the memorandum did not amend the Trademark Law and did not indicate a new policy on the registration in the Philippines of world-famous trademarks. It reasoned that the protection against unfair competition and the benefits mandated by the Paris Convention were already guaranteed under the Trademark Law itself.

Consistent with the Court of Appeals’ conclusion, the Court held that the issue of entitlement to protection under the Paris Convention could and should have been ventilated in the prior proceedings culminating in the registration in the private respondent’s predecessor’s name. It stated that the Director of Patents in those cases, after hearing both parties and concluding that the respondent-movant was entitled to registration, must have found that the oppositor had not established entitlement to Paris Convention protection.

Res Judicata Also Bars Repeated Cancellation Petitions on Substantially the S

...continue reading

Analyze Cases Smarter, Faster
Jur helps you analyze cases smarter to comprehend faster, building context before diving into full texts. AI-powered analysis, always verify critical details.

About Privacy Terms