Ecole de Cuisine Manille v. Cointreau
REITERATIONFacts
The Antecedents: Renaud Cointreau & Cie (Cointreau), a French partnership, filed a trademark application for "LE CORDON BLEU & DEVICE" in the Philippines on June 21, 1990, based on its French registration from November 25, 1986. Ecole de Cuisine Manille, Inc. (Ecole) opposed this application, claiming it owned the mark "LE CORDON BLEU, ECOLE DE CUISINE MANILLE" since 1948 and had established goodwill, alleging Cointreau's use would cause confusion and damage. Cointreau asserted its ownership, stating Le Cordon Bleu is a world-renowned culinary school established in Paris in 1895, which had trained Ecole's directress. Cointreau also obtained registrations for "CORDON BLEU & DEVICE" and "LE CORDON BLEU PARIS 1895 & DEVICE" in the Philippines during the proceedings. Procedural History: The Bureau of Legal Affairs (BLA) of the Intellectual Property Office (IPO) sustained Ecole's opposition, ruling that Cointreau's foreign use was insufficient to establish Philippine rights under the doctrine of nationality or territoriality, and that Ecole had prior use and registration. The IPO Director General reversed this, finding Cointreau to be the true owner based on its long-standing international use and Ecole's failure to explain its appropriation of the mark, deeming it a bad faith appropriation. The Court of Appeals (CA) affirmed the IPO Director General's decision, declaring Cointreau the lawful owner entitled to registration. The Petition: Ecole filed a petition for review on certiorari, arguing that the CA erred in upholding the IPO Director General's ruling that Cointreau is the true and lawful owner of the subject mark and entitled to its registration.
Issue(s)
Whether the Court of Appeals erred in upholding the IPO Director General's ruling that Cointreau is the true and lawful owner of the subject mark and thus entitled to have the same registered under its name. Whether Ecole's prior use of the mark in the Philippines since 1948 bars Cointreau's registration despite Cointreau's earlier international use and registration.
Ruling
The petition is denied. The December 23, 2008 Decision of the Court of Appeals in CA-G.R. SP No. 104672 is affirmed in toto.
Ratio Decidendi
On the issue of ownership and right to registration: The Court held that under Republic Act No. 166 (R.A. No. 166), ownership of a trademark is acquired through actual use in commerce. Section 2-A of R.A. No. 166 clarifies that actual use is the test of ownership, and importantly, it does not require that the actual use must be within the Philippines. This means a party can be an owner of a mark due to its use abroad, even if they have not yet met the two-month prior use requirement in the Philippines for registration. Cointreau's undisputed use of the mark "LE CORDON BLEU" since 1895 in France, prior to Ecole's claimed use in 1948, establishes its ownership. Furthermore, Ecole's directress had trained at Cointreau's school, indicating awareness of Cointreau's prior use. The Court emphasized that even unregistered foreign marks are protected against infringement and unfair competition, especially since both the Philippines and France are signatories to the Paris Convention for the Protection of Industrial Property. Article 8 of the Paris Convention, incorporated into Section 37 of R.A. No. 166, protects trade names without the obligation of filing or registration. This provision obligates the Philippines to afford effective protection to nationals of signatory countries, mirroring the protection granted to Philippine nationals abroad. Cointreau, as a French national, is entitled to this protection. The BLA's reliance on the strict doctrine of territoriality, stating that use must be in commerce in the Philippines, was found insufficient in light of the Philippines' international commitments under the Paris Convention. While R.A. No. 166 generally requires use in Philippine commerce for registration, the Convention provides broader protection for well-known marks and trade names of foreign nationals, overriding a strict territorial application when international obligations are concerned. Cointreau's prior registration in its country of origin and its established international reputation were key factors. The Court noted that even under the current law, R.A. No. 8293, the requirement of prior actual use at the time of registration has been dispensed with, further strengthening the basis for allowing Cointreau's registration as the true and lawful owner. On Ecole's claim of prior use and bad faith appropriation: While Ecole claimed prior use in the Philippines since 1948, the Court found that it failed to establish a valid appropriation of the mark. Given Cointreau's established international use since 1895 and Ecole's directress's training at Cointreau's school, Ecole's claim of exclusive ownership was deemed untenable. The Court noted that Ecole only filed its application for trademark registration in 1992, after Cointreau had already filed its application in 1990. This, coupled with the awareness of Cointreau's mark, suggested that Ecole's appropriation was not in good faith, thus disqualifying it from protection under Section 4(d) of R.A. No. 166.
Main Doctrine
Under Republic Act No. 166, ownership of a trademark is established by actual use in commerce, but the right to register requires use in the Philippines for two months prior to application. However, foreign marks are protected under the Paris Convention, which mandates protection of well-known marks and trade names without the obligation of filing or registration, even if not used in the Philippines, provided the country of origin is a signatory.