Coffee Partners, Inc. vs. San Francisco Coffee & Roastery, Inc. G.R. No. 169504. Marc !, "010.

F#C$S% - Coffee Partners, Inc. is a local corporation engaged in the business of establishing and maintaining coffee shops in the country. It has franchise agreement with Coffee Partners Ltd., a business entity organized and existing under the laws of British irgin Islands, for a non- exclusi!e right to operate coffee shops in the Philippines using trademar"s designed by CPL such as #$%& '(%&CI$C) C)''**.+ - $an 'rancisco Coffee , (oastery, Inc. is a local corporation engaged in the wholesale and retail sale of coffee. It had built a customer base that included 'igaro Company, -agaytay .ighlands, 'at /illy0s, and other coffee companies. - $an 'rancisco Coffee , (oastery, Inc. formed a 1oint !enture company with Boyd Coffee 2$% under the name Boyd Coffee Company Philippines, Inc. BCCPI is engaged in the processing, roasting and wholesale selling of coffee. - $an 'rancisco Coffee and (oastery, Inc. disco!ered that Coffee Partners, Inc. was about to open a coffee shop under the name #$%& '(%&CI$C) C)''**+ in Libis, 3C. - %ccording to $an 'rancisco Coffee and (oastery, Inc., petitioner0s shop caused confusion in the minds of the public as it bore similar name and it also engaged in the business of selling coffee. - $an 'rancisco Coffee and (oastery, Inc. sent a letter to Coffee Partners, Inc. demanding that the latter stop using the name #$%& '(%&CI$C) C)''**.+ It also filed a complaint with the Bureau of Legal %ffairsIntellectual Property )ffice for infringement and4or unfair competition with claims for damages. - BL%-IP)5 Petitioner0s use of trademar" #$%& '(%&CI$C) C)''**+ will li"ely cause confusion because of the exact similarity in sound, spelling, pronunciation, and commercial impression of the words #$%&

'(%&CI$C)+ which is the dominant portion of the respondent0s trade name and petitioner0s trademar". )n the issue of unfair competition, Coffee Partner0s Inc. is absol!ed from liability because it found out that it adopted the trademar" #$%& '(%&CI$C) C)''**+ because of the authority granted to it by its franchisor. -here is no e!idence of intent to defraud on the part of petitioner. It also dismissed the claim of actual damages because it0s claim for profit loss were bases merely on assumptions as respondent had not e!en started the operation of its coffee carts. Both parties mo!ed for partial reconsideration. BL%-IP) denied the parties0 partial motion for reconsideration. Both appealed to the )ffice of the 6irector 7eneral- Intellectual Property )ffice. )67-IP)5 Petitioner0s use of the trademar" #$%& '(%&CI$C) C)''**+ did not infringe on the respondent0s trade name. C%5 (einstated the decision of BL%-IP) finding infringement. .ence, this case.

ISS&'% /hether petitioner0s use of the trademar" #$%& '(%&CI$C) C)''**+ constitutes infringement of respondent0s trade name #$%& '(%&CI$C) C)''** , ()%$-*(8, I&C.,+ e!en if the trade name is not registered with Intellectual Property )ffice. R&(ING% % trade name needs not to be registered with the Intellectual Property )ffice before an infringement suit may be filed by its owner against the owner of an infringing trademar". %ll that is re9uired is that the trade name is pre!iously used in trade or commerce in the Philippines. (% :;:<, which too" effect on =anuary >, >??:, has dispensed with the registration re9uirement. $ec >@A.; of (% :;?< categorically states that trade names shall be protected, e!en prior to or without registration with the IP), against any unlawful act including subse9uent use of trade name by a third party, whether as

trade name or trademar" li"ely to mislead the public.