Ecole de Cuisine Manille v. Renaud Cointreau & Cie

ECOLE DE CUISINE MANILLE (CORDON BLEU OF THE PHILIPPINES),
INC., petitioner,
vs.
RENAUD COINTREAU & CIE and LE CORDON BLEU INT'L., B.V., respondents.
G.R. No. 185830
June 5, 2013
Topic: Protection of well-known rights
Facts:
On June 21, 1990, respondent Cointreau, a partnership registered under the laws of
France, filed before the Bureau of Patents, Trademarks, and Technology Transfer (BPTTT) of
the Department of Trade and Industry a trademark application for the mark “LE CORDON
BLEU & DEVICE” for goods falling under classes 8, 9, 16, 21, 24, 25, 29, and 30 of the
International Classification of Goods and Services for the Purposes of Registrations of Marks.
The application was filed pursuant to Section 37 of Republic Act No. 166, as amended, on the
basis of Home Registration No. 1,390,912, issued on November 25, 1986 in France. Such
application was then published for opposition.
On July 23, 1993, petitioner Ecole De Cuisine Manille, Inc. filed an opposition to the
subject application, averring that: (a) it is the owner of the mark “LE CORDON BLEU, ECOLE
DE CUISINE MANILLE,” which it has been using since 1948 in cooking and other culinary
activities, including in its restaurant business; and (b) it has earned immense and invaluable
goodwill such that Cointreau’s use of the subject mark will actually create confusion, mistake,
and deception to the buying public as to the origin and sponsorship of the goods, and cause great
and irreparable injury and damage to Ecole’s business reputation and goodwill as a senior user of
the same.
In its Answer, Cointreau averred that: (a) it has filed applications for the subject mark’s
registration in various jurisdictions, including the Philippines; (b) Le Cordon Bleu is a culinary
school of worldwide acclaim which was established in Paris, France in 1895; (c) Le Cordon Bleu
was the first cooking school to have set the standard for the teaching of classical French cuisine
and pastry making; and (d) it has trained students from more than eighty (80) nationalities,
including Ecole’s directress, Ms. Lourdes L. Dayrit. Thus, Cointreau concluded that Ecole’s
claim of being the exclusive owner of the subject mark is a fraudulent misrepresentation.
During the pendency of the proceedings, Cointreau was issued Certificates of

Registration Nos. 60631 and 54352 for the marks “CORDON BLEU & DEVICE” and “LE
CORDON BLEU PARIS 1895 & DEVICE” for goods and services under classes 21 and 41 of
the Nice Classification, respectively. Petitioner maintained that it is the rightful owner of the
subject mark, considering that it was the first entity that used the same in the Philippines. Hence,
it is the one entitled to its registration and not Cointreau.
Issue:
Whether or not respondent Cointreau is the true and lawful owner of the subject mark and
thus, entitled to have the same registered under its name. (Yes)
Ruling:
Under Section 2 of R.A. No. 166, in order to register a trademark, one must be the owner
thereof and must have actually used the mark in commerce in the Philippines for two (2) months
prior to the application for registration. Under Section 2-A, it is clear that actual use in commerce
is also the test of ownership but the provision went further by saying that the mark must not have
been so appropriated by another. Additionally, it is significant to note that Section 2-A does not
require that the actual use of a trademark must be within the Philippines. Thus, under R.A. No.
166, one may be an owner of a mark due to its actual use but may not yet have the right to
register such ownership here due to the owner’s failure to use the same in the Philippines for two
(2) months prior to registration.
Nevertheless, foreign marks which are not registered are still accorded protection against
infringement and/or unfair competition. At this point, it is worthy to emphasize that the
Philippines and France, respondent’s country of origin, are both signatories to the Paris
Convention for the Protection of Industrial Property (Paris Convention). By virtue of said
Convention, the Philippines is obligated to assure nationals of the signatory-countries that they
are afforded an effective protection against violation of their intellectual property rights in the
Philippines in the same way that their own countries are obligated to accord similar protection to
Philippine nationals. Thus, 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.
In the instant case, it is undisputed that respondent has been using the subject mark in
France since 1895, prior to Ecole’s averred first use of the same in the Philippines in 1948, of
which the latter was fully aware thereof. In fact, Ecole’s present directress, Ms. Lourdes L.
Dayrit (and even its foundress, Pat Limjuco Dayrit), had trained in Cointreau’s Le Cordon Bleu
culinary school in Paris, France. Cointreau was likewise the first registrant of the said mark
under various classes, both abroad and in the Philippines. On the other hand, petitioner has no
certificate of registration over the subject mark but only a pending application covering services
limited to Class 41 of the Nice Classification, referring to the operation of a culinary school. Its
application was filed only on February 24, 1992, or after Cointreau filed its trademark
application. Under the foregoing circumstances, even if petitioner was the first to use the mark in
the Philippines, it cannot be said to have validly appropriated the same.
It is thus clear that at the time Ecole started using the subject mark, the same was already
being used by Cointreau, albeit abroad, of which Ecole’s directress was fully aware, being an
alumna of the latter’s culinary school in Paris, France. Hence, Ecole cannot claim any tinge of
ownership whatsoever over the subject mark as respondent is the true and lawful owner thereof.
In any case, the present law on trademarks, Republic Act No. 8293, otherwise known as the
Intellectual Property Code of the Philippines, as amended, has already dispensed with the
requirement of prior actual use at the time of registration.27 Thus, there is more reason to allow
the registration of the subject mark under the name of Cointreau as its true and lawful owner.

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ECOLE DE CUISINE MANILLE (CORDON BLEU OF THE PHILIPPINES),

Topic: Protection of well-known rights

During the pendency of the proceedings, Cointreau was issued Certificates of

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