G.R. No. 264919 -21, May 20, 2024
GLORIA MARIS SHARK’S FIN RESTAURANT, INC., PETITIONER, VS. PACIFICO Q. LIM, RESPONDENT.

FACTS

Respondent Pacifico Q. Lim is engaged in construction and the restaurant business. He claims he concocted the name “Gloria Maris Shark’s Fin Restaurant” and its logo (a shark’s fin in an irregularly shaped plate) prior to the establishment of petitioner Gloria Maris Shark’s Fin Restaurant, Inc. In 1993, Lim proposed to take over a restaurant at the Cultural Center of the Philippines. The corporation “Gloriamaris Shark’s Fin Restaurant Inc.” was registered with the Securities and Exchange Commission (SEC) on January 26, 1994, by incorporators including Lim and Dominador B. Menguito. Petitioner avers that after a graphic artist designed the trademark, the Board of Directors entrusted Lim with its registration at the Intellectual Property Office (IPO). However, three trademarks (“GLORIA MARIS WOK SHOP & DESIGN,” “GLORIA MARIS DIMSUM KITCHEN WITH LOGO AND DESIGN,” and “GLORIA MARIS SHARK’S FIN RESTAURANT AND LOGO”) were registered in 2005 under Lim’s name alone. Lim later engaged in franchising the Gloria Maris restaurant concept. Petitioner discovered the registration in Lim’s name after he had left the company and, on December 4, 2009, filed separate petitions to cancel the trademark registrations.
The Bureau of Legal Affairs (BLA) of the IPO dismissed the petitions, finding Lim’s claim of prior creation corroborated by an affidavit from the graphic artist, Joey Rodriguez, and noting petitioner’s lack of evidence showing authorization for Lim to register the mark on its behalf. The Office of the Director General (ODG) of the IPO reversed the BLA, ruling that petitioner had used “Gloria Maris” as part of its corporate name and business identity for over ten years prior to Lim’s registration and that Lim’s registration was unlawful. The Court of Appeals (CA) reinstated the BLA decisions, finding petitioner’s evidence insufficient to overcome the prima facie presumption of Lim’s ownership as the registered owner and ruling that petitioner was barred by laches for filing the cancellation petitions years after becoming aware of Lim’s use.

ISSUE

Whether the Court of Appeals erred in reinstating the decisions of the BLA-IPO which dismissed the petitions for cancellation of the subject trademarks registered in the name of respondent Lim.

RULING

The Supreme Court GRANTED the petition, REVERSED and SET ASIDE the Decision of the Court of Appeals, and REINSTATED the Decisions of the ODG-IPO cancelling the trademark registrations in the name of respondent Lim.
The Court held that a certificate of registration confers a prima facie presumption of the registrant’s ownership and the validity of the registration. However, this presumption is not conclusive and may be rebutted by contrary evidence. The Court found that petitioner Gloria Maris successfully rebutted this presumption. The evidence, particularly the Affidavit of graphic artist Joey Rodriguez, did not categorically state that Lim coined or created the name “Gloria Maris”; it only detailed the creation of the logo’s design based on Lim’s concept. The name “Gloria Maris” was inherently connected to the corporation formed in 1994, of which Lim was merely an incorporator. The corporation had been openly and continuously using the “Gloria Maris” marks in commerce since 1994, long before Lim’s individual registration in 2005. By registering in his own name a mark that had already been adopted and used by the corporation, Lim committed a breach of trust and violated the principles of agency and fiduciary duty. The registration was obtained contrary to Sections 123.1(e) and 151.1 of the Intellectual Property Code, as it was applied for in bad faith and would cause confusion among consumers. The defense of laches was not applicable because the delay in filing the cancellation petitions was justified, as petitioner only discovered the fraudulent registration after Lim had left the company, and it acted within the prescriptive period provided by law.