Respondent Cointreau, a partnership registered under the laws of France, applied for the registration of the mark ‘Le Cordon Bleu & Device.’ Petitioner Ecole De Cuisine opposed on the ground that it is the owner of the mark ‘Le Cordon Bleu, Ecole De Cuisine Manille’ used in its culinary activities and restaurant business and that the registration will create confusion to the public. Respondent Cointreau answered claiming it is the true and lawful owner of the mark and had long been using it worldwide. The IPO Bureau of Legal Affairs sustained petitioner’s opposition stating that Cointreau had no prior use of the mark in the Philippines to be entitled to a proprietary right over it. The IPO Director General reversed the decision and allowed the mark’s registration holding that under RA No. 166, actual use in the Philippines is not necessary to acquire ownership of the mark.
Whether or not respondent’s prior use of the mark is a requirement for its registration.
Under Section 2 of R.A. No. 166, in order to register a trademark, one must be the owner thereof and must have actually used the mark in commerce in the Philippines for 2 months prior to the application for registration. Section 2-A of the same law sets out to define how one goes about acquiring ownership thereof. Under Section 2-A, it is clear that actual use in commerce is also the test of ownership but the provision went further by saying that the mark must not have been so appropriated by another. Additionally, it is significant to note that Section 2-A does not require that the actual use of a trademark must be within the Philippines. Thus, as correctly mentioned by the CA, under R.A. No. 166, one may be an owner of a mark due to its actual use but may not yet have the right to register such ownership here due to the owner’s failure to use the same in the Philippines for 2 months prior to registration. In the instant case, it is undisputed that Cointreau has been using the subject mark in France, prior to Ecole’s averred first use of the same in the Philippines, of which the latter was fully aware thereof. On the other hand, Ecole has no certificate of registration over the subject mark but only a pending application. Under the foregoing circumstances, even if Ecole was the first to use the mark in the Philippines, it cannot be said to have validly appropriated the same.
In any case, the present law on trademarks, Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines, as amended, has already dispensed with the requirement of prior actual use at the time of registration. Thus, there is more reason to allow the registration of the subject mark under the name of Cointreau as its true and lawful owner.