G.R. No. 114508 November 19, 1999
PRIBHDAS J. MIRPURI, petitioner, vs. COURT OF APPEALS, DIRECTOR OF PATENTS and the BARBIZON CORPORATION, respondents.

FACTS

Petitioner Pribhdas J. Mirpuri sought registration of the trademark “Barbizon” for brassieres and ladies’ undergarments, deriving his claim from a 1970 application by Lolita Escobar. Although Escobar secured registration in 1974, it was cancelled in 1979 for failure to file the required Affidavit of Use. Mirpuri subsequently filed a new application. Respondent Barbizon Corporation, a U.S. entity, opposed this application. Barbizon claimed prior global use and registration of the “Barbizon” mark since 1933 for similar apparel, arguing its mark was well-known internationally and in the Philippines through its subsidiary. It invoked protection under the Paris Convention for the Protection of Industrial Property, to which the Philippines is a signatory, contending Mirpuri’s application constituted an unlawful appropriation of its famous mark.

ISSUE

The principal issue is whether the Paris Convention, as incorporated into Philippine law, affords protection to a foreign corporation like Barbizon against a local applicant for registration of a similar trademark, even absent proof of prior commercial use or registration of that mark within the Philippines.

RULING

The Supreme Court ruled in favor of Barbizon Corporation, setting aside the registration granted to Mirpuri. The Court held that the Paris Convention, particularly its provisions on well-known marks under Article 6bis, is part of Philippine law under the doctrine of incorporation. The Convention mandates member countries to refuse or cancel the registration of a trademark that constitutes a reproduction or imitation of a mark considered well-known in that country, even if the foreign mark is not registered or used locally, provided it is well-known to the relevant sector of the public. The Court found that Barbizon’s mark had acquired international renown through decades of global use, registration in numerous countries, and extensive advertising. This reputation had permeated the Philippine market, making the mark well-known to the relevant public within the country. Consequently, Mirpuri’s application for an identical mark for identical goods was barred. The Court emphasized that treaty obligations under the Paris Convention are designed to prevent unfair competition and consumer confusion, protecting the goodwill associated with well-known marks irrespective of local registration. The Director of Patents therefore erred in dismissing Barbizon’s opposition.