Respondent NSR Rubber filed an application for registration of the mark CANON for sandals. Petitioner Canon, a Japanese corporation, opposed alleging it will be damaged by the registration. Petitioner presented evidence that it was the owner of the mark CANON in various countries and in the Philippines for goods such as paints, chemical products, toner and dye stuff. BPTTT dismissed the opposition and gave due course to respondent’s application. CA affirmed. Petitioner invokes Article 8 of the Paris Convention which affords protection to a tradename whether or not it forms part of a trademark.
Whether or not petitioner may be afforded protection of its trade name.
The term “trademark” is defined by RA 166, the Trademark Law, as including “any word, name, symbol, emblem, sign or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them for those manufactured, sold or dealt in by others.” Tradename is defined by the same law as including “individual names and surnames, firm names, tradenames, devices or words used by manufacturers, industrialists, merchants, agriculturists, and others to identify their business, vocations, or occupations; the names or titles lawfully adopted and used by natural or juridical persons, unions, and any manufacturing, industrial, commercial, agricultural or other organizations engaged in trade or commerce.” Simply put, a trade name refers to the business and its goodwill; a trademark refers to the goods.
The Convention of Paris for the Protection of Industrial Property, otherwise known as the Paris Convention, of which both the Philippines and Japan, the country of petitioner, are signatories, is a multilateral treaty that seeks to protect industrial property consisting of patents, utility models, industrial designs, trademarks, service marks, trade names and indications of source or appellations of origin, and at the same time aims to repress unfair competition. We agree with public respondents that the controlling doctrine with respect to the applicability of Article 8 of the Paris Convention is that established in Kabushi Kaisha Isetan vs. IAC. As pointed out by the BPTTT: “Regarding the applicability of Article 8 of the Paris Convention, this Office believes that there is no automatic protection afforded an entity whose tradename is alleged to have been infringed through the use of that name as a trademark by a local entity. To illustrate – if a taxicab or bus company in a town in the United Kingdom or India happens to use the tradename “Rapid Transportation”, it does not necessarily follow that “Rapid” can no longer be registered in Uganda, Fiji, or the Philippines.”