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Case Digest: Harvard University vs.

Harvard Jeans

September 29, 2011 Harvard University, on the other hand claimed that the name and mark
Harvard was adopted in 1639 as the name of Harvard College of
Cambridge, Massachusetts, USA. The marks Harvard and Harvard Veritas
Fredco Manufacturing Corporation v. President and Fellows of Harvard Shield Symbol, had been used in commerce since 1872, and was registered
College in more than 50 countries.

G.R. No. 185917, 1 June 2011


The Bureau of Legal Affairs ruled in favor of Fredco and ordered the
cancellation of Registration No. 56561. It found Fredco to be the prior user
By: Erwin V. Zamora and adopter of the mark Harvard in the Philippines. On appeal, the Office
of the Director General of the Intellectual Property Office reversed the BLA
ruling on the ground that more than the use of the trademark in the
Fredco Manufacturing Corporation (Fredco) filed before the Bureau of Legal Philippines, the applicant must be the owner of the mark sought to be
Affairs of the Philippine Intellectual Property Office a Petition for registered. Fredco, not being the owner of the mark, had no right to register
Cancellation of Registration No. 56561 issued to President and Fellows of it.
Harvard College (Harvard University) for the mark Harvard Veritas Shield
Symbol under classes 16, 18, 21, 25 and 28.
The Court Appeals affirmed the decision of the Office of the Director
General. Fredco appealed the decision with the Supreme Court. In its
Fredco claimed that Harvard University had no right to register the mark in appeal, Fredco insisted that the date of actual use in the Philippines should
class 25, since its Philippine registration was based on a foreign registration. prevail on the issue of who had a better right to the mark.
Thus, Harvard University could not have been considered as a prior adopter
and user of the mark in the Philippines.
The Supreme Court ruled:

Fredco explained that the mark was first used in the Philippines by its
predecessor-in-interest New York Garments as early as 1982, and a The petition has no merit.
certificate of registration was issued in 1988 for goods under class 25.
Although the registration was cancelled for the non-filing of an affidavit of
use, the fact remained that the registration preceded Harvard Universitys Under Section 2 of Republic Act No. 166, as amended (R.A. No. 166), before
use of the subject mark in the Philippines. a trademark can be registered, it must have been actually used in commerce
for not less than two months in the Philippines prior to the filing of an
application for its registration. While Harvard University had actual prior use
of its marks abroad for a long time, it did not have actual prior use in the There is no question then, and this Court so declares, that "Harvard" is a
Philippines of the mark "Harvard Veritas Shield Symbol" before its well-known name and mark not only in the United States but also
application for registration of the mark "Harvard" with the then Philippine internationally, including the Philippines. The mark "Harvard" is rated as one
Patents Office. However, Harvard University's registration of the name of the most famous marks in the world. It has been registered in at least 50
"Harvard" is based on home registration which is allowed under Section 37 countries. It has been used and promoted extensively in numerous
publications worldwide. It has established a considerable goodwill
of R.A. No. 166. As pointed out by Harvard University in its Comment:
worldwide since the founding of Harvard University more than 350 years
ago. It is easily recognizable as the trade name and mark of Harvard
University of Cambridge, Massachusetts, U.S.A., internationally known as
Although Section 2 of the Trademark law (R.A. 166) requires for the one of the leading educational institutions in the world. As such, even
registration of trademark that the applicant thereof must prove that the before Harvard University applied for registration of the mark "Harvard" in
same has been actually in use in commerce or services for not less than two the Philippines, the mark was already protected under Article 6bis and
(2) months in the Philippines before the application for registration is filed,
Article 8 of the Paris Convention.
where the trademark sought to be registered has already been registered in
a foreign country that is a member of the Paris Convention, the requirement
of proof of use in the commerce in the Philippines for the said period is not
necessary. An applicant for registration based on home certificate of
registration need not even have used the mark or trade name in this
country.

In any event, under Section 239.2 of Republic Act No. 8293 (R.A. No. 8293),
"[m]arks registered under Republic Act No. 166 shall remain in force but
shall be deemed to have been granted under this Act x x x," which does not
require actual prior use of the mark in the Philippines. Since the mark
"Harvard Veritas Shield Symbol" is now deemed granted under R.A. No.
8293, any alleged defect arising from the absence of actual prior use in the
Philippines has been cured by Section 239.2.

The Supreme Court further ruled that Harvard University is entitled to


protection in the Philippines of its trade name Harvard even without
registration of such trade name in the Philippines. It explained:
M

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