G.R. No. 269302, January 22, 2025
CAMPBRIDGE WATERPROOFING SYSTEMS, INC., REPRESENTED BY CAMPBRIDGE PAINTS, INC., PETITIONER, VS. GREENSEAL PRODUCTS (M) SDN. BHD. AND GREENSEAL PHILIPPINES CORPORATION, RESPONDENTS.

FACTS

Respondent Greenseal Products (M) Sdn. Bhd. (Greenseal Malaysia) adopted the mark “GREENSEAL” on March 27, 1986, and obtained a Certificate of Registration for the mark in Malaysia covering Class 17 goods starting November 12, 1993. It claimed use of the mark in the Philippines since 2004, supported by purchase orders, invoices, packing lists, bills of lading, booking confirmations, advertising materials, and photographs. Respondent Greenseal Philippines Corporation was registered with the SEC on December 19, 2006, as the exclusive distributor of Greenseal Malaysia’s sealant products in the Philippines. In 2010, Greenseal Malaysia discovered that petitioner Campbridge Waterproofing Systems, Inc. (Campbridge) had obtained Trademark Registration No. 4-2009-001721 for the identical mark “GREENSEAL” for Class 17 goods (elastomeric sealant) in the Philippines, with an application filed on February 18, 2009, and registration granted on May 4, 2009. Campbridge claimed it changed the name of its product to “GREENSEAL” in the mid-2000s but presented proof of use only from 2009. Greenseal filed a Petition for Cancellation with the IPOPHL-BLA, which was granted, ordering the cancellation of Campbridge’s registration. The IPOPHL-BLA Director affirmed. The IPOPHL-ODG reversed, dismissing the petition and upholding Campbridge’s registration, finding no impediment to its application since Greenseal had no prior Philippine registration. The Court of Appeals granted Greenseal’s Petition for Review, reinstating the IPOPHL-BLA’s cancellation order.

ISSUE

Whether the Court of Appeals erred in reinstating the decision cancelling Campbridge’s trademark registration for “GREENSEAL” based on Greenseal’s claim of prior use.

RULING

No, the Court of Appeals did not err. The Supreme Court affirmed the CA’s decision. Ownership of a trademark is acquired by registration but also by prior and continuous use. The principle of territoriality generally governs, but prior use in the Philippines can be a basis for cancelling a registered mark. Greenseal Malaysia was the prior adopter and user of the “GREENSEAL” mark, having registered it in Malaysia in 1993 and demonstrated use in the Philippines through commercial transactions and shipments as early as 2004, years before Campbridge’s application in 2009. Campbridge failed to substantiate its claim of use in the mid-2000s, with evidence only from 2009. Furthermore, Greenseal Philippines’ SEC registration in 2006 preceded Campbridge’s trademark application. The coincidental adoption of the same invented word for identical goods is improbable, suggesting Campbridge’s registration was obtained in bad faith. Therefore, Greenseal, as the prior user, has a better right to the mark, warranting the cancellation of Campbridge’s registration.