GR 185830; (June, 2013) (Digest)
G.R. No. 185830; June 5, 2013
ECOLE DE CUISINE MANILLE (CORDON BLEU OF THE PHILIPPINES), INC., Petitioner, vs. RENAUD COINTREAU & CIE and LE CORDON BLEU INT’L., B.V., Respondents.
FACTS
Respondent Renaud Cointreau & Cie (Cointreau), a French entity, filed a trademark application in 1990 for “LE CORDON BLEU & DEVICE” based on its 1986 French registration. Petitioner Ecole De Cuisine Manille, Inc. (Ecole) opposed the application, claiming prior use of the mark “LE CORDON BLEU, ECOLE DE CUISINE MANILLE” for its culinary school since 1948 in the Philippines. Ecole argued Cointreau’s registration would cause public confusion and damage its established goodwill.
The IPO Bureau of Legal Affairs initially sustained Ecole’s opposition, ruling that trademark rights are territorial and Cointreau failed to prove prior use of the mark in Philippine commerce. However, the IPO Director General reversed this, finding Cointreau to be the true owner. The Court of Appeals affirmed the Director General’s decision, prompting Ecole’s petition to the Supreme Court.
ISSUE
Whether the IPO Director General and the Court of Appeals correctly declared Cointreau as the owner with the superior right to register the “LE CORDON BLEU & DEVICE” mark in the Philippines.
RULING
The Supreme Court denied the petition and affirmed the assailed decisions. The Court clarified that under the applicable law, Republic Act No. 166, ownership of a mark is acquired not merely by prior use in the Philippines but by its creation and appropriation. The legal logic rests on the principle that the first to create and use a mark anywhere is its rightful owner, and territoriality does not negate this original ownership.
The Court found Cointreau indisputably created and used the “LE CORDON BLEU” mark for its world-renowned Paris culinary school since 1895. Ecole’s local use since 1948, while prior in the Philippines, was an unauthorized appropriation of this internationally known mark. Ecole failed to explain its independent origin for the name, indicating bad faith. Consequently, Ecole’s local use, being in bad faith, could not confer a superior right over the mark’s true and original owner. Registration under Section 37 of R.A. 166, based on a foreign registration, was therefore correctly granted to Cointreau as the lawful owner.