G.R. No. 193569 , January 25, 2023
Edmond Lim and Gerd Paland, Petitioners, vs. Catalina See, Respondent.

FACTS

On March 20, 2000, Chai Seng Ang (Ang), the predecessor of respondent Catalina See, filed six applications for trademark registration with the Intellectual Property Office (IPO) for the marks “CROWN DEVICE,” “JOWIKA & DEVICE,” “SCHISO & DEVICE,” “DEVICE MARK,” “CROWN,” and “ORO & DEVICE,” used on nippers, scissors, nail cutters, cutlery, file, spoon, and knife. These applications were assigned to See via Assignments of Trademark dated March 22, 2000, filed on February 26, 2003. Petitioners Edmond Lim and Gerd Paland filed a verified Notice of Opposition in 2004, claiming Paland owned the contested marks through his company, Gerd Paland Solingen, and its predecessor companies in Solingen, Germany, which had used the marks since the 1970s. They asserted the marks had been distributed worldwide, including in the Philippines, through various distributors, and were registered in Germany in 2004. See claimed prior use, testifying that the marks had been sold since 1968 at the Nightingale Bazaar, owned by her family, and that the marks were supplied by Ang, who later assigned the applications to her.

ISSUE

Whether the Court of Appeals erred in reversing the Decision of the Director General of the Intellectual Property Office and allowing the trademark registration of Catalina See for the contested marks, except for “SCHISO & DEVICE.”

RULING

The Supreme Court DENIED the petition and AFFIRMED the Decision and Resolution of the Court of Appeals. The Court held that the petitioners failed to establish that See was merely an importer or distributor of the goods bearing the trademarks. The evidence presented, including invoices and agreements, did not conclusively prove a principal-agent or principal-distributor relationship between Paland and See or her predecessor, Ang. The Court found that See had sufficiently demonstrated prior use of the marks in the Philippines through her and her witnesses’ testimonies and evidence of sales. The Court emphasized that trademark ownership is acquired by registration and prior use, and See’s evidence of use predated the petitioners’ claim of ownership and their German registrations. The opposition against the “SCHISO & DEVICE” mark was correctly sustained due to Paland’s prior registration and use of that specific mark. The burden of proof to establish superior right rested on the oppositors (petitioners), which they failed to discharge for all marks except “SCHISO & DEVICE.”