G.R. No. 269302 – CAMPBRIDGE WATERPROOFING SYSTEMS, INC., represented by CAMPBRIDGE PAINTS, INC., petitioner, vs. GREENSEAL PRODUCTS [M] SDN. BHD. and GREENSEAL PHILIPPINES CORPORATION, respondents.

J.Y. LOPEZ, J.

Rule Synopsis

Upon the enactment of the Intellectual Property Code, ownership over a trademark is acquired through registration. Notwithstanding, the certificate of registration remains only prima facie evidence of the validity of registration and the registrant’s ownership of the mark. Registrations done in bad faith or contrary to the provisions of the Intellectual Property Code may still be a basis for the cancellation of a mark.

Further, 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.

Facts

This dispute involves a petition for cancellation of the Trademark Registration (TM) 4-2009-001721 for the mark “GREENSEAL” filed by Greenseal Products (M) Sdn. Bhd. (Greenseal Malaysia) and Greenseal Philippines Corporation (Greenseal Philippines) [collectively, Greenseal] in May 2009.

The mark was registered in the name of Campbridge Waterproofing Systems, Inc., represented by Campbridge Paints, Inc. (Campbridge) for elastometric sealant.

Greenseal Malaysia alleged that it is the prior user of the mark, having adopted the same in 1986, and registered in Malaysia in 1993, also for elastometric sealant. It claimed that it used the name Greenseal and has distributed its products bearing the same globally, including the Philippines since 2004. Furthermore, that Greenseal Philippines is the exclusive distributor of Greenseal’s sealant products in the Philippines since 2006.

In 2010, when Greenseal Malaysia filed an application for trademark registration in the Philippines, it discovered that the mark “GREENSEAL” had been registered in the by Campbridge for the same line of goods. Hence, the subject petition for cancellation.

The adjudication officer of the Intellectual Property Office of the Philippines-Bureau of Legal Affairs (IPOPHL-BLA) granted the petition for cancellation, which the IPOPHL-BLA Director affirmed.

The IPOPIL-Office of the Director General (IPOPHL-ODG) granted Campbridge’s appeal and dismissed the petition for cancellation, which the Court of Appeals (CA) reversed reinstating the decision of the IPOPHL-BLA. The CA also denied Campbridge’s motion for reconsideration.

Hence, the instant petition.

Issues

Did the CA err in reinstating the decisions of the Director and adjudication officer of the IPOPHL-BLA, ordering the cancellation of TM 4-2009-001721 for “GREENSEAL” in the name of Campbridge?

Ruling and Discussion

No. The CA did not err in reinstating the decisions of the Director and adjudication officer of the IPOPHL-BLA, ordering the cancellation of TM 4-2009-001721 for “GREENSEAL” in the name of Campbridge.

Upon the enactment of the Intellectual Property Code, ownership over a trademark is acquired through registration. Notwithstanding, the certificate of registration remains only prima facie evidence of the validity of registration and the registrant’s ownership of the mark. Registrations done in bad faith or contrary to the provisions of the Intellectual Property Code may still be a basis for the cancellation of a mark.

Here, Campbridge’s registration was contrary to law. It is prohibited from appropriating Greenseal’s trade name as its trademark following Article 165 of the IPC. Campbridge’s use of the mark “GREENSEAL” on its products is unlawful as it is likely to mislead the public, giving the incorrect impression that its products are actually from respondent, when in fact they are not.

Further, 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.

Here, Greenseal’s trade name was used in the Philippines since 2004 and registered in the Philippines with the SEC since 2006, before Campbridge applied for trademark registration in 2009. As such, Campbridge’s registration of Greenseal’s trade name as a trademark is contrary to law and is a ground for cancellation of its registration.

However, the Supreme Court found insufficient proof of bad faith on the part of Campbridge.

dispositive

Petition denied. Decision and Resolution of the CA affirmed. TM 4-2009-001721 is cancelled.