Respondent Universal Rubber applied for the registration of the trademark “Universal Converse and Device” used on its rubber shoes and rubber slippers. Petitioner Converse filed its opposition on grounds that the trademark sought to be registered is confusingly similar to the word “Converse” which is part of its corporate name “Converse Rubber Corporation” and will likely deceive purchasers and cause irreparable injury to its reputation and goodwill in the Philippines. Respondent averred that petitioner is a company organized under US laws not licensed to do business in the Philippines and not doing business on its own in the Philippines. The Director Patents gave due course to respondent’s application. MR was denied.
Whether or not a foreign corporation not licensed to do business and is not actually doing business on its own may maintain an action, suit or proceeding.
It is unfortunate that respondent Director of Patents has concluded that since the petitioner is not licensed to do business in the country and is actually not doing business on its own in the Philippines, it has no name to protect in the forum and thus, it is futile for it to establish that “CONVERSE” as part of its corporate name identifies its rubber shoes. That a foreign corporation has a right to maintain an action in the forum even if it is not licensed to do business and is not actually doing business on its own therein has been enunciated many times by this Court. In La Chemise Lacoste, S.A. vs. Fernandez, this Court, reiterating Western Equipment and Supply Co. vs. Reyes, stated that:
… a foreign corporation which has never done any business in the Philippines and which is unlicensed and unregistered to do business here, but is widely and favorably known in the Philippines through the use therein of its products bearing its corporate and tradename, has a legal right to maintain an action in the Philippines to restrain the residents and inhabitants thereof from organizing a corporation therein bearing the same name as the foreign corporation, when it appears that they have personal knowledge of the existence of such a foreign corporation, and it is apparent that the purpose of the proposed domestic corporation is to deal and trade in the same goods as those of the foreign corporation.