Wolverine Worldwide, Inc. v. Honorable Court of Appeals
REITERATIONFacts
1. The Antecedents: Wolverine Worldwide, Inc. (petitioner) sought to cancel the trademark registration (Certificate of Registration No. 24986-B) for "HUSH PUPPIES and DOG DEVICE" issued to Lolito P. Cruz (private respondent). Petitioner claimed it was the international registrant of the trademark and that respondent's use in the Philippines constituted unfair competition, violating the Paris Convention. Respondent moved to dismiss based on res judicata, citing prior cancellation cases (Inter Partes Cases Nos. 700 and 701) and an interference proceeding (Inter Partes Case No. 709) filed by petitioner in 1973, all involving the same trademark and resulting in decisions favoring respondent's predecessor-in-interest, Ramon Angeles. 2. Procedural History: The Director of Patents initially ruled in favor of Ramon Angeles, denying petitioner's cancellation petitions and ordering the cancellation of petitioner's predecessor's registration. This decision was affirmed by the Court of Appeals in 1979. Subsequently, in the present Inter Partes Case No. 1807, the Director of Patents granted respondent's motion to dismiss on the ground of res judicata. The Court of Appeals initially set aside this dismissal but later revived it upon reconsideration, upholding the res judicata defense. 3. The Petition: This petition for review, filed under Rule 45, asks the Supreme Court to determine if the current petition for cancellation (Inter Partes Case No. 1807) is barred by res judicata due to the final decisions in prior cases (Inter Partes Cases Nos. 700, 701, and 709). Petitioner argued that a subsequent memorandum from the Minister of Trade and Industry, directing the rejection or cancellation of registrations for famous trademarks not owned by original users, superseded the prior rulings. The Supreme Court affirmed the Court of Appeals' decision, holding that the prior judgments were final, on the merits, and involved identical parties, subject matter, and cause of action, thus barring the current petition under the doctrine of res judicata. The Court found that the cited memorandum did not amend trademark law and that the issue of ownership, central to trademark registration, had already been litigated and settled.
Issue(s)
Whether the present petition for cancellation of trademark is barred by res judicata in light of prior final and executory decisions. Whether a memorandum from the Minister of Trade and Industry, directing the rejection of pending applications for registration of world-famous trademarks by parties other than their original owners, can override the principle of res judicata.
Ruling
The petition for review is DENIED. The resolution of the Court of Appeals reviving the decision of the Director of Patents dismissing the petition for cancellation on the ground of res judicata is AFFIRMED.
Ratio Decidendi
On the issue of res judicata: The Court affirmed the ruling that the present petition for cancellation is barred by res judicata. The Court reiterated the requisites for res judicata to apply: (1) a final judgment; (2) jurisdiction of the court over the subject matter and parties; (3) a judgment on the merits; and (4) identity of parties, subject matter, and cause of action. The Court found that all these requisites were met. The prior decisions in Inter Partes Cases Nos. 700, 701, and 709 had become final and executory as they were not appealed to the Supreme Court. The Director of Patents, whose decisions are reviewable by higher courts, exercises judicial functions, thus their decisions can be imbued with the character of res judicata. The parties (Wolverine Worldwide, Inc. and the predecessor-in-interest of Lolito P. Cruz), the subject matter (cancellation of the trademark HUSH PUPPIES and DEVICE), and the cause of action (alleged wrongful or erroneous registration of the trademark) were substantially identical in all the cases. The Court stressed that the principle of res judicata applies to proceedings for cancellation of trademarks before the Philippine Patent Office, citing Ipekjan Merchandising Co., Inc. vs. Court of Tax Appeals. On the effect of the Minister's Memorandum: The Court ruled that the memorandum from the Minister of Trade and Industry, directing the cancellation of registrations of world-famous trademarks obtained by parties other than their original owners, did not override the principle of res judicata. The Court clarified that the memorandum did not amend the Trademark Law but merely reiterated the existing policy of protecting owners of internationally known marks, which was already guaranteed under Republic Act No. 166. The Court found that the issue of whether petitioner fell within the protective ambit of the Paris Convention could have and should have been ventilated in the previous proceedings. The Court further stated that the memorandum had no room for application where the oppositor previously availed of the same remedy to contest and cancel the registration of the subject trademark but did not prevail, especially when the certificate of registration was issued after due hearing and the decision had become final and executory. Allowing repeated filings of cancellation petitions on substantially the same grounds would violate the doctrine of res judicata, as it would lead to endless litigation.
Main Doctrine
The principle of res judicata applies to proceedings for the cancellation of trademarks before the Philippine Patent Office, barring the re-litigation of issues already settled in prior final and executory decisions involving the same parties, subject matter, and cause of action.