G.R. No. L-53672 May 31, 1982
BATA INDUSTRIES, LTD., petitioner, vs. THE HONORABLE COURT OF APPEALS; TIBURCIO S. EVALLE, DIRECTOR OF PATENTS, NEW OLYMPIAN RUBBER PRODUCTS CO., INC., respondents.

FACTS

In an inter partes case before the Philippine Patent Office, respondent New Olympian Rubber Products Co., Inc., a domestic corporation, sought registration of the trademark “BATA” for casual rubber shoes, alleging use since July 1, 1970. Petitioner Bata Industries, Ltd., a Canadian corporation, opposed, claiming ownership and non-abandonment of the mark. The parties stipulated that the Canadian corporation had no license to do business in the Philippines, was not currently selling footwear under the mark in the country, and had no local licensing agreements. Evidence revealed that shoes from a Czechoslovakian entity named Bata were sold pre-World War II, and possibly Canadian Bata shoes until 1948, but the trademark was never registered in the Philippines by any foreign entity.
The Director of Patents dismissed the opposition and ordered registration in favor of New Olympian, finding the opposer had technically abandoned the mark in the Philippines. The Director credited New Olympian with creating substantial goodwill through extensive advertising and expense since 1970. Bata Industries appealed to the Court of Appeals, which initially reversed the Patent Office decision. However, upon a second motion for reconsideration heard by a new division of justices, the Court of Appeals set aside its own reversal and affirmed the Director of Patents’ decision.

ISSUE

The core issue is whether the petitioner, Bata Industries, Ltd., retained a protectable right to the trademark “BATA” in the Philippines such that it could successfully oppose the respondent’s application for registration.

RULING

The Supreme Court denied the motion for reconsideration and upheld the Court of Appeals’ final resolution affirming the Director of Patents. The legal logic rests on the principle of abandonment and the creation of goodwill through actual use in commerce within the Philippine jurisdiction. The Court found that any slight goodwill associated with the foreign “BATA” mark from pre-war sales had been completely abandoned and lost over the subsequent 35-year period, during which there was no evidence of use or commercial activity by the petitioner in the Philippine market. Critically, the petitioner failed to establish any privity of interest or succession in rights from the original Czechoslovakian entity, and the mark was never registered locally.
Conversely, the respondent domestic corporation presented clear and convincing evidence of its own substantial, lawful, and exclusive use of the “BATA” mark in commerce since 1970, supported by significant advertising expenditure that generated independent local goodwill. Ownership of a trademark is acquired through registration and, fundamentally, through actual commercial use. Since the petitioner had no existing business, sales, or licensing in the Philippines, it had no Philippine goodwill to protect. Therefore, the respondent’s right to register the mark, having established prior use and developed its own reputation, was paramount. The Court also dismissed procedural concerns regarding the change in appellate justices, noting such changes are normal and provide a fresh perspective.