Monday, January 18, 2016

Fredco Manufacturing Corporation vs. President and Fellows of Harvard College (Harvard University) [GR No. 185917, June 1, 2011]

FACTS: Petitioner Fredco Manufacturing Corporation filed a Petition for Cancellation of Registration No. 56561 against respondent President and Fellows of Harvard College (Harvard University). Fredco alleged that Registration No. 56561 was issued to Harvard University on 25 November 1993 for the mark "Harvard Veritas Shield Symbol" under Classes 16, 18, 21, 25 and 28. Fredco also alleged that the mark "Harvard" was first issued by its predecessor-in-interest New York Garments on 2 January 1982 and was granted a Certificate of Registration on 12 December 1988 for a period of 20 years registration under Class 25. It is also alleged that the registration was cancelled on 30 July 1988 when New York Garment inadvertently failed to file an Affidavit of Use/Non-Use on the fifth anniversary of the registration but the right to the mark remained with its predecessor and now with Fredco. Harvard University, on the other hand, alleged that it is the lawful owner of the name and mark "Harvard" in numerous countries worldwide, including the Philippines. The BLA, IPO cancelled the registration of the mark "Harvard" under Class 25 but was reversed by the Director General, IPO rationing that more than the use of the trademark, the application must be the owner of the mark sought to be registered. The CA affirmed the Director General.

ISSUE: Whether or nor Registration No. 56561 Class 25 must be cancelled

RULING: No. While Harvard University had actual prior use of its marks abroad for a long time, it did not have actual prior use in the Philippines. However, Harvard University's registration of the name "Harvard" is based on home registration which is allowed under Section 37 of RA 166. Also, under Section 239.2 of RA 8293, "marks registered under RA 166 shall remain in force but shall be deemed to have been granted under this Actxxx" which does not require actual prior use of the mark in the Philippines. In addition, Article 8 of the Paris Convention, to which both the Philippines and the US are signatories, has been incorporated in Section 37 of RA 166; thus, under Philippine laws, a trade name of 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. Be it noted that Fredco's registration was already cancelled when it failed to file the required Affidavit of Use/Non-Use for the fifth anniversary of the mark's registration. Hence, at the time of the filing of the Petition for Cancellation, Fredco was no longer the registrant or presumptive owner of the mark "Harvard."

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