Fredco v. Harvard University
REITERATIONFacts
The Antecedents: Fredco Manufacturing Corporation (Fredco) filed a Petition for Cancellation of Registration No. 56561 before the Intellectual Property Office (IPO) against President and Fellows of Harvard College (Harvard University). Fredco alleged that Harvard University's registration for the mark "Harvard Veritas Shield Symbol" for various goods was invalid because Fredco's predecessor-in-interest, New York Garments Manufacturing & Export Co., Inc., had prior use and registration of the mark "Harvard" for Class 25 goods in the Philippines since 1982 and 1988, respectively. Fredco itself was formed in 1995 to handle "Harvard" clothing articles. Harvard University, a US-based institution, claimed ownership of the "Harvard" name and mark worldwide, with adoption dating back to 1639 and commercial use since 1872, and numerous international registrations, including in the Philippines. Harvard University discovered Fredco's website advertising "Harvard Jeans USA" in 2002 and filed an administrative complaint for trademark infringement and/or unfair competition. Procedural History: The Bureau of Legal Affairs (BLA) of the IPO granted Fredco's petition and cancelled Harvard University's registration No. 56561 only with respect to Class 25 goods, acknowledging Harvard University's vested rights over other classes. Harvard University appealed to the Director General of the IPO, who reversed the BLA's decision, ruling that the right to register is based on ownership and that Fredco failed to explain its use of the "Harvard" mark and had no authorization from Harvard University. Fredco then petitioned the Court of Appeals (CA), which affirmed the Director General's decision, citing the principle of "unclean hands" and ruling that Harvard University substantiated its prior use and appropriation of the marks in Class 25 ahead of Fredco. Fredco's motion for reconsideration was denied, leading to the present petition before the Supreme Court. The Petition: Fredco filed a petition for review assailing the CA's decision, arguing that the CA committed a reversible error in affirming the IPO Director General's ruling.
Issue(s)
Whether the Court of Appeals committed a reversible error in affirming the decision of the Office of the Director General of the IPO, encompassing the issues of prior use, right to registration, and the impact of Harvard University's home registration under the Paris Convention. Whether Fredco has a better right to the "Harvard" mark for Class 25 goods compared to Harvard University, specifically considering whether Fredco's use of the mark falsely suggests a connection with Harvard University. Whether Harvard University's trademark registration should be cancelled based on Fredco's alleged prior use and registration, and whether the "Harvard" mark is protected as a well-known mark under the Paris Convention, irrespective of local registration or use.
Ruling
The petition is denied. The Supreme Court affirmed the decision of the Court of Appeals, which upheld the ruling of the IPO Director General, thereby upholding Harvard University's right to its "Harvard" mark and denying Fredco's petition for cancellation.
Ratio Decidendi
On the issue of prior use and right to registration; and the Court of Appeals' decision: The Court acknowledged Fredco's predecessor's prior use in the Philippines but clarified that Harvard University's registration was based on "home registration" under the Paris Convention, not requiring prior actual use in the Philippines. Marks registered under R.A. No. 166 are deemed granted under R.A. No. 8293, curing any defect. Fredco's registration was cancelled in 1998, meaning Fredco was no longer the registrant. The Court of Appeals did not commit reversible error in affirming the IPO's decision. On the issue of falsely suggesting a connection: The Court found that Fredco's use of the mark "Harvard," coupled with its claimed origin, falsely suggested a connection with Harvard University, violating Section 4(a) of R.A. No. 166. Fredco's justification was deemed a belated confirmation of its intent to exploit Harvard University's prestige and goodwill without consent, a ground for cancellation under Section 17(c) of the same Act. On the protection of well-known marks under the Paris Convention: The Philippines and the United States are signatories to the Paris Convention, which protects well-known marks and trade names, even without registration or use in the Philippines. The Court cited administrative directives implementing the Paris Convention, mandating the rejection or cancellation of applications for well-known trademarks by parties other than their original owners. "Harvard" is a well-known mark internationally and in the Philippines, protected under the Paris Convention and Section 123.1(e) of R.A. No. 8293, regardless of local registration or use.
Main Doctrine
A foreign entity's trademark, even if not registered or used in the Philippines, is protected under the Paris Convention if it is considered a well-known mark internationally and in the Philippines. Furthermore, registration of a mark that falsely suggests a connection with an institution is prohibited.