7/28/2019 Mirpuri vs CA and Canon v. CA Digests

http://slidepdf.com/reader/full/mirpuri-vs-ca-and-canon-v-ca-digests 1/3

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.

7/28/2019 Mirpuri vs CA and Canon v. CA Digests

http://slidepdf.com/reader/full/mirpuri-vs-ca-and-canon-v-ca-digests 2/3

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. 

7/28/2019 Mirpuri vs CA and Canon v. CA Digests

http://slidepdf.com/reader/full/mirpuri-vs-ca-and-canon-v-ca-digests 3/3