Fredco Manufacturing Vs Harvard

Fredco HOW THE CASE STARTED HELD
Manufacturing vs Fredco filed a Petition for Cancellation of Registration No.

Harvard 56561 before the Bureau of Legal Affairs of the Intellectual YES. Under Section 2 of Republic Act No. 166, as amended (R.A.
GR 185917 Property Office (IPO) Harvard University No. 166), before a trademark can be registered, it must have
1 June 2011 been actually used in commerce for not less than two months in
Fredco alleged that it was formed and registered with the the Philippines prior to the filing of an application for its
Securities and Exchange Commission and had since then registration. However, Harvard University’s registration of the
handled the manufacture Harvard clothing articles. Fredco name Harvard is based on home registration which is allowed
alleged that at the time of issuance of Registration No. under Section 37 of R.A. No. 166.
56561 to Harvard University, New York Garments had Under Section 239.2 of R.A. No. 8293, marks registered under
already registered the mark Harvard. Fredco alleged that Republic Act No. 166 shall remain in force but shall be deemed to
the registration was cancelled on 30 July 1998 when New have been granted under this Act x x x, which does not require
York Garments inadvertently failed to file an affidavit of actual prior use of the mark in the Philippines. Since the mark
use/non-use on the fifth anniversary of the registration Harvard Veritas Shield Symbol is now deemed granted under
but the right to the mark Harvard remained with its R.A. No. 8293, any alleged defect arising from the absence of
predecessor New York Garments and now with Fredco. actual prior use in the Philippines has been cured by Section
239.2.In addition, Fredcos registration was already cancelled on
Harvard University, on the other hand, alleged that it is 30 July 1998 when it failed to file the required affidavit of
the lawful owner of the name and mark Harvard in use/non-use for the fifth anniversary of the marks registration.
numerous countries worldwide, including the Philippines Hence, at the time of Fredcos filing of the Petition for
The name and mark Harvard was adopted in 1639 as the Cancellation before the Bureau of Legal Affairs of the IPO, Fredco
name of Harvard College of Cambridge, Massachusetts, was no longer the registrant or presumptive owner of the mark
U.S.A. The name and mark Harvard was allegedly used in Harvard.
commerce as early as 1872. Harvard University promotes,
uses, and advertises its name Harvard through various Indisputably, Fredco does not have any affiliation or connection
publications, services, and products in foreign countries, with Harvard University. Fredco or its predecessor New York
including the Philippines. Harvard University further Garments was not established in 1936, or in the U.S.A. as
alleged that the name and the mark have been valued indicated by Fredco in its logo. Fredco offered no explanation to
between US $750,000,000 and US $1,000,000,000. the Court of Appeals or to the IPO why it used the mark Harvard
on its logo with the words Cambridge, Massachusetts,
Harvard University alleged that in March 2002, it Established in 1936, and USA.
discovered Fredcos website www.harvard-usa.com. The The Court has ruled that the Philippines is obligated to assure
website advertises and promotes the brand name Harvard nationals of countries of the Paris Convention that they are
Jeans USA without Harvard University’s consent. On 20 afforded an effective protection against violation of their
April 2004, Harvard University filed an administrative intellectual property rights in the Philippines in the same way
complaint against Fredco before the IPO for trademark that their own countries are obligated to accord similar
infringement and/or unfair competition with damages. protection to Philippine nationals.
Director Estrellita Beltran-Abelardo of the Bureau of Legal A trade name of a national of a State that is a party to the Paris
Affairs, IPO cancelled Harvard University’s registration of Convention, whether or not the trade name forms part of a
the mark Harvard trademark, is protected without the obligation of filing or
registration.
Harvard University filed an appeal before the Office of the
Director General of the IPO. The Office of the Director Harvard University is entitled to protection in the Philippines of
General, IPO reversed the decision of the Bureau of Legal its trade name Harvard even without registration of such trade
Affairs, IPO. name in the Philippines.
The Director General ruled that more than the use of the Harvard is a well-known name and mark not only in the United
trademark in the Philippines, the applicant must be the States but also internationally, including the Philippines. The
owner of the mark sought to be registered. The Director mark was already protected under Article 6 and Article 8 of the
General ruled that the right to register a trademark is Paris Convention. Again, even without applying the Paris
based on ownership and when the applicant is not the Convention, Harvard University can invoke Section 4(a) of R.A.
owner, he has no right to register the mark. No. 166 which prohibits the registration of a mark which may
disparage or falsely suggest a connection with persons, living or
The Court of Appeals affirmed the decision of the Office of dead, institutions.
the Director General of the IPO.
ISSUE: W/N respondent’s trade name is infringed.

Fredco Manufacturing Vs Harvard

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Fredco Manufacturing Vs Harvard

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Fredco HOW THE CASE STARTED HELD

Manufacturing vs Fredco filed a Petition for Cancellation of Registration No.

ISSUE: W/N respondent’s trade name is infringed.

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