Petitioner Fredco Manufacturing filed a petition to cancel the registration of respondent’s mark ‘Harvard Veritas Shield Symbol’ used in products such as bags and t-shirts. Fredco alleges that the mark ‘Harvard’ was first used and registered by New York Garments, a domestic corporation and its predecessor-in-interest, used in its clothing articles. Respondent Harvard University on the other hand, alleges that it is the lawful owner of the name and mark in numerous countries worldwide including in the Philippines which was used in commerce as early as 1872. Respondent further contend that it never authorized any person to use its name or mark in connection with any goods in the Philippines. The IPO Bureau of Legal Affairs cancelled respondent’s registration of the mark but only over the goods which are confusingly similar with that of petitioner. IPO reversed the decision. CA affirmed.
Whether or not respondent’s trade name is infringed.
Fredco’s use of the mark “Harvard,” coupled with its claimed origin in Cambridge, Massachusetts, obviously suggests a false connection with Harvard University. On this ground alone, Fredco’s registration of the mark “Harvard” should have been disallowed. Indisputably, Fredco does not have any affiliation or connection with Harvard University, or even with Cambridge, Massachusetts. Fredco or its predecessor New York Garments was not established in 1936, or in the U.S.A. as indicated by Fredco in its oblong logo.
Under Philippine law, a trade name of a national of a State that is a party to the Paris Convention, whether or not the trade name forms part of a trademark, is protected “without the obligation of filing or registration.” “Harvard” is the trade name of the world famous Harvard University, and it is also a trademark of Harvard University. Under Article 8 of the Paris Convention, as well as Section 37 of R.A. No. 166, Harvard University is entitled to protection in the Philippines of its trade name “Harvard” even without registration of such trade name in the Philippines. This means that no educational entity in the Philippines can use the trade name “Harvard” without the consent of Harvard University. Likewise, no entity in the Philippines can claim, expressly or impliedly through the use of the name and mark “Harvard,” that its products or services are authorized, approved, or licensed by, or sourced from, Harvard University without the latter’s consent.