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Mirpuri vs CA, GR No. 114508, 19November 1999, 318 SCRA 516 30 AM00000010000005331 2012 BY LADY GEORGINA
FACTS Lolita Escobar applied with the Bureau of Patents for the registration of the trademark “Barbizon”, alleging
that she had been manufacturing and selling these products since 1970. private respondent Barbizon Corp opposed
the application in IPC No. 686. The Bureau granted the application and a certificate of registration was issued for the
trademark “Barbizon”. Escobar later assigned all her rights and interest over the trademark to petitioner Mirpuri. In
1979, Escobar failed to file with the Bureau the Affidavit of Use of the trademark. Due to his failure, the Bureau
cancelled the certificate of registration. Escobar reapplied and Mirpuri also applied and this application was also
opposed by private respondent in IPC No. 2049, claiming that it adopted said trademark in 1933 and has been using
it. It obtained a certificate from the US Patent Office in 1934. Then in 1991, DTI cancelled petitioner’s registration
and declared private respondent the owner and prior user of the business name “Barbizon International”.
ISSUE
Whether or not the treaty (Paris Convention) affords protection to a foreign corporation against a Philippine
applicant for the registration of a similar trademark.
HELD
The Court held in the affirmative. RA 8293 defines trademark as any visible sign capable of distinguishing
goods. 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. 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.
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CANON KABUSHIKI KAISHA vs. COURT OF APPEALS
G.R. No. 120900, July 20, 2000
FACTS:
On January 15, 1985, private respondent NSR Rubber Corporation filed an application
for registration of the mark CANON for sandals in the Bureau of Patents, Trademarks, and
Technology Transfer (BPTTT). Canon Kabushiki Kaisha filed a Verified Notice of Opposition
alleging that it will be damaged by the registration of the trademark CANON in the name of
private respondent since they were using the same trademark for their footwear line of
products. The private respondent will also use the name Canon for its footwear products.
Based on the records, the evidence presented by petitioner consisted of its certificates of
registration for the mark CANON in various countries covering goods belonging to class 2,
paints, chemical products, toner, and dye stuff. Petitioner also submitted in evidence its
Philippine Trademark Registration No. 39398, showing its ownership over the trademarkCANON.
The BPTTT, on November 10, 1992, issued its decision dismissing the opposition of
petitioner and giving due course to NSR's application for the registration of the trademark
CANON. Canon Kabushiki Kaisha filed an appeal with the Court of Appeals that eventually
affirmed the decision of the BPTTT.
ISSUE:
Is the use of trademark, CANON, by the private respondent affects the business of Canon Kabushiki Kaisha who has an existing ownership of a trademark also known as
CANON?
HELD:
The Supreme Court says that ordinarily, the ownership of a trademark or tradename is a
property right that the owner is entitled to protect as mandated by the Trademark Law. However,
when a trademark is used by a party for a product in which the other party does not deal, the
use of the same trademark on the latter's product cannot be validly objected to.
The BPTTT correctly ruled that since the certificate of registration of petitioner for the
trademark CANON covers class 2 (paints, chemical products, toner, dyestuff), private
respondent can use the trademark CANON for its goods classified as class 25 (sandals).
Clearly, there is a world of difference between the paints, chemical products, toner, and dyestuff
of petitioner and the sandals of private respondent.
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