Case Title:

IRKENSTOCK ORTHOPAEDIE GMBH AND CO. KG (formerly BIRKENSTOCK ORTHOPAEDIE

GMBH), petitioner, vs. PHILIPPINE SHOE EXPO MARKETING CORPORATION, respondent.

[G.R. No. 194307. November 20, 2013.]

Petitioner’s Claim: 

Petitioner filed a petition for cancellation of Registration No. 56334 on the ground that it is the lawful and

rightful owner of the Birkenstockmarks.

Respondent’s Claim: 

In response, respondent claims, inter alia, that:

(a) Respondent, together with its predecessor-in-interest, has been using Birkenstock marks in the

Philippines for more than 16 years through the mark "BIRKENSTOCK AND DEVICE".

(b) The marks covered by the subject applications are identical to the one covered by Registration

 No. 56334 and thus, petitioner has no right to the registration of such marks.

(c) Respondent's predecessor-in-interest likewise obtained a Certificate of Copyright Registration No. 0-

11193 for the word "BIRKENSTOCK".

(d) While respondent and its predecessor-in-interest failed to file the 10th Year DAU, it continued the use

of "BIRKENSTOCK AND DEVICE" in lawful commerce.

(e) to record its continued ownership and exclusive right to use the "BIRKENSTOCK" marks, it has filed

TASN 4-2006-010273 as a "re-application" of its old registration, Registration No. 56334.

Issue/s:

Whether or not the subject marks should be allowed registration in the name of petitioner?

 

Court’s ruling:

Yes, It is well-settled that "the rules of procedure are mere tools aimed at facilitating the attainment of

 justice, rather than its frustration. A strict and rigid application of the rules must always be eschewed

when it would subvert the primary objective of the rules, that is, to enhance fair trials and expedite justice.

Technicalities should never be used to defeat the substantive rights of the other party.

In the case at bar, while petitioner submitted mere photocopies as documentary evidence in the

Consolidated Opposition Cases, it should be noted that the IPO had already obtained the originals of such

documentary evidence in the related Cancellation Case earlier filed before it.

In addition, Section 12 of Republic Act No. (RA) 166, requires the filing of a DAU on specified periods,

to wit: “That registrations under the provisions of this Act shall be cancelled by the Director, unless

within one year following the fifth, tenth and fifteenth anniversaries of the date of issue of the

certificate of registration, the registrant shall file in the Patent Office an affidavit showing that the

mark or trade-name is still in use” 

The aforementioned provision clearly reveals that failure to file the DAU within the requisite period

results in the automatic cancellation of registration of a trademark. In turn, such failure is tantamount to

the abandonment or withdrawal of any right or interest the registrant has over his trademark.

Lastly, in the instant case, petitioner was able to establish that it is the owner of the mark

"BIRKENSTOCK." It submitted evidence relating to the origin and history of "BIRKENSTOCK" and its

use in commerce long before respondent was able to register the same here in the Philippines. It has

sufficiently proven that "BIRKENSTOCK" was first adopted in Europe in 1774 by its inventor, Johann

Birkenstock, a shoemaker, on his line of quality footwear and thereafter, numerous generations of his kin

continuously engaged in the manufacture and sale of shoes and sandals bearing the mark

"BIRKENSTOCK" until it became the entity now known as the petitioner.

 

Case Title:

SONIC STEEL INDUSTRIES, INC., complainant, vs. ATTY. NONNATUS P. CHUA, respondent

[A.C. No. 6942. July 17, 2013.]

Petitioner’s Claim: 

Complainant asserts that respondent performed the ensuing acts:

(a)  In stating that STEELCORP is the exclusive licensee of Philippine Patent No. 16269,

[“GALVALUME" metal sheet products, which are coated with aluminum -zinc alloy, produced

 by using the technical information and the patent on Hot Dip Coating of Ferrous Strands],

respondent deliberately misled the court as well as the Department of Justice, because Letters

Patent No. 16269 have already lapsed, making it part of the public domain.

(b)  In refusing to provide the RTC of Cavite City, Branch 17 a copy of the patent, respondent

intentionally deceived said court because even the first page of the patent will clearly show that

said patent already lapsed. Had respondent shown a copy of the patent to the judge, said judge

would not have been misled into issuing the search warrant.

Respondent’s Claim: 

Respondent counters that he never made an allegation or reservation that STEELCORP owned Philippine

Patent No. 16269. He asserts that he merely reserved the right to present the trademark license exclusively

licensed to STEELCORP by BIEC International, Inc. which is composed of the technical information and

the patent used to produce GALVALUME metal sheet products, the same technology being utilized by

complainant without authority from STEELCORP.

Respondent further avers that the Complaint-Affidavit filed before the Department of Justice did not

categorically claim that STEELCORP is the owner of the patent, but simply that STEELCORP is the

exclusive licensee of the process by which GALVALUME is produced.

Issue/s:

Whether or not complainant commits a violation of Section 168 of Republic Act No. 8293?

 

Court’s Ruling:

In the present case, it appears that respondent claimed or made to appear that STEELCORP was the

licensee of the technical information and  the patent on Hot Dip Coating of Ferrous Strands or Philippine

Patent No. 16269. However, an extensive investigation made by the IBP's Commission on Bar Discipline

showed that STEELCORP only has rights as a licensee of the technical information and not the rights as a

licensee of the patent.

Under the TECHNICAL INFORMATION AND PATENT LICENSE AGREEMENT between

STEELCORP and BIEC International, Inc., the terms "technical information" and "patent" are separate

and distinct. Thus, technical information is defined under such contract as "Licensor's existing proprietary

data, know-how and technical information which relates to the subject of Sheet and/or Strip coated with

an aluminum-zinc alloy . . . and to facilities and equipment for the manufacture and use thereof and to

data, know-how and technical information applicable thereto as of the Effective Date . . . ." On the other

hand, Licensed Patent is defined therein as "Patent No. 16269" entitled "Hot dip coating of ferrous

strands." The combination of such proprietary data, know-how and the patent on Hot Dip Coating of

Ferrous Strands is the process over which STEELCORP claims it had proprietary license, and represents

the same process used by STEELCORP in producing GALVALUME products.

Lastly, from the time that STEELCORP applied for a search warrant over SONIC STEEL's premises,

Patent No. 16269 had long expired. This fact is crucial in that the license STEELCORP had, as claimed

 by respondent, was over the entire process and not just the technical information as a component thereof.

Accordingly, when the application for search was filed and when respondent subscribed to his Complaint-

Affidavit before the Department of Justice, STEELCORP had no more exclusive license to Patent No.

16269. Said patent had already become free for anyone's use, including SONIC STEEL. All that

STEELCORP possessed during those times was the residual right to use (even if exclusively) just the

technical information defined in its agreement with BIEC International, Inc. STEELCORP had only an

incomplete license over the process.