FACTS: On 10 August 2005, petitioner Fredco Manufacturing Corporation (Fredco), a corporation organized and existing under the laws of the Philippines, filed a Petition for Cancellation of Registration No. 56561 before the Bureau of Legal Affairs of the Intellectual Property Office (IPO) against respondents President and Fellows of Harvard College (Harvard University), a corporation organized and existing under the laws of Massachusetts, United States of America. The case was docketed as Inter Partes Case No. 14-2005-00094.
Fredco alleged that Registration No. 56561 was issued to Harvard University on 25 November 1993 for the mark “Harvard Veritas Shield Symbol” for decals, tote bags, serving trays, sweatshirts, t-shirts, hats and flying discs under Classes 16, 18, 21, 25 and 28 of the Nice International Classification of Goods and Services. Fredco alleged that the mark “Harvard” for t-shirts, polo shirts, sandos, briefs, jackets and slacks was first used in the Philippines on 2 January 1982 by New York Garments Manufacturing & Export Co., Inc. (New York Garments), a domestic corporation and Fredco’s predecessor-in-interest. On 24 January 1985, New York Garments filed for trademark registration of the mark “Harvard” for goods under Class 25. The application matured into a registration and a Certificate of Registration was issued on 12 December 1988, with a 20-year term subject to renewal at the end of the term. The registration was later assigned to Romeo Chuateco, a member of the family that owned New York Garments.
Fredco alleged that it was formed and registered with the Securities and Exchange Commission on 9 November 1995 and had since then handled the manufacture, promotion and marketing of “Harvard” clothing articles. Fredco alleged that at the time of issuance of Registration No. 56561 to Harvard. University, New York Garments had already registered the mark “Harvard” for goods under Class 25. Fredco alleged that the registration was cancelled on 30 July 1998 when New York Garments inadvertently failed to file an affidavit of use/non-use on the fifth anniversary of the registration but the right to the mark “Harvard” remained with its predecessor New York Garments and now with Fredco.
Harvard University, on the other hand, alleged that it is the lawful owner of the name and mark “Harvard” in numerous countries worldwide, including the Philippines.
The name and mark “Harvard” was adopted in 1639 as the name of Harvard College of Cambridge, Massachusetts, U.S.A. The name and mark “Harvard” was allegedly used in commerce as early as 1872. Harvard University is over 350 years old and is a highly regarded institution of higher learning in the United States and throughout the world. Harvard University promotes, uses, and advertises its name “Harvard” through various publications, services, and products in foreign countries, including the Philippines. Harvard University further alleged that the name and the mark have been rated as one of the most famous brands in the world, valued between US$750,000,000 and US$1,000,000,000.
Harvard University alleged that in March 2002, it discovered, through its international trademark watch program, Fredco’s website http://www.harvard-usa.com. The website advertises and promotes the brand name “Harvard Jeans USA” without Harvard University’s consent. The website’s main page shows an oblong logo bearing the mark “Harvard Jeans USAÂ®,” “Established 1936,” and “Cambridge, Massachusetts.” On 20 April 2004, Harvard University filed an administrative complaint against Fredco before the IPO for trademark infringement and/or unfair competition with damages.
Bureau of Legal Affairs IPO: cancelled Harvard University’s registration of the mark “Harvard” under Class 25.374-399.
Office of the Director GeneraL: ruled that more than the use of the trademark in the Philippines, the applicant must be the owner of the mark sought to be registered. The Director General ruled that the right to register a trademark is based on ownership and when the applicant is not the owner, he has no right to register the mark. The Director General noted that the mark covered by Harvard University’s Registration No. 56561 is not only the word “Harvard” but also the logo, emblem or symbol of Harvard University. The Director General ruled that Fredco failed to explain how its predecessor New York Garments came up with the mark “Harvard.” In addition, there was no evidence that Fredco or New York Garments was licensed or authorized by Harvard University to use its name in commerce or for any other use.
CA: Affirmed the decision of the Office of the Director General of the IPO.
The Court of Appeals adopted the findings of the Office of the Director General and ruled that the latter correctly set aside the cancellation by the Director of the Bureau of Legal Affairs of Harvard University’s trademark registration under Class 25. The Court of Appeals ruled that Harvard University was able to substantiate that it appropriated and used the marks “Harvard” and “Harvard Veritas Shield Symbol” in Class 25 way ahead of Fredco and its predecessor New York Garments. The Court of Appeals also ruled that the records failed to disclose any explanation for Fredco’s use of the name and mark “Harvard” and the words “USA,” “Established 1936,” and “Cambridge, Massachusetts” within an oblong device, “US Legend” and “Europe’s No. 1 Brand.”
ISSUE: whether the Court of Appeals committed a reversible error in affirming the decision of the Office of the Director General of the IPO.
HELD: NO. There are two compelling reasons why Fredco’s petition must fail.
First, Fredco’s registration of the mark “Harvard” and its identification of origin as “Cambridge, Massachusetts” falsely suggest that Fredco or its goods are connected with Harvard University, which uses the same mark “Harvard” and is also located in Cambridge, Massachusetts. This can easily be gleaned from the following oblong logo of Fredco that it attaches to its clothing line:
Fredco’s registration of the mark “Harvard” should not have been allowed because Section 4 (a) of R.A. No. 166 prohibits the registration of a mark “which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs . . . .” Section 4 (a) of R.A. No. 166 provides:
Section 4. Registration of trade-marks, trade-names and service-marks on the principal register. — There is hereby established a register of trade-mark, trade-names and service-marks which shall be known as the principal register. The owner of a trade-mark, a trade-name or service-mark used to distinguish his goods, business or services from the goods, business or services of others shall have the right to register the same on the principal register, unless it:
(a) Consists of or comprises immoral, deceptive or scandalous manner, or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute;
(b) . . . (emphasis supplied)
Fredco’s use of the mark “Harvard,” coupled with its claimed origin in Cambridge, Massachusetts, obviously suggests a false connection with Harvard University. On this ground alone, Fredco’s registration of the mark “Harvard” should have been disallowed. EcDAT
Indisputably, Fredco does not have any affiliation or connection with Harvard University, or even with Cambridge, Massachusetts. Fredco or its predecessor New York Garments was not established in 1936, or in the U.S.A. as indicated by Fredco in its oblong logo. Fredco offered no explanation to the Court of Appeals or to the IPO why it used the mark “Harvard” on its oblong logo with the words “Cambridge, Massachusetts,” “Established in 1936,” and “USA.” Fredco now claims before this Court that it used these words “to evoke a ‘lifestyle’ or suggest a ‘desirable aura’ of petitioner’s clothing lines.” Fredco’s belated justification merely confirms that it sought to connect or associate its products with Harvard University, riding on the prestige and popularity of Harvard University, and thus appropriating part of Harvard University’s goodwill without the latter’s consent.
Section 4 (a) of R.A. No. 166 is identical to Section 2 (a) of the Lanham Act, the trademark law of the United States. These provisions are intended to protect the right of publicity of famous individuals and institutions from commercial exploitation of their goodwill by others. What Fredco has done in using the mark “Harvard” and the words “Cambridge, Massachusetts,” “USA” to evoke a “desirable aura” to its products is precisely to exploit commercially the goodwill of Harvard University without the latter’s consent. This is a clear violation of Section 4 (a) of R.A. No. 166. Under Section 17 (c) of R.A. No. 166, such violation is a ground for cancellation of Fredco’s registration of the mark “Harvard” because the registration was obtained in violation of Section 4 of R.A. No. 166. acHTIC
Second, the Philippines and the United States of America are both signatories to the Paris Convention for the Protection of Industrial Property (Paris Convention). The Philippines became a signatory to the Paris Convention on 27 September 1965. Articles 6bis and 8 of the Paris Convention state:
(i) The countries of the Union undertake either administratively 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, imitation or translation, liable to create confusion or a mark considered by the competent authority of the country as being already the mark of a person entitled to the benefits of the present 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.
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. (Emphasis supplied)
Thus, this Court has ruled that the Philippines is obligated to assure nationals of countries of the Paris Convention that they are afforded an effective protection against violation of their intellectual property rights in the Philippines in the same way that their own countries are obligated to accord similar protection to Philippine nationals.
Article 8 of the Paris Convention has been incorporated in Section 37 of R.A. No. 166, as follows:
Section 37. Rights of foreign registrants. — Persons who are nationals of, domiciled in, or have a bona fide or effective business or commercial establishment in any foreign country, which is a party to any international convention or treaty relating to marks or trade-names, or the repression of unfair competition to which the Philippines may be a party, shall be entitled to the benefits and subject to the provisions of this Act to the extent and under the conditions essential to give effect to any such convention and treaties so long as the Philippines shall continue to be a party thereto, except as provided in the following paragraphs of this section.
xxx xxx xxx
Trade-names of persons described in the first paragraph of this section shall be protected without the obligation of filing or registration whether or not they form parts of marks.
xxx xxx xxx (Emphasis supplied)
Thus, under Philippine law, a trade name of a national of a State that is a party to the Paris Convention, whether or not the trade name forms part of a trademark, is protected “without the obligation of filing or registration.”
“Harvard” is the trade name of the world famous Harvard University, and it is also a trademark of Harvard University. Under Article 8 of the Paris Convention, as well as Section 37 of R.A. No. 166, Harvard University is entitled to protection in the Philippines of its trade name “Harvard” even without registration of such trade name in the Philippines. This means that no educational entity in the Philippines can use the trade name “Harvard” without the consent of Harvard University. Likewise, no entity in the Philippines can claim, expressly or impliedly through the use of the name and mark “Harvard,” that its products or services are authorized, approved, or licensed by, or sourced from, Harvard University without the latter’s consent.
We also note that in a Decision dated 18 December 2008 involving a separate case between Harvard University and Streetward International, Inc., the Bureau of Legal Affairs of the IPO ruled that the mark “Harvard” is a “well-known mark.” This Decision, which cites among others the numerous trademark registrations of Harvard University in various countries, has become final and executory. SCEDAI
There is no question then, and this Court so declares, that “Harvard” is a well-known name and mark not only in the United States but also internationally, including the Philippines. The mark “Harvard” is rated as one of the most famous marks in the world. It has been registered in at least 50 countries. It has been used and promoted extensively in numerous publications worldwide. It has established a considerable goodwill 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 one of the leading educational institutions in the world. As such, even before Harvard University applied for registration of the mark “Harvard” in the Philippines, the mark was already protected under Article 6bis and Article 8 of the Paris Convention. Again, even without applying the Paris Convention, Harvard University can invoke Section 4 (a) of R.A. No. 166 which prohibits the registration of a mark “which may disparage or falsely suggest a connection with persons, living or dead,institutions, beliefs . . . .”