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The Philippines: Proof of actual use of the mark

H D Lee of the USA, owner of the famous brand Lee for jeans, suffered another setback in its trade mark battle with local company Emerald Garment Manufacturing Co. As far back as 1995, the Supreme Court issued decision in GR 100098 holding that Emerald's trade mark Stylistic Mr Lee is not confusingly similar to H D Lee's trademark Lee, applying the holistic test, despite the decisions of the then Bureau of Patents, Trademarks, Technology Transfer (now the Intellectual Property Office of the Philippines) and the Court of Appeals using the dominancy test. This 1995 decision also ruled that while H D Lee was the senior registrant, it failed to substantiate its claim of prior use of the mark dating as far back as 1946, while Emerald was able to provide sales invoices proving actual use since 1975.

The recent decision of the Supreme Court on June 7 2017 (GR 210693) involved a different trade mark of H D Lee, Lee & Ogive curve design, the registration of which was opposed by Emerald on account of its earlier registration for its marks Double Curve Lines and Double Reversible Wave Line (pictured).

Apparently, there was an earlier opposition action (GR No 195415) filed by H D Lee against Emerald's Double Reversible Wave Line wherein the former claimed that Emerald's mark was confusingly similar to its mark Ogive Curve Design, which it claimed to be internationally well known and protected by the Paris Convention. In this case, H D Lee failed to provide proof of earlier use of its mark, over the evidence of use provided by Emerald dating back to October 1973, and to prove that its mark was well known in the Philippines.

H D Lee argued that GR 195415 should not bar this case as the causes of action are different. However, the Supreme Court considered H D Lee's arguments as an engagement into "hair-splitting distinctions", and ruled that the principle of conclusiveness of judgment applies to the instant case because the issues all point to the "registrability of the confusingly similar marks Double Curve Lines, Double Reversible Wave Line and Ogive Curve Design," which has already been passed upon on G R No 195415.

Editha R Hechanova

Hechanova & Co., Inc.
Salustiana D. Ty Tower
104 Paseo de Roxas Avenue
Makati City 1229, Philippines
Tel: (63) 2 812-6561
Fax: (63) 2 888-4290



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