G.R. No. 39889 ; February 8, 1934
SEINOSUKE OGURA, plaintiff-appellee, vs. SOTERO CHUA and TOMAS CONFESOR, as Director of the Bureau of Commerce and Industry of the Philippine Islands, defendants-appellants.

FACTS

Plaintiff Seinosuke Ogura, a Japanese citizen, registered the trademark “Bonton” with a figure of a bird called “Kiukwan” in Japan in 1922 and had been selling ink under that trademark in the Philippines since at least 1927 through his agent. In 1930, defendant Sotero Chua registered an almost identical trademark “Bonton” with a similar bird figure in the Philippine Bureau of Commerce and Industry. Chua then sold ink using this mark at a lower price, causing a decrease in Ogura’s sales. Ogura filed a criminal complaint against Chua for fraudulent registration, but Chua was acquitted due to insufficient proof of his knowledge of Ogura’s prior use. Ogura then filed this civil action for unfair competition and sought cancellation of Chua’s trademark registration.

ISSUE

1. Whether an action for unfair competition can be maintained by a party who has not registered his trademark in the Philippines.
2. Whether the acquittal in the criminal case for fraudulent registration constitutes res judicata barring the civil action for unfair competition.
3. Whether Ogura, as a foreign subject, is entitled to the registration of his trademark in the Philippines.

RULING

1. Yes. An action for unfair competition under Section 7 of Act No. 666 lies not only for registered trademark owners but also for those who have long been using a trademark, even if unregistered. Ogura’s prior use in the Philippine market entitled him to bring the action.
2. No. The doctrine of res judicata does not apply. The criminal case involved a charge of fraudulent registration under a specific statute, requiring proof of Chua’s knowledge. The civil case for unfair competition involves different elements and issues, which were not raised or decided in the criminal case.
3. The issue is irrelevant to the relief granted. The court clarified that Ogura did not pray for registration of his trademark in his complaint. The remedy granted was the cancellation of Chua’s fraudulent registration, not the registration of Ogura’s mark. Therefore, the legal requirement for reciprocal trademark privileges between countries was not applicable.
The judgment of the trial court, which permanently enjoined Chua from using the “Bonton” trademark, ordered an accounting of profits, and directed the cancellation of Chua’s registration, was affirmed.

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