Professional Documents
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Promulgated:
THE H.D. LEE COMPANY, INC.,
Respondent. June 7, 2017
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RESOLUTION
REYES, J.:
;1
Resolution 2 G.R. No. 210693
Antecedents
On December 21, 2001, H.D. Lee filed before the IPO an application
for the registration of the trademark, "LEE & OGIVE CURVE DESIGN."
H.D. Lee claimed that the said mark was first used in the Philippines on
October 31, 1996. Relative thereto, Application No. 4-2201-009602, on
outer clothing categorized under Class 25, which includes jeans, casual
pants, trousers, slacks, shorts, jackets, vests, shirts, blouses, sweaters, tops,
skirts, jumpers, caps, hats, socks, shoes, suspenders, belts and bandannas,
was filed. Within three years from the filing of the application, H.D. Lee
submitted to the IPO a Declaration of Actual Use of the mark. 5
Emerald opposed H.D. Lee's application; hence, Inter Partes Case No.
14-2007-00054 arose. Emerald argued that the approval of the application
will violate the exclusive use of its marks, "DOUBLE REVERSIBLE WA VE
LINE," and "DOUBLE CURVE LINES," which it has been using on a line of
clothing apparel since October 1, 1973 7 and 1980, respectively. Further,
Section 123.l(d)8 of Republic Act No. 8293, otherwise known as the
Intellectual Property Code (IPC), will likewise be breached because the
"LEE & OGIVE CURVE DESIGN' is confusingly similar or identical to the
"DOUBLE CURVE LINES' previously registered in Emerald's name. 9
Id. at 18.
6
Please see the Decision dated February 27, 2009 of the IPO's Bureau of Legal Affairs, id. at 280.
7
Please see CA Decision dated September 29, 2010 in CA-G.R. SP No. 105537; rol/o (G.R. No.
195415), pp. 10-29, at 11.
8
Sec. 123. Registrability. - 123.1. A mark cannot be registered ifit:
xx xx
(d) Is identical with a registered mark belonging to a different proprietor or a mark with an earlier
filing or priority date, in respect of:
(i) The same goods or services, or
(ii) Closely related goods or services, or
(iii) If it nearly resembles such a mark as to be likely to deceive or cause confusion;
xx xx
Rollo, p. 280.
JO
Id. at 18-19.
fi
Resolution 3 G.R. No. 210693
xx xx
xx xx
xx xx
11
Id. at 280-292.
12
AN ACT TO PROVIDE FOR THE REGISTRATION AND PROTECTION OF TRADE-MARKS, TRADE-
NAMES AND SERVICE-MARKS, DEFINING UNFAIR COMPETITION AND FALSE MARKING AND
PROVIDING REMEDIES AGAINST THE SAME. AND FOR OTHER PURPOSES. Approved on Juno 20, 194 7.
1
Resolution 4 G.R. No. 210693
[H.D. Lee] also claimed in its Answer that it registered its LEE &
OGIVE CURVE DESIGN mark in the [USA] on April 10, 1984 under
Registration No. 1,273,602 xx x. [H.D. Lee], however, failed to submit a
duly certified and authenticated copy of its certificate of registration for
Registration No. 1,273,602. In fact, [H.D. Lee] did not submit any
certified and authenticated certificate of registration of its mark LEE &
OGIVE CURVE DESIGN issued anywhere else. xx x.
xx xx
13
Rollo, pp. 288-292.
14
fd. at 323-332.
f
Resolution 5 G.R. No. 210693
Moreover, [H.D. Lee] has shown that LEE & OGIVE CURVE
DESIGN is a well-known mark. x x x
xx xx
Ruling of the CA
15
Id. at 331-332.
16
Id. at 333-388.
17
)
Id. at 17-34.
Resolution 6 G.R. No. 210693
Second, [H.D. Lee] was not able to prove that the mark "OGIVE
CURVE DEVICE" was well known internationally and in the Philippines
at the time of the filing of [Emerald's] application for registration. For a
trademark to be protected, the same must be "well known" in the country
where protection is sought. Such is not the case here, since the sale of
garments in the Philippines bearing [H.D. Lee's] mark "OGIVE CURVE
18
Id. at 25.
19
fd. at 30.
20
Id. at 30-31.
21
Id. at 31.
22
Id. at 32.
23
Id.
24
H.D. Lee v. Emerald
25
Rollo, pp. 198-199.
26
I
Id. at 436-437.
Resolution 7 G.R. No. 210693
DEVICE" began only in 1996. Prior to said date, there was no substantial
evidence proving commercial use of goods bearing the mark in the
Philippines. 27
27
Id. at 198.
28
Id. at 36-41.
29
Id. at 37.
30
Id. at 38.
31
Id. at 38-39.
32
Id. at 43-107.
33
Id. at 202-203.
34
Id. at 60.
35
Inter Partes Case No. 3498 before the IPO.
36
Rollo, pp. 54, 79.
A
Resolution 8 G.R. No. 210693
of judgment under Rule 39, Section 47(b) and (c)3 7 of the Rules of
Court applies. The issues of confusing similarity between the marks
involved herein and their prior use had been determined with finality by the
Court and the IPO DG. The same issues can no longer be raised before the
CA in CA-G.R. SP No. 126253 from which the instant petition arose.
Repetitive as it may be, in G.R. No. 195415, the Court had adjudged
that Emerald had prior actual use in the Philippines of the mark "DOUBLE
REVERSIBLE WAVE LINE (Back Pocket Design)" since October of 1973.
In Inter Partes Case No. 3498, the IPO DG had ruled that Emerald started
using the mark "DOUBLE CURVE LINES' on January 8, 1980. On the other
hand, H.D. Lee initially sold in the Philippines garments with the mark
"OGIVE CURVE DEVICE' only in 1996, and filed an application for the
said mark in the USA on November 9, 1981. 38
In the Resolution43 dated March 24, 2014, the Court initially denied
the instant petition for failure to sufficiently show any reversible error
committed by the CA.
37
Sec. 47. Effect ofjudgments or.final orders. - The effect of a judgment or final order rendered by
a court of the Philippines, having jurisdiction to pronounce the judgment or final order, may be as follows:
xx xx
(b) In other cases, the judgment or final order is, with respect to the matter directly adjudged or as
to any other matter that could have been missed in relation thereto, conclusive between the parties and their
successors in interest, by title subsequent to the commencement of the action or special proceeding,
litigating for the same thing and under the same title and in the same capacity; and
(c) In any other litigation between the same parties or their successors in interest, that only is
deemed to have been adjudged in a former judgment or final order which appears upon its face to have
been so adjudged, or which was actually and necessarily included therein or necessary thereto.
38
Rollo, pp. 72-75.
39
Id.at61, 144.
40
ld.at91.
41
Id. at 90.
42
Id. at 92.
43
Id. at 562.
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Resolution 9 G.R. No. 210693
In its Reply, 50 Emerald insisted that the instant petition still involves
the issue of the confusing similarity between "OGIVE CURVE DESIGN," on
one hand, and "DOUBLE REVERSIBLE WAVE LINE' and "DOUBLE
CURVE LINES," on the other. While H.D. Lee claims that the issue herein
is the registrability of "LEE & OGIVE CURVE DESIGN," the dominant
feature of the mark sought to be registered remains to be the "OGIVE
CURVE DESIGN." The latter had been among the foci of G.R. No. 195415.
Moreover, "LEE & OGIVE CURVE DESIGN'' is a composite mark, the parts
44
Id. at 563-580.
45
Id. at 571-572.
46
Id. at 572-575.
47
Id. at 802-810.
48
Id. at 803.
49
Id. at 805.
50
Id. at 817-827.
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Resolution 10 G.R. No. 210693
In its Comment54 on the instant petition, H.D. Lee once again stresses
the lack of identity between the facts and issues presented herein with those
resolved in G.R. No. 195415 and Inter Partes Case No. 3498. H.D. Lee
posits that G.R. No. 195415 and Inter Partes Case No. 3498 dealt with the
registrability of the mark "OGIVE CURVE DESIGN," which is distinct and
separate from "LEE & OGIVE CURVE DEVICE," subject of the instant
petition. 55
The present controversy arose from H.D. Lee's application for the
registration of the mark "LEE & OGIVE CURVE DESIGN," which was filed
in 2001, pending the final resolution of Emerald's separate applications for
the registration of the marks "DOUBLE CURVE LINES" and "DOUBLE
REVERSIBLE WAVE LINE (Back Pocket Design)."
51
Id. at 820.
52
Id. at 822.
53
Id. at 841-844.
54
Id. at 847-855.
55
Id. at 849.
56
Id. at 850.
57
Id. at 859-873.
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Resolution 11 G.R. No. 210693
Meanwhile, in G.R. No. 195415, the Court, via the Resolutions dated
November 28, 2012 and January 28, 2013, made the following findings with
finality: (1) Emerald has been using the mark "DOUBLE REVERSIBLE
WAVE LINE (Back Pocket Design)" since October 1973, with sales invoices
proving actual commercial use of the mark more than two months before the
application for its registration in 1990; (2) H.D. Lee's sale of its garments in
the Philippines only began in 1996; and (3) H.D. Lee failed to prove that the
mark "OGIVE CURVE DEVICE' was well-known locally and
internationally at the time Emerald filed its application for the registration of
the mark "DOUBLE REVERSIBLE WAVE LINE (Back Pocket Design)." 59
58
Id. at 288-289.
59
Id. at 198-199; 436-437.
A
60
Id. at 54.
61
727Phil. l (2014).
Resolution 12 G.R. No. 210693
The reason for this is that litigation must end and terminate
sometime and somewhere, and it is essential to an effective and efficient
administration of justice that, once a judgment has become final, the
winning party be not deprived of the fruits of the verdict. Courts must
guard against any scheme calculated to bring about that result and must
62
frown upon any attempt to prolong the controversies.
The elements for res judicata to apply are as follows: (a) the former
judgment was final; (b) the court that rendered it had jurisdiction over the
subject matter and the parties; (c) the judgment was based on the merits;
and (d) between the first and the second actions, there was an identity of
parties, subject matters, and causes of action.
Res judicata embraces two concepts: (1) bar by prior judgment and
(2) conclusiveness of judgment.
62
Id. at 15, citing Siy v. National labor Relations Commission, 505 Phil. 265, 274 (2005).
63
Pryce Corporation v. China Banking Corporation; id. at 11-12.
A
Resolution 13 G.R. No. 210693
The Court needs to stress that in G.R. No. 195415 and Inter Partes
Case No. 3498 before the IPO, Emerald had already established with
finality its rights over the registration of the marks "DOUBLE CURVE
LINES' and "DOUBLE REVERSIBLE WAVE LINE' as against H.D. Lee's
"OGIVE CURVE DESIGN."
SO ORDERED.
Associate Justice
WE CONCUR:
J. VELASCO, JR.
Asfociate Justice
Chairperson
Associate Justice
64
Id. at 27.
Resolution 14 G.R. No. 210693
ATTESTATION
I attest that the conclusions in the above Resolution had been reached
in consultation before the case was assigned to the writer of the on.inion of
the Court's Division.
CERTIFICATION
Clerk of Con rt
Thi.rd Divisien
JUL I n ?011
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