Tuesday, January 28, 2014

Philippines Supreme Court gets the shoe on the right foot

The Philippines Supreme Court in November 2013 decided a case in favour of a petitioner, the German corporation, Birkenstock Orthopaedie GMBH and Co. KG. It held that the petitioner is the true and lawful owner of the mark BIRKENSTOCK and is thus entitled to its registration.

In this case, trademark applications for several graphic variants were filed by Birkenstock.  There were however prior similar marks. Philippine Shoe Expo Marketing Corporation filed oppositions against the applications. It alleged that its predecessor-in-title Shoe Town International and Industrial Corporation had used the BIRKENSTOCK & DEVICE  mark for more than 16 years. The mark however was cancelled due to failure to file the required 10th year Declaration of Use. However the Respondent Shoe Expo said that it continued to use said mark despite the failure to file the required DAU.

Ruling in favour of Birkenstock, the Court held that they had established their true and lawful ownership of the mark BIRKENSTOCK. Birkenstock submitted evidence relating to the origin and history of the mark and its use in commerce long before respondent registered its mark in the Philippines. BIRKENSTOCK was first adopted in 1774 by its inventor Johann Birkenstock. On the contrary, the respondent only presented its cancelled registration for BIRKENSTOCK & DEVICE, sales invoices and advertisements. The Court thus held that respondent’s evidence did not conclusively prove ownership as these merely showed the Respondent’s transactions.

The Court rationalized that registration, by itself, is not a mode of acquiring ownership. It merely creates a prima facie presumption, which must give way to contrary evidence. The Court further held that it is not the application or registration that vests ownership of the mark, but it is the ownership of the trademark that confers the right to register the same. Hence, the prima facie presumption brought about by the registration of the mark may be defeated by evidence of prior use by another, as trademark is a creation of use and belongs to the one who first used it in trade.

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