[G.R. No. 185917. June 1, 2011.]
FREDCO
MANUFACTURING CORPORATION, petitioner, vs. PRESIDENT AND FELLOWS OF HARVARD
COLLEGE (HARVARD UNIVERSITY), respondents.
DECISION
The Case
Before the Court is a
petition for review assailing the 24 October 2008
Decision and 8 January 2009 Resolution of the Court of Appeals in CA-G.R. SP
No. 103394.
The Antecedent
Facts
On 10 August 2005,
petitioner Fredco Manufacturing Corporation (Fredco), a corporation organized
and existing under the laws of the Philippines, filed a Petition for
Cancellation of Registration No. 56561 before the Bureau of Legal Affairs of
the Intellectual Property Office (IPO) against respondents President and
Fellows of Harvard College (Harvard University), a corporation organized and
existing under the laws of Massachusetts, United States of America. The case
was docketed as Inter Partes Case No. 14-2005-00094.
Fredco alleged that
Registration No. 56561 was issued to Harvard University on 25 November 1993 for
the mark "Harvard Veritas Shield Symbol" for decals, tote bags,
serving trays, sweatshirts, t-shirts, hats and flying discs under Classes 16,
18, 21, 25 and 28 of the Nice International Classification of Goods and
Services. Fredco alleged that the mark "Harvard" for t-shirts, polo
shirts, sandos, briefs, jackets and slacks was first used in the
Philippines on 2 January 1982 by New York Garments Manufacturing & Export
Co., Inc. (New York Garments), a domestic corporation and Fredco's
predecessor-in-interest. On 24 January 1985, New York Garments filed for
trademark registration of the mark "Harvard" for goods under Class
25. The application matured into a registration and a Certificate of
Registration was issued on 12 December 1988, with a 20-year term subject to
renewal at the end of the term. The registration was later assigned to Romeo
Chuateco, a member of the family that owned New York Garments.
Fredco alleged that it was
formed and registered with the Securities and Exchange Commission on 9 November
1995 and had since then handled the manufacture, promotion and marketing of
"Harvard" clothing articles. Fredco alleged that at the time of
issuance of Registration No. 56561 to Harvard. University, New York Garments
had already registered the mark "Harvard" for goods under Class 25.
Fredco alleged that the registration was cancelled on 30 July 1998 when New
York Garments inadvertently failed to file an affidavit of use/non-use on the
fifth anniversary of the registration but the right to the mark "Harvard"
remained with its predecessor New York Garments and now with Fredco.
Harvard University, on the
other hand, alleged that it is the lawful owner of the name and mark
"Harvard" in numerous countries worldwide, including the Philippines.
Among the countries where Harvard University has registered its name and mark
"Harvard" are:
1. Argentina
2. Benelux
3. Brazil
4. Canada
5. Chile
6. China
P.R.
7. Colombia
8. Costa
Rica
9. Cyprus
10. Czech
Republic
11. Denmark
12. Ecuador
13. Egypt
14. Finland
15. France
16. Great
Britain
17. Germany
18. Greece
19. Hong
Kong
20. India
21. Indonesia
22. Ireland
23. Israel
24. Italy
25. Japan
26. South
Korea
27. Malaysia
28. Mexico
29. New
Zealand
30. Norway
31. Peru
32. Philippines
33. Poland
34. Portugal
35. Russia
36. South
Africa
37. Switzerland
38. Singapore
39. Slovak
Republic
40. Spain
41. Sweden
42. Taiwan
43. Thailand
44. Turkey
45. United
Arab Emirates
46. Uruguay
47. United
States of America
48. Venezuela
49. Zimbabwe
50. European
Community
The name and mark
"Harvard" was adopted in 1639 as the name of Harvard College of
Cambridge, Massachusetts, U.S.A. The name and mark "Harvard" was
allegedly used in commerce as early as 1872. Harvard University is over 350
years old and is a highly regarded institution of higher learning in the United
States and throughout the world. Harvard University promotes, uses, and
advertises its name "Harvard" through various publications, services,
and products in foreign countries, including the Philippines. Harvard
University further alleged that the name and the mark have been rated as one of
the most famous brands in the world, valued between US$750,000,000 and
US$1,000,000,000.
Harvard University alleged
that in March 2002, it discovered, through its international trademark watch
program, Fredco's website www.harvard-usa.com. The website advertises and
promotes the brand name "Harvard Jeans USA" without Harvard
University's consent. The website's main page shows an oblong logo bearing the
mark "Harvard Jeans USA®," "Established 1936," and
"Cambridge, Massachusetts." On 20 April 2004, Harvard University
filed an administrative complaint against Fredco before the IPO for trademark
infringement and/or unfair competition with damages.
Harvard University alleged that
its valid and existing certificates of trademark registration in the
Philippines are:
1. Trademark
Registration No. 56561 issued on 25 November 1993 for "Harvard Veritas
Shield Design" for goods and services in Classes 16, 18, 21, 25 and 28
(decals, tote bags, serving trays, sweatshirts, t-shirts, hats and flying
discs) of the Nice International Classification of Goods and Services;
2. Trademark
Registration No. 57526 issued on 24 March 1994 for "Harvard Veritas Shield
Symbol" for services in Class 41; Trademark Registration No. 56539 issued
on 25 November 1998 for "Harvard" for services in Class 41; and
3. Trademark
Registration No. 66677 issued on 8 December 1998 for "Harvard
Graphics" for goods in Class 9. Harvard University further alleged that it
filed the requisite affidavits of use for the mark "Harvard Veritas Shield
Symbol" with the IPO.
Further, on 7 May 2003
Harvard University filed Trademark Application No. 4-2003-04090 for
"Harvard Medical International & Shield Design" for services in
Classes 41 and 44. In 1989, Harvard University established the Harvard
Trademark Licensing Program, operated by the Office for Technology and
Trademark Licensing, to oversee and manage the worldwide licensing of the
"Harvard" name and trademarks for various goods and services. Harvard
University stated that it never authorized or licensed any person to use its
name and mark "Harvard" in connection with any goods or services in
the Philippines.
In a Decision dated 22
December 2006, Director Estrellita Beltran-Abelardo of the Bureau of Legal
Affairs, IPO cancelled Harvard University's registration of the mark
"Harvard" under Class 25, as follows:
WHEREFORE,
premises considered, the Petition for Cancellation is hereby GRANTED.
Consequently, Trademark Registration Number 56561 for the trademark
"HARVARD VE RI TAS 'SHIELD' SYMBOL" issued on November 25, 1993 to
PRESIDENT AND FELLOWS OF HARVARD COLLEGE (HARVARD UNIVERSITY) should be
CANCELLED only with respect to goods falling under Class 25. On the other hand,
considering that the goods of Respondent-Registrant falling under Classes 16,
18, 21 and 28 are not confusingly similar with the Petitioner's goods, the
Respondent-Registrant has acquired vested right over the same and therefore,
should not be cancelled.
Let the
filewrapper of the Trademark Registration No. 56561 issued on November 25, 1993
for the trademark "HARVARD VE RI TAS 'SHIELD' SYMBOL", subject matter
of this case together with a copy of this Decision be forwarded to the Bureau
of Trademarks (BOT) for appropriate action.
SO ORDERED.
Harvard University filed an
appeal before the Office of the Director General of the IPO. In a Decision
dated 21 April 2008, the Office of the Director General, IPO reversed the
decision of the Bureau of Legal Affairs, IPO.
The Director General ruled
that more than the use of the trademark in the Philippines, the applicant must
be the owner of the mark sought to be registered. The Director General ruled
that the right to register a trademark is based on ownership and when the
applicant is not the owner, he has no right to register the mark. The Director
General noted that the mark covered by Harvard University's Registration No.
56561 is not only the word "Harvard" but also the logo, emblem or
symbol of Harvard University. The Director General ruled that Fredco failed to
explain how its predecessor New York Garments came up with the mark
"Harvard." In addition, there was no evidence that Fredco or New York
Garments was licensed or authorized by Harvard University to use its name in
commerce or for any other use.
The dispositive portion of
the decision of the Office of the Director General, IPO reads:
WHEREFORE,
premises considered, the instant appeal is GRANTED. The appealed decision is
hereby REVERSED and SET ASIDE. Let a copy of this Decision as well as the
trademark application and records be furnished and returned to the Director of
Bureau of Legal Affairs for appropriate action. Further, let also the Directors
of the Bureau of Trademarks and the Administrative, Financial and Human
Resources Development Services Bureau, and the library of the Documentation,
Information and Technology Transfer Bureau be furnished a copy of this Decision
for information, guidance, and records purposes.
SO ORDERED.
Fredco filed a petition for
review before the Court of Appeals assailing the decision of the Director
General.
The Decision of
the Court of Appeals
In its assailed decision,
the Court of Appeals affirmed the decision of the Office of the Director
General of the IPO.
The Court of Appeals adopted
the findings of the Office of the Director General and ruled that the latter
correctly set aside the cancellation by the Director of the Bureau of Legal
Affairs of Harvard University's trademark registration under Class 25. The
Court of Appeals ruled that Harvard University was able to substantiate that it
appropriated and used the marks "Harvard" and "Harvard Veritas
Shield Symbol" in Class 25 way ahead of Fredco and its predecessor New
York Garments. The Court of Appeals also ruled that the records failed to
disclose any explanation for Fredco's use of the name and mark
"Harvard" and the words "USA," "Established
1936," and "Cambridge, Massachusetts" within an oblong device,
"US Legend" and "Europe's No. 1 Brand." Citing Shangri-La
International Hotel Management, Ltd. v Developers Group of Companies, Inc.,
the Court of Appeals ruled:
One who has
imitated the trademark of another cannot bring an action for infringement,
particularly against the true owner of the mark, because he would be coming to
court with unclean hands. Priority is of no avail to the bad faith plaintiff.
Good faith is required in order to ensure that a second user may not merely
take advantage of the goodwill established by the true owner.
The dispositive portion of
the decision of the Court of Appeals reads:
WHEREFORE,
premises considered, the petition for review is DENIED. The Decision dated
April 21, 2008 of the Director General of the IPO in Appeal No. 14-07-09 Inter
Partes Case No. 14-2005-00094 is hereby AFFIRMED.
SO ORDERED.
Fredco filed a motion for reconsideration.
In its Resolution
promulgated on 8 January 2009, the Court of Appeals denied the motion for lack
of merit.
Hence, this petition before
the Court.
The Issue
The issue in this case is
whether the Court of Appeals committed a reversible error in affirming the
decision of the Office of the Director General of the IPO.
The Ruling of
this Court
The petition has no merit.
There is no dispute that the
mark "Harvard" used by Fredco is the same as the mark
"Harvard" in the "Harvard Veritas Shield Symbol" of Harvard
University. It is also not disputed that Harvard University was named Harvard
College in 1639 and that then, as now, Harvard University is located in
Cambridge, Massachusetts, U.S.A. It is also unrefuted that Harvard University
has been using the mark "Harvard" in commerce since 1872. It is also
established that Harvard University has been using the marks
"Harvard" and "Harvard Veritas Shield Symbol" for Class 25
goods in the United States since 1953. Further, there is no dispute that
Harvard University has registered the name and mark "Harvard" in at
least 50 countries.
On the other hand, Fredco's
predecessor-in-interest, New York Garments, started using the mark
"Harvard" in the Philippines only in 1982. New York Garments filed an
application with the Philippine Patent Office in 1985 to register the mark
"Harvard," which application was approved in 1988. Fredco insists
that the date of actual use in the Philippines should prevail on the issue of
who has the better right to register the marks.
Under Section 2 of Republic
Act No. 166, as amended (R.A. No. 166), before a trademark can be
registered, it must have been actually used in commerce for not less than two
months in the Philippines prior to the filing of an application for its
registration. While Harvard University had actual prior use of its marks abroad
for a long time, it did not have actual prior use in the Philippines of the
mark "Harvard Veritas Shield Symbol" before its application for
registration of the mark "Harvard" with the then Philippine Patents
Office. However, Harvard University's registration of the name
"Harvard" is based on home registration which is allowed under
Section 37 of R.A. No. 166. As pointed out by Harvard University in its
Comment:
Although Section
2 of the Trademark law (R.A. 166) requires for the registration
of trademark that the applicant thereof must prove that the same has been
actually in use in commerce or services for not less than two (2) months in the
Philippines before the application for registration is filed, where the
trademark sought to be registered has already been registered in a foreign
country that is a member of the Paris Convention, the requirement of proof of
use in the commerce in the Philippines for the said period is not necessary. An
applicant for registration based on home certificate of registration need not
even have used the mark or trade name in this country.
Indeed, in its Petition for
Cancellation of Registration No. 56561, Fredco alleged that Harvard
University's registration "is based on 'home registration' for the mark
'Harvard Veritas Shield' for Class 25."
In any event, under Section
239.2 of Republic Act No. 8293 (R.A. No. 8293), "[m]arks registered
under Republic Act No. 166 shall remain in force but shall be deemed
to have been granted under this Act . . .," which does not require
actual prior use of the mark in the Philippines. Since the mark "Harvard
Veritas Shield Symbol" is now deemed granted under R.A. No. 8293,
any alleged defect arising from the absence of actual prior use in the
Philippines has been cured by Section 239.2. In addition, Fredco's registration
was already cancelled on 30 July 1998 when it failed to file the required
affidavit of use/non-use for the fifth anniversary of the mark's registration.
Hence, at the time of Fredco's filing of the Petition for Cancellation before
the Bureau of Legal Affairs of the IPO, Fredco was no longer the registrant or
presumptive owner of the mark "Harvard."
There are two compelling
reasons why Fredco's petition must fail.
First, Fredco's
registration of the mark "Harvard" and its identification of origin
as "Cambridge, Massachusetts" falsely suggest that Fredco or its
goods are connected with Harvard University, which uses the same mark "Harvard"
and is also located in Cambridge, Massachusetts. This can easily be gleaned
from the following oblong logo of Fredco that it attaches to its clothing line:
Fredco's registration of the
mark "Harvard" should not have been allowed becauseSection 4 (a) of R.A.
No. 166 prohibits the registration of a mark "which may disparage or falsely
suggest a connection with persons, living or dead, institutions,
beliefs . . . ." Section 4 (a) of R.A. No. 166 provides:
Section 4. Registration
of trade-marks, trade-names and service-marks on the principal register. —
There is hereby established a register of trade-mark, trade-names and
service-marks which shall be known as the principal register. The owner of a
trade-mark, a trade-name or service-mark used to distinguish his goods,
business or services from the goods, business or services of others shall have
the right to register the same on the principal register, unless it:
(a) Consists
of or comprises immoral, deceptive or scandalous manner, or matter which may
disparage or falsely suggest a connection with persons, living or dead, institutions,
beliefs, or national symbols, or bring them into contempt or disrepute;
(b) . . .
(emphasis supplied)
Fredco's use of the mark
"Harvard," coupled with its claimed origin in Cambridge,
Massachusetts, obviously suggests a false connection with Harvard University.
On this ground alone, Fredco's registration of the mark "Harvard"
should have been disallowed.
Indisputably, Fredco does
not have any affiliation or connection with Harvard University, or even with
Cambridge, Massachusetts. Fredco or its predecessor New York Garments was not
established in 1936, or in the U.S.A. as indicated by Fredco in its oblong
logo. Fredco offered no explanation to the Court of Appeals or to the IPO why
it used the mark "Harvard" on its oblong logo with the words
"Cambridge, Massachusetts," "Established in 1936," and
"USA." Fredco now claims before this Court that it used these words
"to evoke a 'lifestyle' or suggest a 'desirable aura' of petitioner's clothing
lines." Fredco's belated justification merely confirms that it sought to
connect or associate its products with Harvard University, riding on the
prestige and popularity of Harvard University, and thus appropriating part of
Harvard University's goodwill without the latter's consent.
Section 4 (a) of R.A. No.
166 is identical to Section 2 (a) of the Lanham Act, the trademark law
of the United States. These provisions are intended to protect the right of
publicity of famous individuals and institutions from commercial
exploitation of their goodwill by others. What Fredco has done in using the
mark "Harvard" and the words "Cambridge, Massachusetts,"
"USA" to evoke a "desirable aura" to its products is
precisely to exploit commercially the goodwill of Harvard University without
the latter's consent. This is a clear violation of Section 4 (a) of R.A. No.
166. Under Section 17 (c) 22 of R.A. No. 166, such violation
is a ground for cancellation of Fredco's registration of the mark
"Harvard" because the registration was obtained in violation of
Section 4 of R.A. No. 166.
Second, the Philippines
and the United States of America are both signatories to the Paris Convention
for the Protection of Industrial Property (Paris Convention). The Philippines
became a signatory to the Paris Convention on 27 September 1965. Articles 6bis
and 8 of the Paris Convention state:
ARTICLE 6bis
(i) The
countries of the Union undertake either administratively if their legislation
so permits, or at the request of an interested party, to refuse or to cancel
the registration and to prohibit the use of a trademark which constitutes a reproduction,
imitation or translation, liable to create confusion or a mark considered by
the competent authority of the country as being already the mark of a person
entitled to the benefits of the present Convention and used for identical or
similar goods. These provisions shall also apply when the essential part of the
mark constitutes a reproduction of any such well-known mark or an imitation
liable to create confusion therewith.
ARTICLE 8
A trade name
shall be protected in all the countries of the Union without the obligation
of filing or registration, whether or not it forms part of a trademark.
(Emphasis supplied)
Thus, this Court has ruled
that the Philippines is obligated to assure nationals of countries of the Paris
Convention that they are afforded an effective protection against violation of
their intellectual property rights in the Philippines in the same way that
their own countries are obligated to accord similar protection to Philippine
nationals.
Article 8 of the Paris
Convention has been incorporated in Section 37 of R.A. No. 166, as
follows:
Section 37. Rights
of foreign registrants. — Persons who are nationals of, domiciled in, or
have a bona fide or effective business or commercial establishment in
any foreign country, which is a party to any international convention or treaty
relating to marks or trade-names, or the repression of unfair competition to
which the Philippines may be a party, shall be entitled to the benefits and
subject to the provisions of this Act to the extent and under the conditions
essential to give effect to any such convention and treaties so long as the
Philippines shall continue to be a party thereto, except as provided in the
following paragraphs of this section.
xxx xxx xxx
Trade-names of
persons described in the first paragraph of this section shall be protected
without the obligation of filing or registration whether or not they form parts
of marks.
xxx xxx xxx
(Emphasis supplied)
Thus, under Philippine law,
a trade name of a national of a State that is a party to the Paris Convention,
whether or not the trade name forms part of a trademark, is protected
"without the obligation of filing or registration."
"Harvard" is the
trade name of the world famous Harvard University, and it is also a trademark
of Harvard University. Under Article 8 of the Paris Convention, as well as
Section 37 of R.A. No. 166, Harvard University is entitled to protection
in the Philippines of its trade name "Harvard" even without
registration of such trade name in the Philippines. This means that no
educational entity in the Philippines can use the trade name
"Harvard" without the consent of Harvard University. Likewise, no
entity in the Philippines can claim, expressly or impliedly through the use of
the name and mark "Harvard," that its products or services are
authorized, approved, or licensed by, or sourced from, Harvard University
without the latter's consent.
Article 6bis of the
Paris Convention has been administratively implemented in the Philippines
through two directives of the then Ministry (now Department) of Trade, which
directives were upheld by this Court in several cases. On 20 November 1980,
then Minister of Trade Secretary Luis Villafuerte issued a Memorandum directing
the Director of Patents to reject, pursuant to the Paris Convention, all
pending applications for Philippine registration of signature and other
world-famous trademarks by applicants other than their original owners. The
Memorandum states:
Pursuant to the
Paris Convention for the Protection of Industrial Property to which the
Philippines is a signatory, you are hereby directed to reject all pending
applications for Philippine registration of signature and other world-famous
trademarks by applicants other than its original owners or users.
The conflicting
claims over internationally known trademarks involve such name brands as
Lacoste, Jordache, Vanderbilt, Sasson, Fila, Pierre Cardin, Gucci, Christian
Dior, Oscar de la Renta, Calvin Klein, Givenchy, Ralph Lauren, Geoffrey Beene,
Lanvin and Ted Lapidus.
It is further
directed that, in cases where warranted, Philippine registrants of such
trademarks should be asked to surrender their certificates of registration, if
any, to avoid suits for damages and other legal action by the trademarks'
foreign or local owners or original users.
You are also
required to submit to the undersigned a progress report on the matter.
For immediate
compliance.
In a Memorandum dated 25
October 1983, then Minister of Trade and Industry Roberto Ongpin affirmed the
earlier Memorandum of Minister Villafuerte. Minister Ongpin directed the
Director of Patents to implement measures necessary to comply with the
Philippines' obligations under the Paris Convention, thus:
1. Whether
the trademark under consideration is well-known in the Philippines or is a mark
already belonging to a person entitled to the benefits of the CONVENTION, this
should be established, pursuant to Philippine Patent Office procedures in
inter partes and ex parte cases, according to any of the
following criteria or any combination thereof:
(a) a
declaration by the Minister of Trade and Industry that the trademark being
considered is already well-known in the Philippines such that permission for
its use by other than its original owner will constitute a reproduction,
imitation, translation or other infringement;
(b) that the
trademark is used in commerce internationally, supported by proof that goods
bearing the trademark are sold on an international scale, advertisements, the
establishment of factories, sales offices, distributorships, and the like, in
different countries, including volume or other measure of international trade
and commerce;
(c) that
the trademark is duly registered in the industrial property office(s) of
another country or countries, taking into consideration the dates of such
registration;
(d) that the
trademark has been long established and obtained goodwill and general
international consumer recognition as belonging to one owner or source;
(e) that the
trademark actually belongs to a party claiming ownership and has the right to
registration under the provisions of the aforestated PARIS CONVENTION.
2. The
word trademark, as used in this MEMORANDUM, shall include tradenames, service
marks, logos, signs, emblems, insignia or other similar devices used for
identification and recognition by consumers.
3. The Philippine
Patent Office shall refuse all applications for, or cancel the registration of,
trademarks which constitute a reproduction, translation or imitation of a
trademark owned by a person, natural or corporate, who is a citizen of a
country signatory to the PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL
PROPERTY.
xxx xxx xxx
(Emphasis supplied)
In Mirpuri, the Court
ruled that the essential requirement under Article 6bis of the Paris
Convenmtion is that the trademark to be protected must be
"well-known" in the country where protection is sought. The Court
declared that the power to determine whether a trademark is well-known lies in
the competent authority of the country of registration or use. The Court then
stated that the competent authority would either be the registering authority
if it has the power to decide this, or the courts of the country in question if
the issue comes before the courts.
To be protected under the
two directives of the Ministry of Trade, an internationally well-known mark
need not be registered or used in the Philippines. All that is required is that
the mark is well-known internationally and in the Philippines for identical or
similar goods, whether or not the mark is registered or used in the
Philippines. The Court ruled in Sehwani, Incorporated v. In-N-Out Burger,
Inc.:
The fact that
respondent's marks are neither registered nor used in the Philippines is of no
moment. The scope of protection initially afforded by Article 6bis of
the Paris Convention has been expanded in the 1999 Joint Recommendation
Concerning Provisions on the Protection of Well-Known Marks, wherein the
World Intellectual Property Organization (WIPO) General Assembly and the Paris
Union agreed to a nonbinding recommendation that a well-known mark should be
protected in a country even if the mark is neither registered nor used in that
country. Part I, Article 2(3) thereof provides:
(3) [Factors
Which Shall Not Be Required] (a) A Member State shall not require, as a
condition for determining whether a mark is a well-known mark:
(i) that
the mark has been used in, or that the mark has been registered or that an
application for registration of the mark has been filed in or in respect of,
the Member State;
(ii) that
the mark is well known in, or that the mark has been registered or that an
application for registration of the mark has been filed in or in respect of,
any jurisdiction other than the Member State; or
(iii) that
the mark is well known by the public at large in the Member State. (Italics in
the original decision; boldface supplied)
Indeed, Section 123.1 (e) of
R.A. No. 8293 now categorically states that "a mark which is
considered by the competent authority of the Philippines to be well-known
internationally and in the Philippines, whether or not it is registered here,"
cannot be registered by another in the Philippines. Section 123.1 (e) does not
require that the well-known mark be used in commerce in the Philippines but
only that it be well-known in the Philippines. Moreover, Rule 102 of the Rules
and Regulations on Trademarks, Service Marks, Trade Names and Marked or Stamped
Containers, which implement R.A. No. 8293, provides:
Rule
102. Criteria for determining whether a mark is well-known. In determining
whether a mark is well-known, the following criteria or any combination
thereof may be taken into account:
(a) the
duration, extent and geographical area of any use of the mark, in particular,
the duration, extent and geographical area of any promotion of the mark,
including advertising or publicity and the presentation, at fairs or
exhibitions, of the goods and/or services to which the mark applies;
(b) the
market share, in the Philippines and in other countries, of the goods and/or
services to which the mark applies;
(c) the
degree of the inherent or acquired distinction of the mark;
(d) the
quality-image or reputation acquired by the mark;
(e) the
extent to which the mark has been registered in the world;
(f) the
exclusivity of registration attained by the mark in the world;
(g) the
extent to which the mark has been used in the world;
(h) the
exclusivity of use attained by the mark in the world;
(i) the
commercial value attributed to the mark in the world;
(j) the
record of successful protection of the rights in the mark;
(k) the
outcome of litigations dealing with the issue of whether the mark is a
well-known mark; and
(l) the
presence or absence of identical or similar marks validly registered for or
used on identical or similar goods or services and owned by persons other than
the person claiming that his mark is a well-known mark. (Emphasis supplied)
Since "any
combination" of the foregoing criteria is sufficient to determine that
a mark is well-known, it is clearly not necessary that the mark be used in
commerce in the Philippines. Thus, while under the territoriality principle a
mark must be used in commerce in the Philippines to be entitled to protection,
internationally well-known marks are the exceptions to this rule.
In the assailed Decision of
the Office of the Director General dated 21 April 2008, the Director General
found that:
Traced to its
roots or origin, HARVARD is not an ordinary word. It refers to no other than
Harvard University, a recognized and respected institution of higher learning
located in Cambridge, Massachusetts, U.S.A. Initially referred to simply as
"the new college," the institution was named "Harvard
College" on 13 March 1639, after its first principal donor, a young
clergyman named John Harvard. A graduate of Emmanuel College, Cambridge in
England, John Harvard bequeathed about four hundred books in his will to form
the basis of the college library collection, along with half his personal
wealth worth several hundred pounds. The earliest known official reference to
Harvard as a "university" rather than "college" occurred in
the new Massachusetts Constitution of 1780. IcTaAH
Records also show
that the first use of the name HARVARD was in 1638 for educational services,
policy courses of instructions and training at the university level. It has a
Charter. Its first commercial use of the name or mark HARVARD for Class 25 was
on 31 December 1953 covered by UPTON Reg. No. 2,119,339 and 2,101,295. Assuming
in arguendo, that the Appellate may have used the mark HARVARD in the
Philippines ahead of the Appellant, it still cannot be denied that the
Appellant's use thereof was decades, even centuries, ahead of the Appellee's.
More importantly, the name HARVARD was the name of a person whose deeds were
considered to be a cornerstone of the university. The Appellant's logos,
emblems or symbols are owned by Harvard University. The name HARVARD and the
logos, emblems or symbols are endemic and cannot be separated from the
institution.
Finally, in its assailed
Decision, the Court of Appeals ruled:
Records show that
Harvard University is the oldest and one of the foremost educational
institutions in the United States, it being established in 1636. It is located
primarily in Cambridge, Massachusetts and was named after John Harvard, a
puritan minister who left to the college his books and half of his estate.
The mark
"Harvard College" was first used in commerce in the United States in
1638 for educational services, specifically, providing courses of instruction
and training at the university level (Class 41). Its application for
registration with the United States Patent and Trademark Office was filed on
September 20, 2000 and it was registered on October 16, 2001. The marks
"Harvard" and "Harvard Ve ri tas 'Shield' Symbol" were
first used in commerce in the United States on December 31, 1953 for athletic
uniforms, boxer shorts, briefs, caps, coats, leather coats, sports coats, gym
shorts, infant jackets, leather jackets, night shirts, shirts, socks, sweat
pants, sweatshirts, sweaters and underwear (Class 25). The applications for
registration with the USPTO were filed on September 9, 1996, the mark
"Harvard" was registered on December 9, 1997 and the mark
"Harvard Ve ri tas 'Shield' Symbol" was registered on September 30,
1997.
We also note that in a
Decision dated 18 December 2008 involving a separate case between Harvard
University and Streetward International, Inc., the Bureau of Legal Affairs
of the IPO ruled that the mark "Harvard" is a "well-known
mark." This Decision, which cites among others the numerous trademark
registrations of Harvard University in various countries, has become final and
executory.
There is no question then,
and this Court so declares, that "Harvard" is a well-known name and
mark not only in the United States but also internationally, including the
Philippines. The mark "Harvard" is rated as one of the most famous
marks in the world. It has been registered in at least 50 countries. It has
been used and promoted extensively in numerous publications worldwide. It has
established a considerable goodwill worldwide since the founding of Harvard
University more than 350 years ago. It is easily recognizable as the trade name
and mark of Harvard University of Cambridge, Massachusetts, U.S.A.,
internationally known as one of the leading educational institutions in the
world. As such, even before Harvard University applied for registration of the
mark "Harvard" in the Philippines, the mark was already protected
under Article 6bis and Article 8 of the Paris Convention. Again, even
without applying the Paris Convention, Harvard University can invoke Section 4
(a) of R.A. No. 166 which prohibits the registration of a mark
"which may disparage or falsely suggest a connection with persons,
living or dead, institutions, beliefs . . . ."
WHEREFORE, we DENY
the petition. We AFFIRM the 24 October 2008 Decision and 8 January 2009
Resolution of the Court of Appeals in CA-G.R. SP No. 103394.
SO ORDERED.