La Chemise Lacoste v. Fernandez (G.R. No. L-63796-97)

Facts:

Petitioner La Chemise Lacoste is a foreign corporation and the actual owner of the trademarks ‘Lacoste,’ ‘Chemise Lacoste,’ and ‘Crocodile Device’ used on clothing and other goods that are sold in many parts of the world. Herein respondent Hemadas & Co., a domestic firm, applied and was granted registration of the mark ‘Chemise Lacoste and Crocodile Device’ for its garment products. Sometime later, petitioner applied for the registration of its mark ‘Crocodile Device’ and ‘Lacoste’ but was opposed by herein respondent. Later, petitioner filed a letter-complaint of unfair competition before the NBI which led to the issuance of search warrants and the seizure of goods of respondent Hemadas. Respondent moved to quash the warrants alleging that its trademark was different from petitioner’s trademark. Respondent court ruled to set aside the warrants and to return the seized goods.

Issue:

Whether or not petitioner’s trademark is a well-known mark protected under the Paris Convention.

Ruling: YES.

In upholding the right of the petitioner to maintain the present suit before our courts for unfair competition or infringement of trademarks of a foreign corporation, we are moreover recognizing our duties and the rights of foreign states under the Paris Convention for the Protection of Industrial Property to which the Philippines and France are parties.

Pursuant to this obligation, the Ministry of Trade issued a memorandum addressed to the Director of the Patents Office directing the latter to reject all pending applications for Philippine registration of signature and other world famous trademarks by applicants other than its original owners or users. The conflicting claims over internationally known trademarks involve such name brands as Lacoste, et. al. It is further directed that, in cases where warranted, Philippine registrants of such trademarks should be asked to surrender their certificates of registration, if any, to avoid suits for damages and other legal action by the trademarks’ foreign or local owners or original users.

The Intermediate Appellate Court, in the La Chemise Lacoste S.A. v. Sadhwani decision which we cite with approval sustained the power of the Minister of Trade to issue the implementing memorandum and declared La Chemise Lacoste S.A. the owner of the disputed trademark, stating: “In the case at bar, the Minister of Trade, as ‘the competent authority of the country of registration,’ has found that among other well-known trademarks ‘Lacoste’ is the subject of conflicting claims. For this reason, applications for its registration must be rejected or refused, pursuant to the treaty obligation of the Philippines.”

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