Mirpuri vs. Court of Appeals

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2. Mirpuri vs. Court of Appeals, G.R. No.

114508, November 19, 1999


Facts:
On June 15, 1970, Lolita Escobar, the predecessor in-interest of petitioner
Mirpuri, filed an application with the Bureau of Patents for the registration of the
trademark “Barbizon” for use in brassieres and ladies’ undergarments. Escobar alleged
that she had been manufacturing and selling these products under the firm name “L &
BM Commercial” since March 3, 1970.
Private respondent Barbizon Corporation, a corporation organized and doing
business under the laws of New York, U.S.A., opposed the application. It claimed that
the mark BARBIZON of respondent-applicant is confusingly similar to the trademark
BARBIZON which opposer owns and has not abandoned. This opposition was based on
specific provisions of the Trademark Law, i.e., Section 4 (d) on confusing similarity of
trademarks and Section 871 on the requisite damage to file an opposition to a petition
for registration.
This was docketed as Inter Partes Case No. 686 (IPC No. 686). After filing of the
pleadings, the parties submitted the case for decision. The Director of Patents rendered
judgment dismissing the opposition and giving due course to Escobar’s application.
Escobar later assigned all her rights and interest over the trademark to petitioner
Mirpuri who, under his firm name then, the “Bonito Enterprises,” was the sole and
exclusive distributor of Escobar’s “Barbizon” products. In 1979, however, Escobar failed
to file with the Bureau of Patents the Affidavit of Use of the trademark required under
Section 12 of Republic Act (R.A.) No. 166, the Philippine Trademark Law. Due to this
failure, the Bureau of Patents cancelled Escobar’s certificate of registration.
Escobar reapplied for registration of the cancelled trademark. Mirpuri filed his
own application for registration of Escobar’s trademark. Escobar later assigned her
application to herein petitioner and this application was opposed by private respondent.
The case was docketed IPC No. 2049.
In its opposition, private respondent instituted the Paris Convention, particularly
Article 6bis thereof, E.O. No. 913 and the two Memoranda of the Minister of Trade and
Industry- Villafuerte Memorandum and Ongpin Memorandum.
Replying to private respondent’s opposition, petitioner raised the defense of res
judicata. The Director of Patents rendered a decision declaring private respondent’s
opposition barred by res judicata and giving due course to petitioner’s application for
registration.
Private respondent questioned this decision before the Court of Appeals. CA
reversed the decision, finding that IPC No. 686 was not barred by judgment in IPC No.
2049 and ordered that the case be remanded to the Bureau of Patents for further
proceedings. Hence, this petition.
Issue:
Whether or not the Convention of Paris for the Protection of Industrial Property
affords protection to a foreign corporation against a Philippine applicant for the
registration of a similar trademark.
Held:
Yes. The Convention of Paris for the Protection of Industrial Property, otherwise
known as the Paris Convention, is a multilateral treaty that seeks to protect industrial
property consisting of patents, utility models, industrial designs, trademarks, service
marks, trade names and indications of source or appellations of origin, and at the same
time aims to repress unfair competition. The Convention is essentially a compact among
various countries which, as members of the Union, have pledged to accord to citizens of
the other member countries trademark and other rights comparable to those accorded
their own citizens by their domestic laws for an effective protection against unfair
competition. In short, foreign nationals are to be given the same treatment in each of the
member countries as that country makes available to its own citizens. Nationals of the
various member nations are thus assured of a certain minimum of international
protection of their industrial property.
The Court before ruling on the case discussed:
A “trademark” is defined under R.A. 166, the Trademark Law, as including “any
word, name, symbol, emblem, sign or device or any combination thereof adopted and
used by a manufacturer or merchant to identify his goods and distinguish them from
those manufactured, sold or dealt in by others.”
This definition has been simplified in R.A. No. 8293, the Intellectual Property
Code of the Philippines, which defines a “trademark” as “any visible sign capable of
distinguishing goods.” In Philippine jurisprudence, the function of a trademark is to point
out distinctly the origin or ownership of the goods to which it is affixed; to secure to him,
who has been instrumental in bringing into the market a superior article of merchandise,
the fruit of his industry and skill; to assure the public that they are procuring the genuine
article; to prevent fraud and imposition; and to protect the manufacturer against
substitution and sale of an inferior and different article as his product.
Three Distinct Functions of Trademarks: (1) they indicate origin or ownership of
the articles to which they are attached; (2) they guarantee that those articles come up to
a certain standard of quality; and (3) they advertise the articles they symbolize.
Today, the trademark is not merely a symbol of origin and goodwill—it is often
the most effective agent for the actual creation and protection of goodwill.

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