G.R. No. 264919 -21, May 20, 2024
Gloria Maris Shark’s Fin Restaurant, Inc., Petitioner, vs. Pacifico Q. Lim, Respondent.

FACTS

The case involves the cancellation of Trademark Registration Nos. 4-2004-009149 (“GLORIA MARIS WOK SHOP & DESIGN”), 4-2004-009150 (“GLORIA MARIS DIMSUM KITCHEN WITH LOGO AND DESIGN”), and 4-2004-009151 (“GLORIA MARIS SHARK’S FIN RESTAURANT AND LOGO”) issued to respondent Pacifico Q. Lim. The factual background reveals that as early as 1992, a restaurant named “Gloriamaris Seafood Restaurant” was operating under Dominador B. Menguito. On January 26, 1994, petitioner Gloria Maris Shark’s Fin Restaurant, Inc. was incorporated, with Lim as one of its incorporators. Petitioner alleged that its Board of Directors entrusted Lim with registering the “Gloria Maris” trademark (featuring the words with a shark’s fin in a circle), which was used in its operations, but Lim instead registered the trademarks in his own name. Lim denied this, claiming the trademark was his intellectual property and creation, supported by an affidavit from the commissioned interior designer. The Court of Appeals ruled that petitioner’s evidence (trademark image, Articles of Incorporation, photographs, and an affidavit) failed to overcome Lim’s prima facie ownership of the trademarks and that petitioner was barred by laches.

ISSUE

Whether the respondent’s registration of the trademarks incorporating “Gloria Maris” was attended by bad faith, and whether the defense of laches is applicable against the petitioner.

RULING

The Separate Concurring Opinion agrees with the ponencia‘s ruling that respondent’s registration was in bad faith and that laches does not apply. While the evidence may not constitute substantial proof of prior trademark use in commerce (as prior use requires actual sale of goods to the public, proven by receipts, invoices, etc.), it is sufficient to establish that the trade name “Gloriamaris” or “Gloria Maris” belongs to the petitioner and was not coined by the respondent. Under Section 165 of Republic Act No. 8293 (The Intellectual Property Code), a trade name is protected even without registration, and any subsequent use by a third party likely to mislead the public is unlawful. Respondent, as an incorporator of the petitioner, cannot claim good faith in using the petitioner’s trade name in his trademark registrations. Consequently, laches, being an equitable doctrine, cannot be invoked to protect actions done in bad faith, as it would result in manifest injustice. Furthermore, the elements of laches must be proved positively, and respondent did not raise or prove this defense in his Verified Answer. The opinion also expresses reservation regarding the ponencia‘s declaration that a trademark registered in bad faith is considered unfair competition, noting that such a finding ipso facto could deny due process by imposing criminal penalties in a cancellation proceeding.