G.R. No. 211850 , September 8, 2020
ZUNECA PHARMACEUTICAL, AKRAM ARAIN AND/OR VENUS ARAIN, M.D., AND STYLE OF ZUNECA PHARMACEUTICAL, PETITIONERS, VS. NATRAPHARM, INC., RESPONDENT.

FACTS

The ponencia (main decision) held that the deletion of Sections 2 and 2-A of Republic Act No. 166 and the enactment of Section 122 of Republic Act No. 8293 (Intellectual Property Code) demonstrate the legislative intent to completely abandon “first to use” as a mode of acquiring trademark ownership and to institute “first to file” or registration as the exclusive means. It concluded that actual use is no longer necessary to acquire ownership but is only required to maintain ownership, and that there can be no infringement of an unregistered mark.

ISSUE

Whether registration under Section 122 of the Intellectual Property Code is the exclusive mode of acquiring trademark ownership, thereby completely abandoning prior actual use as a mode of acquisition.

RULING

In her dissenting opinion, Justice Lazaro-Javier disagreed with the ponencia. She posited that registration and actual use together perfect ownership of a trademark. While registration creates an imperfect ownership, only registration coupled with actual use made in good faith confers full ownership rights. She argued that Section 122 is silent on and does not repudiate property in a trademark recognized by common law. In the absence of an express repeal or clear incompatibility between RA 8293 and jurisprudence echoing common law, there is no basis to interpret Section 122 as an exclusive and complete scheme. She emphasized that actual use remains a complementing scheme for perfecting ownership, as evidenced by Sections 124.2 and 145 of the IP Code, which require a declaration of actual use to obtain and maintain a registration. She concurred with the view that trademark laws aim to protect the value generated by a mark’s actual use in commerce.