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710 Phil. 305
SECOND DIVISION
[ G.R. No. 185830. June 05, 2013 ]
ECOLE DE CUISINE MANILLE (CORDON BLEU OF THE
PHILIPPINES), INC., PETITIONER, VS. RENAUIL COINTREAU
& CIE AND LE CORDON BLEU INT'L., B.V., RESPONDENTS.
DECISION
PERLAS-BERNABE, J.:
Assailed in.this petition for review on certiorari[1] is the December 23, 2008
Decision[2] of the Court of Appeals (CA) in CA-G.R. SP No. 104672 which· affirmed
in toto the Intellectual Property Office (IPO) Director General's April 21, 2008
Decision[3] that declared respondent Renaud Cointreau & Cie (Cointreau) as the true
and lawful owner of the mark "LE CORDON BLEU & DEVICE" and thus, is entitled
to register the same under its name.
The Facts
On June 21, 1990, Cointreau, a partnership registered under the laws of France, filed
before the (now defunct) Bureau of Patents, Trademarks, and Technology Transfer
(BPTTT) of the Department of Trade and Industry a trademark application for the mark
"LE CORDON BLEU & DEVICE".for goods falling under classes 8, 9, 16, 21, 24, 25,
29, and 30 of the International Classification of Goods and Services for the Purposes of
Registrations of Marks ("Nice Classification") (subject mark). The application was filed
pursuant to Section 37 of Republic Act No. 166, as amended (R.A. No. 166), on the
basis of Home Registration No. 1,390,912, issued on November 25, 1986 in France.
Bearing Serial No. 72264, such application was published for opposition in the March-
April 1993 issue of the BPTTT Gazette and released for circulation on May 31,
1993.[4]
On July 23, 1993, petitioner Ecole De Cuisine Manille, Inc. (Ecole) filed an opposition
to the subject application, averring that: (a) it is the owner of the mark "LE CORDON
BLEU, ECOLE DE CUISINE MANILLE," which it has been using since 1948 in
cooking and other culinary activities, including in its restaurant business; and (b) it has
earned immense and invaluable goodwill such that Cointreau’s use of the subject mark
will actually create confusion, mistake, and deception to the buying public as to the
origin and sponsorship of the goods, and cause great and irreparable injury and damage
to Ecole’s business reputation and goodwill as a senior user of the same.[5]
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On October 7, 1993, Cointreau filed its answer claiming to be the true and lawful
owner of the subject mark. It averred that: (a) it has filed applications for the subject
mark’s registration in various jurisdictions, including the Philippines; (b) Le Cordon
Bleu is a culinary school of worldwide acclaim which was established in Paris, France
in 1895; (c) Le Cordon Bleu was the first cooking school to have set the standard for
the teaching of classical French cuisine and pastry making; and (d) it has trained
students from more than eighty (80) nationalities, including Ecole’s directress, Ms.
Lourdes L. Dayrit. Thus, Cointreau concluded that Ecole’s claim of being the exclusive
owner of the subject mark is a fraudulent misrepresentation.[6]
During the pendency of the proceedings, Cointreau was issued Certificates of
Registration Nos. 60631 and 54352 for the marks "CORDON BLEU & DEVICE" and
"LE CORDON BLEU PARIS 1895 & DEVICE" for goods and services under classes
21 and 41 of the Nice Classification, respectively.[7]
The Ruling of the Bureau of Legal Affairs
In its Decision[8] dated July 31, 2006, the Bureau of Legal Affairs (BLA) of the IPO
sustained Ecole’s opposition to the subject mark, necessarily resulting in the rejection
of Cointreau’s application.[9] While noting the certificates of registration obtained from
other countries and other pertinent materials showing the use of the subject mark
outside the Philippines, the BLA did not find such evidence sufficient to establish
Cointreau’s claim of prior use of the same in the Philippines. It emphasized that the
adoption and use of trademark must be in commerce in the Philippines and not abroad.
It then concluded that Cointreau has not established any proprietary right entitled to
protection in the Philippine jurisdiction because the law on trademarks rests upon the
doctrine of nationality or territoriality.[10]
On the other hand, the BLA found that the subject mark, which was the predecessor of
the mark "LE CORDON BLEU MANILLE" has been known and used in the
Philippines since 1948 and registered under the name "ECOLE DE CUISINE
MANILLE (THE CORDON BLEU OF THE PHILIPPINES), INC." on May 9,
1980.[11]
Aggrieved, Cointreau filed an appeal with the IPO Director General.
The Ruling of the IPO Director General
In his Decision dated April 21, 2008, the IPO Director General reversed and set aside
the BLA’s decision, thus, granting Cointreau’s appeal and allowing the registration of
the subject mark.[12] He held that while Section 2 of R.A. No. 166 requires actual use
of the subject mark in commerce in the Philippines for at least two (2) months before
the filing date of the application, only the owner thereof has the right to register the
same, explaining that the user of a mark in the Philippines is not ipso facto its owner.
Moreover, Section 2-A of the same law does not require actual use in the Philippines to
be able to acquire ownership of a mark.[13]
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In resolving the issue of ownership and right to register the subject mark in favor of
Cointreau, he considered Cointreau’s undisputed use of such mark since 1895 for its
culinary school in Paris, France (in which petitioner’s own directress, Ms. Lourdes L.
Dayrit, had trained in 1977). Contrarily, he found that while Ecole may have prior use
of the subject mark in the Philippines since 1948, it failed to explain how it came up
with such name and mark. The IPO Director General therefore concluded that Ecole
has unjustly appropriated the subject mark, rendering it beyond the mantle of protection
of Section 4(d)[14] of R.A. No. 166.[15]
Finding the IPO Director General’s reversal of the BLA’s Decision unacceptable, Ecole
filed a Petition for Review[16] dated June 7, 2008 with the CA.
Ruling of the CA
In its Decision dated December 23, 2008, the CA affirmed the IPO Director General’s
Decision in toto.[17] It declared Cointreau as the true and actual owner of the subject
mark with a right to register the same in the Philippines under Section 37 of R.A. No.
166, having registered such mark in its country of origin on November 25, 1986.[18]
The CA likewise held that Cointreau’s right to register the subject mark cannot be
barred by Ecole’s prior use thereof as early as 1948 for its culinary school "LE
CORDON BLEU MANILLE" in the Philippines because its appropriation of the mark
was done in bad faith. Further, Ecole had no certificate of registration that would put
Cointreau on notice that the former had appropriated or has been using the subject
mark. In fact, its application for trademark registration for the same which was just
filed on February 24, 1992 is still pending with the IPO.[19]
Hence, this petition.
Issues Before the Court
The sole issue raised for the Court’s resolution is whether the CA was correct in
upholding the IPO Director General’s ruling that Cointreau is the true and lawful owner
of the subject mark and thus, entitled to have the same registered under its name.
At this point, it should be noted that the instant case shall be resolved under the
provisions of the old Trademark Law, R.A. No. 166, which was the law in force at the
time of Cointreau’s application for registration of the subject mark.
The Court’s Ruling
The petition is without merit.
In the petition, Ecole argues that it is the rightful owner of the subject mark,
considering that it was the first entity that used the same in the Philippines. Hence, it is
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the one entitled to its registration and not Cointreau.
Petitioner’s argument is untenable.
Under Section 2[20] of R.A. No. 166, in order to register a trademark, one must be the
owner thereof and must have actually used the mark in commerce in the Philippines for
two (2) months prior to the application for registration. Section 2-A[21] of the same law
sets out to define how one goes about acquiring ownership thereof. Under Section 2-A,
it is clear that actual use in commerce is also the test of ownership but the provision
went further by saying that the mark must not have been so appropriated by another.
Additionally, it is significant to note that Section 2-A does not require that the actual
use of a trademark must be within the Philippines. Thus, as correctly mentioned by the
CA, under R.A. No. 166, one may be an owner of a mark due to its actual use but may
not yet have the right to register such ownership here due to the owner’s failure to use
the same in the Philippines for two (2) months prior to registration.[22]
Nevertheless, foreign marks which are not registered are still accorded protection
against infringement and/or unfair competition. At this point, it is worthy to emphasize
that the Philippines and France, Cointreau’s country of origin, are both signatories to
the Paris Convention for the Protection of Industrial Property (Paris Convention).[23]
Articles 6bis and 8 of the Paris Convention state:
ARTICLE 6bis
(1) The countries of the Union undertake, ex officio 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, an imitation, or a translation, liable to create confusion, of a
mark considered by the competent authority of the country of registration or
use to be well known in that country as being already the mark of a
person entitled to the benefits of this 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 and underscoring supplied)
In this regard, Section 37 of R.A. No. 166 incorporated Article 8 of the Paris
Convention, to wit:
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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.
xxxx
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.
xxxx
In view of the foregoing obligations under the Paris Convention, the Philippines is
obligated to assure nationals of the signatory-countries 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.[24] "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.’"[25]
In the instant case, it is undisputed that Cointreau has been using the subject mark in
France since 1895, prior to Ecole’s averred first use of the same in the Philippines in
1948, of which the latter was fully aware thereof. In fact, Ecole’s present directress,
Ms. Lourdes L. Dayrit (and even its foundress, Pat Limjuco Dayrit), had trained in
Cointreau’s Le Cordon Bleu culinary school in Paris, France. Cointreau was likewise
the first registrant of the said mark under various classes, both abroad and in the
Philippines, having secured Home Registration No. 1,390,912 dated November 25,
1986 from its country of origin, as well as several trademark registrations in the
Philippines.[26]
On the other hand, Ecole has no certificate of registration over the subject mark but
only a pending application covering services limited to Class 41 of the Nice
Classification, referring to the operation of a culinary school. Its application was filed
only on February 24, 1992, or after Cointreau filed its trademark application for goods
and services falling under different classes in 1990. Under the foregoing circumstances,
even if Ecole was the first to use the mark in the Philippines, it cannot be said to have
validly appropriated the same.
It is thus clear that at the time Ecole started using the subject mark, the same was
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already being used by Cointreau, albeit abroad, of which Ecole’s directress was fully
aware, being an alumna of the latter’s culinary school in Paris, France. Hence, Ecole
cannot claim any tinge of ownership whatsoever over the subject mark as Cointreau is
the true and lawful owner thereof. As such, the IPO Director General and the CA were
correct in declaring Cointreau as the true and lawful owner of the subject mark and as
such, is entitled to have the same registered under its name.
In any case, the present law on trademarks, Republic Act No. 8293, otherwise known as
the Intellectual Property Code of the Philippines, as amended, has already dispensed
with the requirement of prior actual use at the time of registration.[27] Thus, there is
more reason to allow the registration of the subject mark under the name of Cointreau
as its true and lawful owner.
As a final note, "the function of a trademark is to point out distinctly the origin or
ownership of the goods (or services) 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."[28] As such, courts will
protect trade names or marks, although not registered or properly selected as
trademarks, on the broad ground of enforcing justice and protecting one in the fruits of
his toil.[29]
WHEREFORE, the petition is DENIED. Accordingly, the December 23, 2008
Decision of the Court of Appeals in CA-G.R. SP No. 104672 is hereby AFFIRMED in
toto.
SO ORDERED.
Sereno, CJ.* Brion, (Acting Chairperson)** Perez, and Leonen,*** JJ., concur.
* Designated Additional Member in lieu of Justice Mariano C. Del Castillo per Raffle
dated February 18, 2013.
** Designated Acting Chairperson in lieu of Justice Antonio T. Carpio per Special
Order No. 1460 dated May 29,2013.
*** Designated Acting Member per Special Order No. 1461 dated May 29, 2013.
[1] Rollo, pp. 10-33.
[2] Id. at 127-137. Penned by Associate Justice Myrtia Diinaranan Vidal, with Associate
Justices Jose L Sabio, Jr. (+) land Jose C. Reyes Jr., concurring.
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[3] Id. at 48-55. Penned by Director General Adrian S. Cristobal, Jr.
[4] Id. at 128.
[5] Id. at 37-38, 42.
[6] Id. at 38-39.
[7] Id. at 133.
[8] Id. at 36-46. Penned by Director Estrellita Beltran-Abelardo.
[9] Id. at 46.
[10] Id. at 43-46.
[11] Id. at 42.
[12] Id. at 55.
[13] Id. at 52.
[14] Section 4(d) of R.A. 166 provides:
Section 4. Registration of trademarks, trade names and service marks on the principal
register. — There is hereby established a register of trademarks, trade names and
service marks, which shall be known as the principal register. The owner of a
trademark, 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:
xxxx
(d) Consists of or comprises a mark or trade-name which so resembles a mark or trade
name registered in the Philippines or a mark or trade name registered in previously used
in the Philippines by another and not abandoned, as to be likely, when applied to or
used in connection with the goods, business or services of the applicant, to cause
confusion or mistake or to deceive purchasers.
[15] Rollo, pp. 52-55.
[16] Id. at 56-76.
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[17] Id. at 136.
[18] Id. at 134-135.
[19] Id. at 133-136.
[20] Section 2 of R.A. No. 166 provides:
Section 2. What are registrable. — Trademarks, trade names and service marks owned
by persons, corporations, partnerships or associations domiciled in the Philippines and
by persons, corporations, partnerships or associations domiciled in any foreign country
may be registered in accordance with the provisions of this Act: Provided, That said
trademarks, trade names, or service marks are actually in use in commerce and services
not less than two months in the Philippines before the time the applications for
registration are filed; And provided, further, That the country of which the applicant for
registration is a citizen grants by law substantially similar privileges to citizens of the
Philippines, and such fact is officially certified, with a certified true copy of the foreign
law translated into the English language, by the government of the foreign country to
the Government of the Republic of the Philippines.
[21] Section 2-A, which was added by R.A. No. 638 to R.A. No. 166, provides:
Section 2-A. Ownership of trademarks, trade names and service marks; how acquired.
— Anyone who lawfully produces or deals in merchandise of any kind or who engages
in any lawful business, or who renders any lawful service in commerce, by actual use
thereof in manufacture or trade, in business, and in the service rendered, may
appropriate to his exclusive use a trademark, a trade name, or a service mark from the
merchandise, business, or service of others. The ownership or possession of a
trademark, trade name or service mark not so appropriated by another, to distinguish his
merchandise, business or service from the merchandise, business or services of others.
The ownership or possession of a trademark, trade name, service mark, heretofore or
hereafter appropriated, as in this section provided, shall be recognized and protected in
the same manner and to the same extent as are other property rights known to this law.
[22] Shangri-La International Hotel Management, Ltd. v. Developers Group of
Companies, Inc., 520 Phil.
935, 936 (2006).
[23] See (last visited May 9, 2013).
[24] Fredco Manufacturing Corporation v. President and Fellows of Harvard College
(Harvard University), G.R. No. 185917, June 1, 2011, 650 SCRA 232, 247, citing La
Chemise Lacoste, S.A. v. Hon. Fernandez, G.R. Nos. L-63796-97, May 21, 1984, 129
SCRA 373, 389.
[25] Id. at 248.
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[26] Rollo, p. 176.
[27] See Shangri-la Int’l. Hotel Management, Ltd. v. Developers Group of Companies,
supra note 22, at 954.
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