Photo by Pascal Bernardon on Unsplash Sep 29, 2021 18:14 +08 Harvard University vs Harvard Jeans The following article by Erwin V. Zamorawas was first published here by Bengzon Negre Untalan (BNU), a Philippines-based law firm focused on the practice of intellectual property law. It is re-published here with BNU's permission. In 2011, Fredco Manufacturing Corporation (Fredco) filed before the Bureau of Legal Affairs of the Philippine Intellectual Property Office a Petition for Cancellation of Registration No. 56561 issued to President and Fellows of Harvard College (Harvard University) for the mark “Harvard Veritas Shield Symbol” under classes 16, 18, 21, 25 and 28.
Transcript
Photo by Pascal Bernardon on Unsplash
Sep 29, 2021 18:14 +08
Harvard University vs Harvard Jeans
The following article by Erwin V. Zamorawas was first published here by BengzonNegre Untalan (BNU), a Philippines-based law firm focused on the practice ofintellectual property law. It is re-published here with BNU's permission.
In 2011, Fredco Manufacturing Corporation (Fredco) filed before the Bureauof Legal Affairs of the Philippine Intellectual Property Office a Petition forCancellation of Registration No. 56561 issued to President and Fellows ofHarvard College (Harvard University) for the mark “Harvard Veritas ShieldSymbol” under classes 16, 18, 21, 25 and 28.
Fredco claimed that Harvard University had no right to register the mark inclass 25, since its Philippine registration was based on a foreign registration.Thus, Harvard University could not have been considered as a prior adopterand user of the mark in the Philippines.
Fredco explained that the mark was first used in the Philippines by itspredecessor-in-interest New York Garments as early as 1982, and a certificateof registration was issued in 1988 for goods under class 25. Although theregistration was cancelled for the non-filing of an affidavit of use, the factremained that the registration preceded Harvard University’s use of thesubject mark in the Philippines.
Harvard University, on the other hand claimed that the name and mark“Harvard” was adopted in 1639 as the name of Harvard College of Cambridge,Massachusetts, USA. The marks “Harvard” and “Harvard Veritas ShieldSymbol,” had been used in commerce since 1872, and was registered in morethan 50 countries.
The Bureau of Legal Affairs (BLA) ruled in favor of Fredco and ordered thecancellation of Registration No. 56561. It found Fredco to be the prior userand adopter of the mark “Harvard” in the Philippines. On appeal, the Office ofthe Director General of the Intellectual Property Office reversed the BLAruling on the ground that more than the use of the trademark in thePhilippines, the applicant must be the owner of the mark sought to beregistered. Fredco, not being the owner of the mark, had no right to registerit.
The Court Appeals affirmed the decision of the Office of the Director General.Fredco appealed the decision with the Supreme Court. In its appeal, Fredcoinsisted that the date of actual use in the Philippines should prevail on theissue of who had a better right to the mark.
The Supreme Court ruled:
“The petition has no merit.
Under Section 2 of Republic Act No. 166, as amended (R.A. No. 166), before atrademark can be registered, it must have been actually used in commerce fornot less than two months in the Philippines prior to the filing of an
application for its registration. While Harvard University had actual prior useof its marks abroad for a long time, it did not have actual prior use in thePhilippines of the mark "Harvard Veritas Shield Symbol" before its applicationfor registration of the mark "Harvard" with the then Philippine Patents Office.However, Harvard University's registration of the name "Harvard" is based onhome registration which is allowed under Section 37 of R.A. No. 166. Aspointed out by Harvard University in its Comment:
Although Section 2 of the Trademark law (R.A. 166) requires for theregistration of trademark that the applicant thereof must prove that the samehas been actually in use in commerce or services for not less than two (2)months in the Philippines before the application for registration is filed,where the trademark sought to be registered has already been registered in aforeign country that is a member of the Paris Convention, the requirement ofproof of use in the commerce in the Philippines for the said period is notnecessary. An applicant for registration based on home certificate ofregistration need not even have used the mark or trade name in this country.”
“In any event, under Section 239.2 of Republic Act No. 8293 (R.A. No. 8293),"[m]arks registered under Republic Act No. 166 shall remain in force but shallbe deemed to have been granted under this Act x x x," which does not requireactual prior use of the mark in the Philippines. Since the mark "HarvardVeritas Shield Symbol" is now deemed granted under R.A. No. 8293, anyalleged defect arising from the absence of actual prior use in the Philippineshas been cured by Section 239.2.”
The Supreme Court further ruled that Harvard University is entitled toprotection in the Philippines of its trade name “Harvard” even withoutregistration of such trade name in the Philippines. It explained:
“There is no question then, and this Court so declares, that "Harvard" is awell-known name and mark not only in the United States but alsointernationally, including the Philippines. The mark "Harvard" is rated as oneof the most famous marks in the world. It has been registered in at least 50countries. It has been used and promoted extensively in numerouspublications worldwide. It has established a considerable goodwill worldwidesince the founding of Harvard University more than 350 years ago. It is easilyrecognizable as the trade name and mark of Harvard University of Cambridge,Massachusetts, U.S.A., internationally known as one of the leadingeducational institutions in the world. As such, even before Harvard University
applied for registration of the mark "Harvard" in the Philippines, the mark wasalready protected under Article 6bis and Article 8 of the Paris Convention.”
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