The Supreme Court affirmed that Renaud Cointreau & Cie, a French partnership, is the rightful owner of the “LE CORDON BLEU & DEVICE” trademark, despite Ecole De Cuisine Manille’s prior use in the Philippines. The Court prioritized international recognition and prior registration in the country of origin, France, under the Paris Convention, over local prior use. This decision underscores that international treaties and the principle of protecting well-known foreign marks can override domestic use in trademark disputes, especially when the local user was aware of the mark’s existence and reputation abroad.

Culinary Clash: Who Holds the Recipe for a Trademark Dispute?

This case revolves around a dispute over the trademark “LE CORDON BLEU & DEVICE” between Ecole De Cuisine Manille (Ecole), claiming prior use in the Philippines, and Renaud Cointreau & Cie (Cointreau), asserting ownership based on international recognition and registration in France. The central legal question is: who has the superior right to register the trademark in the Philippines? This involves navigating the complexities of trademark law, particularly the interplay between local use, international treaties like the Paris Convention, and the principle of protecting well-known foreign marks.

The Intellectual Property Office (IPO) Director General reversed the Bureau of Legal Affairs’ (BLA) decision, siding with Cointreau. The IPO Director General emphasized that ownership, not mere use, is the primary determinant for registration. He considered Cointreau’s undisputed use of the mark since 1895 for its culinary school in Paris, France, and the fact that Ecole’s directress had trained there. This suggested Ecole’s appropriation of the mark was unjust. Conversely, the BLA initially favored Ecole, highlighting the significance of trademark adoption and use within the Philippine commerce and that the law on trademarks rests upon the doctrine of nationality or territoriality.

The Court of Appeals (CA) affirmed the IPO Director General’s decision, emphasizing that Cointreau, being the true owner, has the right to register the mark in the Philippines under Section 37 of Republic Act (R.A.) No. 166, the then-governing trademark law. It also noted that Ecole’s use of the mark, even if prior, was in bad faith, and Ecole lacked a certificate of registration that would notify Cointreau of its use. In resolving the dispute, the Supreme Court had to carefully examine the provisions of R.A. No. 166, particularly Sections 2 and 2-A.

Under Section 2 of R.A. No. 166, the trademark laws state:

Section 2. What are registrable. — Trademarks, trade names and service marks owned by persons, corporations, partnerships or associations domiciled in the Philippines and by persons, corporations, partnerships or associations domiciled in any foreign country may be registered in accordance with the provisions of this Act: Provided, That said trademarks, trade names, or service marks are actually in use in commerce and services not less than two months in the Philippines before the time the applications for registration are filed; And provided, further, That the country of which the applicant for registration is a citizen grants by law substantially similar privileges to citizens of the Philippines, and such fact is officially certified, with a certified true copy of the foreign law translated into the English language, by the government of the foreign country to the Government of the Republic of the Philippines.

Further, Section 2-A defines trademark ownership and how it is acquired under the law:

Section 2-A. Ownership of trademarks, trade names and service marks; how acquired. — Anyone who lawfully produces or deals in merchandise of any kind or who engages in any lawful business, or who renders any lawful service in commerce, by actual use thereof in manufacture or trade, in business, and in the service rendered, may appropriate to his exclusive use a trademark, a trade name, or a service mark from the merchandise, business, or service of others. The ownership or possession of a trademark, trade name or service mark not so appropriated by another, to distinguish his merchandise, business or service from the merchandise, business or services of others. The ownership or possession of a trademark, trade name, service mark, heretofore or hereafter appropriated, as in this section provided, shall be recognized and protected in the same manner and to the same extent as are other property rights known to this law.

The Supreme Court found Ecole’s argument, that it was the first to use the mark in the Philippines and therefore entitled to registration, untenable. While Section 2 of R.A. No. 166 requires actual use in commerce in the Philippines for two months before registration, it emphasizes ownership as the primary requirement. Section 2-A further clarifies that ownership is acquired through lawful production or dealing in merchandise, and that the mark must not have been previously appropriated by another. This highlights the importance of prior claim and good faith in trademark disputes.

Furthermore, the Philippines is a signatory to the Paris Convention for the Protection of Industrial Property, which obligates it to protect the trade names of nationals of signatory countries, whether or not the trade name is part of a trademark. Articles 6bis and 8 of the Paris Convention state that member countries must:

ARTICLE 6bis

(1) The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well- known mark or an imitation liable to create confusion therewith.

ARTICLE 8

A trade name shall be protected in all the countries of the Union without the obligation of filing or registration, whether or not it forms part of a trademark.

Cointreau’s long-standing use of the mark in France since 1895, coupled with Ecole’s awareness of this use, weighed heavily in the Court’s decision. This awareness was underscored by the fact that Ecole’s directress had trained at Cointreau’s Le Cordon Bleu culinary school in Paris. The court emphasized that Ecole could not claim ownership over a mark already in use by Cointreau. The decision highlights the interplay of prior use, international recognition, and good faith in determining trademark ownership.

The court’s decision ultimately rested on the principle that Ecole’s appropriation of the “LE CORDON BLEU & DEVICE” mark was not done in good faith, as it was fully aware of Cointreau’s prior use. This is further substantiated by the sequence of registration and application between Cointreau and Ecole. Cointreau registered its trademark first, both abroad and locally. In addition, Cointreau has secured Home Registration No. 1,390,912 dated November 25, 1986 from its country of origin, as well as several trademark registrations in the Philippines. Ecole’s application was filed only on February 24, 1992, after Cointreau filed its trademark application. This underscores the importance of priority in trademark registration.

FAQs

What was the key issue in this case?	The key issue was determining the rightful owner of the “LE CORDON BLEU & DEVICE” trademark: Ecole, based on prior use in the Philippines, or Cointreau, based on international recognition and prior registration in France.
What is the significance of the Paris Convention in this case?	The Paris Convention obligates signatory countries, including the Philippines, to protect the trade names of nationals of other signatory countries, even without local registration, thus favoring Cointreau.
Did Ecole’s prior use in the Philippines give them a superior right to the trademark?	No, the Court ruled that Ecole’s prior use was not in good faith because they were aware of Cointreau’s prior use of the mark internationally.
Why was Cointreau considered the rightful owner of the trademark?	Cointreau’s registration in its country of origin, prior use since 1895, and Ecole’s knowledge of such use, established Cointreau as the rightful owner of the mark.
What does R.A. No. 166 say about trademark ownership?	R.A. No. 166 emphasizes that ownership of a trademark is acquired through lawful production or dealing in merchandise, provided the mark has not been previously appropriated by another.
How did Ecole’s directress’s training at Le Cordon Bleu affect the case?	It demonstrated Ecole’s awareness of Cointreau’s use of the mark, undermining their claim of good faith in appropriating the mark for their own use.
What is the current law on trademarks in the Philippines?	The current law is Republic Act No. 8293, also known as the Intellectual Property Code of the Philippines, as amended, which has dispensed with the requirement of prior actual use at the time of registration.
What is the main function of a trademark?	The function of a trademark is to distinctly point out the origin or ownership of goods or services and to protect the manufacturer against the sale of inferior or different articles as its product.

In conclusion, the Supreme Court’s decision in this case underscores the importance of international treaties and good faith in trademark disputes. It serves as a reminder that prior use alone does not guarantee trademark ownership, especially when the user is aware of a prior claim by another party abroad. The ruling also highlights that current trademark laws, like Republic Act No. 8293, have further evolved to prioritize ownership over prior use, reflecting a shift towards greater protection of international brands and intellectual property rights.

For inquiries regarding the application of this ruling to specific circumstances, please contact ASG Law through contact or via email at frontdesk@asglawpartners.com.

Disclaimer: This analysis is provided for informational purposes only and does not constitute legal advice. For specific legal guidance tailored to your situation, please consult with a qualified attorney.
Source: Ecole de Cuisine Manille v. Renaud Cointreau, G.R. No. 185830, June 05, 2013