G.R. No. 91385 January 4, 1994
HEIRS OF CRISANTA Y. GABRIEL-ALMORADIE, represented by LORENZO B. ALMORADIE, and LORENZO B. ALMORADIE, petitioners, vs. COURT OF APPEALS and EMILIA M. SUMERA, as special administratrix of the Testate Estate of DR. JOSE R. PEREZ, respondents.

FACTS

The case involves a protracted dispute over the trademark “WONDER” for beauty soap. In 1953, Dr. Jose R. Perez discovered a bleaching beauty soap and obtained certificates of label approval from the Bureau of Health in 1958 and 1959 for “Dr. Perez’ Wonder Beauty Soap.” He entered into an Exclusive Distributorship Agreement with Crisanta Y. Gabriel. The relationship soured, leading to multiple legal battles. On October 3, 1960, Gabriel applied to register the trademark “WONDER,” but her application was denied. On May 11, 1961, Perez obtained Certificate of Registration No. SR-389 for the trademark “WONDER.” Gabriel filed a petition to cancel this registration (Inter Partes Case No. 280), which was denied by the Director of Patents. The Supreme Court, in G.R. No. L-24075, affirmed this denial, ruling that the trademark was identified with Perez’s product and that an exclusive distributor does not acquire proprietary interest in the principal’s trademark. After Perez’s death, his estate, represented by special administratrix Emilia M. Sumera, applied for registration of “WONDER” in the Principal Register. Gabriel opposed, but the Director of Patents dismissed the opposition on grounds of res judicata, and Certificate of Registration No. 25610 was issued to the Testate Estate of Dr. Jose R. Perez. The Court of Appeals upheld this. Despite these rulings, Gabriel continued using the mark “Wonder.” Consequently, on December 18, 1979, Sumera filed an action for Infringement of Trademark with Damages and Prayer for a Writ of Preliminary Injunction against Gabriel before the Regional Trial Court (Civil Case No. C-8147). The trial court initially issued a temporary restraining order but later lifted it. The Court of Appeals, in a special civil action, later directed the trial court to issue a preliminary injunction against Gabriel. The trial court eventually dismissed Sumera’s complaint. The Court of Appeals reversed the trial court’s dismissal, prompting the petitioners to elevate the case to the Supreme Court.

ISSUE

The primary issue is whether the Court of Appeals erred in reversing the trial court’s order dismissing the complaint for infringement of trademark, specifically in light of the defense of res judicata and the claim that Gabriel was the lawful owner of the trademark.

RULING

The Supreme Court denied the petition and affirmed the decision of the Court of Appeals. The Court held that the defense of res judicata was not applicable because there was no final judgment on the merits in the earlier civil case for unfair competition (Civil Case No. 2422); its status was unknown and not on record. The Court ruled that the ownership of the trademark “WONDER” had been conclusively settled in favor of Dr. Jose R. Perez and his estate in the previous administrative and judicial proceedings (Inter Partes Case No. 280 and G.R. No. L-24075). The Court found that Gabriel’s continued use of the “Wonder” mark after the issuance of Certificate of Registration No. 25610 to the Perez estate constituted infringement. The Court rejected Gabriel’s claim of ownership based on an alleged 1959 registration by a certain Go Hay, noting that the registration was for laundry soap, not beauty soap, and thus was for goods of a different class. The Court emphasized that a certificate of registration confers prima facie evidence of the validity of the registration, the registrant’s ownership, and the exclusive right to use the mark. The Court of Appeals correctly reversed the trial court’s dismissal and ordered the remand of the case for further proceedings on the issue of damages.