[Case Digest] Fredco v. Harvard

Fredco v. Harvard University, G.R. No. 185917, June 1, 2011 Facts: In 2005, Fredco Manufacturing Corporation filed a petition for cancellation before the Bureau of Legal Affairs of the Philippine Intellectual Property Office against the President and Fellows of Harvard College for the registration of its mark “Harvard Veritas Shield Symbol” under the Classes 16, 18, 21, 25 and 28 of the Nice International Classification of Goods an Services alleging that its predecessor-ininterest, New York Garments Manufacturing & Export Co., Inc., has been already using the mark “Harvard” since 1985 when it registered the same mark under Class 25 of the Nice Classification. Thus, Harvard University is not a prior user of the mark in the Philippines and, therefore, has no right to register the mark. On the other hand, Harvard University claimed that the mark “Harvard” has been adopted by Harvard University in Cambridge, Massachusetts, USA since 1639. Furthermore, it alleges that the name and mark “Harvard” and “Harvard Veritas Shield Symbol” is registered in more than 50 countries, including the Philippines, and has been used in commerce since 1872. In fact, the name and mark is rated as one of the top brands of the world, being worth between $750M and $1B. Decision of BLA-IPO The Bureau of Legal Affairs, IPO ruled in favour of Fredco ordering the cancellation of Harvard University’s mark under Class 25 only because the other classes were not confusingly similar with respect to the goods and services of Fredco. Decision of ODG-IPO Harvard University appealed before the Office of the Director General of IPO wherein ODG-IPO reversed the decision of BLA-IPO. The Director General ruled that the applicant must also be the owner of the mark sought to be registered aside from the use of it. Thus, Fredco is not the owner of the mark because it failed to explain how its predecessor got the mark “Harvard”. There was also no evidence of the permission of Harvard University for Fredco to use the mark. Decision of the Court of Appeals Fredco appealed the decision of the Director General before the Court of Appeals, which then affirmed the decision of ODG-IPO considering the facts found by the Director General. CA ruled that Harvard University had been using the marks way before Fredco and the petitioners failed to explain its use of the marks bearing the words “Harvard”, “USA”, Established 1936” and “Cambridge, Massachusetts” within an oblong device.

Issue: W/N CA erred in affirming the decision of ODG-IPO Held: The Petition has no merit. Although R.A. 166 Section 2 states that before a mark can be registered, it must have been actually used in commerce for not less than two months in the Philippines prior to filing an application for its registration, a trademark registered in a foreign country which is a member of the Paris Convention is allowed to register without the requirement of use in the commerce in the Philippines. Under Section 37 of R.A. 166, registration based on home certificate is allowed and does not require the use of the mark in the Philippines. Furthermore, R.A. 8293 Section 239.2 provides that marks which have been registered under R.A. 166 shall remain in force but shall be subject to the provisions of R.A. 8293, which does not require the prior use of the mark in the Philippines. Why the petition must fail? 1. The inclusion of the origin “Cambridge, Massachusetts” in Fredco’s mark connotes that Fredco is associated with Harvard University, which is really not true. The registration of Fredco’s mark should have been rejected. 2. The Philippines is a signatory of the Paris Convention, which provides for the protection against violation of intellectual property rights to all the member countries regardless of whether the trademarks is registered or not in a particular country. 1980, Luis Villafuerte issued a memo to the Director of Patents ordering the latter to reject all pending applications of marks which involves a well-known brand around the world by applicants other than the owner of the mark. 1983, Roberto Ongpin affirmed the memo of Villafuerte by commanding the Director of Patents to implement measures which will comply with the provisions of the Paris Convention. He provided criteria that should be considered to any marks that are wellknown in the Philippines or marks that belong to persons subject to the protection of the Convention. Currently, well-known marks are protected under Section 123.1(e) of R.A. 8293. Additionally, Rule 102 of the Rules and Regulations on Trademarks, Service Marks, Trade Names and Marked or Stamped Containers provides for the criteria in determining a well-known mark. The use of the mark in commerce is not anymore

required because it is enough that “any combination” of the criteria be met in order for a mark to be well-known. The ODG-IPO traced the origin of the mark “Harvard”. It ruled that Harvard University had been using the mark centuries before Fredco although the latter may have used the mark first in the Philippines before the former. Likewise, CA ruled that the name and mark “Harvard” and “Harvard Veritas Shield Symbol” were first used in the United States since 1953 under Class 25. Finally, the Supreme Court declared the mark “Harvard” to be well-known internationally, including the Philippines.