3Republic of tbe l@bilippines

~upreme QCourt
:fflanila

THIRD DIVISION

MA. SHARMAINE R. G.R. No. 213815

MEDINA/RACKEY CRYSTAL
TOP CORPORATION, Present:
Petitioners,
LEONEN, J, Chairperson,
HERNANDO,
INTING,
-versus-
DELOS SANTOS, and
LOPEZ, J., JJ

GLOBAL QUEST VENTURES,

INC., Promulgated:
R d t February 8, 2021
espon en . \J,,;\~\t,~a.\\
x-----------------------------------------------------------------------------x

DECISION

LEONEN, J.:

A certificate of registration accords the registrant a prima facie

presumption of their ownership of the mark. However, this presumption may
be rebutted by prooft.1-iat the registration was obtained fraudulently or contrary
to the provisions of the Intellectual Property Code.

This resolves a Petition for Review on Certiorari' under Rule 45 of the

Rules of Court seeking the reversal of the Court of Appeals Decision2 and (}
Resolution3 in C.A.-G.R. SP No. 125161. The Court of Appeals affirmed the y
Rollo, pp. 10-50.
2
Id. at 54-73.· The October 31, 2013 Decision was penned by Associate Justice Leoncia Real-Dimagiba
and concurred in by.Associate Justice~ Rosmari D. Carandang and Ricardo R. Rosario (now members
of this Court) of the Fifth Division, Court of Appeals, Manila.
Id. at 75-78. The August 8, 2014 Resolution was penned by Associate Justice Leoncia Real-Dimagiba
and concurred in by Assoc·late Justices Rosmari D. Carandang and Ricardo R. Rosario (now members
ofth1s Court) of the Former Fifth Division, Court of Appeals, Manila.
Decision 2 G.R. No. 213815

Decision4 of the Intellectual Property Office Director General cancelling

petitioner's Certificate of Trademark Registration No. 4-2005-00121.

Respondent Global Quest Ventures, Inc. (Global) is a domestic

corporation which manufactures and sells gulaman jelly powder mix. The
copyrighted name "Mr. Gulaman" and its logo design are printed on the
packaging box and sachet of its product. 5

On February 1, 2006, Global filed an application for trademark

registration of its copyrighted name "Mr. Gulaman" before the Intellectual
Property Office. However, Global discovered that Ma. Sharmaine R. Medina
(Medina) had a pending application for trademark registration of the name
"'Mr. Gulaman' (Stylized)." 6 Medina's application, filed on May 9, 2005,
was for goods under Class 29 of the International Classification of goods. 7

Claiming ownership of the mark, Global opposed8 Medina's

application. 9

According to Global, in 2004, it learned that Bendum Trading

(Bendum) imitated its gulaman jelly powder mix product and used "Mr.
Gulaman" and its logo design in the product's packaging. Global had
instituted legal actions against Bendum but the product is still circulating in
the market. 10 Global suspected that Medina was working for Bendum
considering that she used its address as her business address. 11

Despite Global's opposition, Certificate of Registration No. 4-2005-

004181 was issued in Medina's name on June 25, 2006. 12

Global then filed a Petition for Cancellation of Medina's certificate of

registration. 13

It alleged that "Mr. Gulaman" with its logo design is the copyrighted
work of a certain Benjamin Irao, Jr. (Irao ) 14 who Global commissioned to
create and register "Mr. Gulaman" with its logo design as a copyright. 15 In
1996, a Certificate of Copyright Registration16 for "Mr. Gulaman" with logo

5
6
7
Id. at 122-128. The May 2, 2012 Decision was penned by Director General Ricardo R. Blancaflor.
Id.atl57.
Id. at 158.
ld.atl57.
f
8
Id. at 132-133.
9
Id. at 158.
10
Id. at 157.
11
Id. at 458.
12
Id. at 157.
13
Id.
14
Id. at 157-158.
15
Id. at 457.
16 Id. at 484.
Decision 3 G.R. No. 213815

design was issued in Irao' s name. 17 Global maintained that it had been using
"Mr. Gulaman" as trademark for its gulaman jelly products since the year
2000 and the rights over the name was assigned to it by Irao, through a Deed
of Assignment, on February 14, 2005. 18

In support of its Petition for Cancellation, Global presented the

following pieces of evidence, among others:

1. "Sample of the product's box packaging";

2. "Certified Xerox copy of the Certificate of Copyright Registration
of the Mr. Gulaman logo design in the name of Benjamin Irao, Jr.";
3. "Deed of Assignment executed on February 14, 2005 by Benjamin
Irao, Jr. of the copyright registration of Mr. Gulaman (with logo
design), among others, to Global Quest Ventures, Inc."; and
4. "Affidavit of Benjamin Irao, Jr." 19

On September 7, 2006, the Intellectual Property Office sent a notice,

through registered mail, directing Medina to file her Answer. However, the
reglementary period expired without Medina doing so. Accordingly, the
Bureau of Legal Affairs (BLA-IPO) waived Medina's right to file an answer
and supporting documents. 20

Medina sought reconsideration of the order declaring her in default21

which the BLA-IPO denied. 22 The Intellectual Property Office affirmed this,23
which prompted Medina to elevate the matter to the Court of Appeals via a
Petition for Certiorari, ascribing grave abuse of discretion on the Intellectual
Property Office. This was docketed as CA-G.R. SP No. 100742.24

Meanwhile, the BLA-IPO granted Global's Petition for Cancellation of

Medina's Certificate of Trademark Registration on August 8, 2008. 25 It found
that the registration was obtained fraudulently or contrary to the provisions of
the Intellectual Property Code. 26

I
The BLA-IPO relied on Irao's affidavit which corroborated Global's
claim of prior use. According to Irao, he authorized Global to use "Mr.
Gulaman" as trademark for its product immediately after the issuance of the
copyright registration. The BLA-IPO ruled that Global had acquired

17
Id. at 162.
18
Id. at 458.
19
Id. at 159-160.
20
Id. at 160.
21
Id. at 473--474.
22 Id.
23
Id.
24
Id. at 470--476.
25
Id. at 157-164. The Decision was penned by Director of Bureau of Legal Affairs Estrellita Beltran-
Abelardo.
26
Id. at 163.
 Decision 4 G.R. No. 213815

ownership of the mark on account of its actual use in commerce since 1996.27

It further made a comparison of the two marks and concluded that

Medina merely copied Global's mark. It noted that the dominant word "Mr.
Gulaman" in both Global and Medina's marks are identical and the same in
all aspects. This finding was further reinforced by Medina's Declaration of
Actual Use wherein she submitted photographs of Global's packaging using
"Mr. Gulaman" and its logo. 28

Medina moved for reconsideration of the BLA-IPO decision. She

argued that Global' s evidence failed to overcome the prima facie presumption
of validity accorded to her certificate ofregistration. 29

Global opposed Medina's motion for reconsideration, raisrng the

pendency of a separate case between the same parties. It contended that in
IPC Case No. 14-2007-001122, involving the mark "Megalicious Mr.
Gulaman," it submitted sales invoices evidencing its prior use in commerce
of the mark "Mr. Gulaman." 30

In her Reply, Medina argued that the sales invoices were inadmissible
for being photocopies and are considered forgotten evidence. 31

In its October 20, 2009 Resolution, the BLA-IPO denied Medina's

motion for reconsideration. 32

Aggrieved, Medina appealed to the Office of the Director General. 33

Global filed its Comment to the appeal attaching therewith copies of

the sales invoices. 34

On May 28, 2012, the Office of the Director General affirmed the BLA-
IPO' s decision. 35 It ruled that there was substantial evidence to prove Global' s
prior use of the "Mr. Gulaman" mark. It likewise noted that in proving its
ownership, Global presented not only a certificate of copyright registration
but also a sample of its product labels and sales invoices, thus:

27
Id. at 162.
I
28
Id. at 162-163.
29
Jd.at617--618.
30
Id. at 618.
'' Id.
32
Id. at 204-207. The Resolution was penned by Director of Bureau of Legal Affairs Estrellita Beltran-
Abelardo.
33
Id.
34 Id.
35
Id. at 122-128. The May 28, 2012 Decision was penned by Director General Ricardo R. Blancafor.
Decision 5 G.R. No. 213815

Appellant's mark Appellee 's mark

At a glance, one can easily see the word "MR GULAMAN" in the
contending marks, especially since this word is written in the same style and
color (green). While the appellant's mark is only a stylized word mark and
the Appellee' s mark contains a pictorial illustration of a "chef or baker
holding a plate with a jelly on top colored red, green, yellow, blue and
black", the similarity of the presentation of the stylized word "MR.
GULAMAN" gives the impression that the marks are just variations of the
other and belong to the same source or origin.

In this regard, this Office finds that there are substantial evidence
supporting the Director's ruling that the Appellee is the prior user and
originator of the stylized "MR. GULAMAN".

The Director cites the copyright registration of the Appellee issued

in 1996 in favor of the [sic] Mr. Benjamin Irao, Jr. for [the] MR.
GULAMAN (with logo design). On the other hand, the Appellant's
certificate of registration was only issued on 25 June 2006 on the basis of a
trademark application filed on 09 May 2005. While it is true that a copyright
is different from a trademark, the Appellee' s certificate of copyright
registration for MR. GULAMAN (with logo design) is not inconsistent to
the Appellee's claim of prior use of this design or the stylized MR.
GULAMAN. The Appellee presented a sample of its product labels that
show the MR. GULAMAN (with logo design). In the absence of any
contrary evidence indicating prior use by the Appellant of a similar design,
the Appellee is deemed to be the owner of this design. As correctly pointed
out by the Appellee:

Between herein Petitioner-Appellee which presented

the following pieces of evidence, to wit: l.) Ownership of
copyrighted mark/work MR. GULAMAN; 2) Sample of
product's box packaging using the mark MR. GULAMAN
and 3.) Sales invoices showing that it has been selling
gulaman jelly products in the market using the mark MR.
GULAMAN as early as the year 2000, and the Respondent-
Appellant who has NO EVIDENCE (AT ALL) ON
RECORD in this case, this appeal must be resolved in favor
of the Petitioner-Appellee. All told, since the Petitioner-
Appellee was able to present substantial evidence, in
contrast to Respondent-Appellant, to prove that it has a
better right over the herein subject mark then, there is no
reason at all to disturb the BLA Decision, dated 02 August
2008. 36 (Emphasis in the original, citations omitted)

Medina then filed a Petition for Review with the Court of Appeals. 37 I
36
Id. at 127.
37
Id. at 54.
Decision 6 G.R. No. 213815

In its assailed Decision, 38 the Court of Appeals affirmed the Office of

the Director General's findings. It decreed that while Medina's certificate of
registration constitutes prima facie evidence of her ownership over the mark
"Mr. Gulaman", this presumption may be overcome by evidence of prior use
by another. 39 It ruled that the origin of Global's right over the mark, coupled
by the sales invoices it presented defeated the prima facie presumption
attached to Medina's certificate of registration. 40

Medina's motion for reconsideration having been denied,41 she then

filed a Petition for Review before this Court.

Petitioner maintains that her right to assail the Decision's validity is not
affected by her having been declared in default. A party declared in default
may still assail the judgment on the ground of it being contrary to evidence or
law. 42 On this note, she claims that respondent failed to present evidence
sufficient to overcome the prima facie presumption of validity and ownership
accorded in her favor by the certificate of registration. 43 She insists that all
the documentary evidence submitted by respondent are inadmissible for being
photocopies. Respondent also offered no plausible reason why the originals
were not presented, pursuant to the Best Evidence Rule. 44 In addition, she
notes that the Intellectual Property Office's Rules on Inter-Partes Proceedings
require that originals of the documents be presented as evidence. 45

Similarly, the sales invoices belatedly submitted before the Office of

the Director General were clearly altered and tampered with. 46

Assuming photocopies may be admitted, she posits that respondent's

documentary evidence are still insufficient to prove its ownership and prior
use of the mark. 47 The certificate of copyright registration submitted by
respondent before the IPO did not contain any illustration or sample from
which the BLA could have compared petitioner's registered mark. 48

Petitioner further asserts that Irao's affidavit consists of bare allegations

insufficient to prove respondent's actual use of the mark. 49
/
38
Id. at 54-72.
39
Id. at 69-70.
40 Id. at 70-71.
41 Id. at 75-78.
42 Id. at 622.
43
Id. at 625--626.
44
Id. at 640--641.
45
Id. at 642.
46
Id. at 646--648.
47
Id. at 628.
48
Id. at 633.
49
Id. at 644--645.
 Decision 7 G.R. No. 213815

In addition, petitioner alleges that the copyright to a work does not give
the copyright registrant the right to exclude others from its use as trademark
in commerce. Copyright and trademark are different intellectual properties
which afford different rights and protection. 50

Petitioner likewise argues that her mark "Mr. Gulaman (Stylized)" and
the "Mr. Gulaman (w/ logo design)" are not confusingly similar. She
maintains that the two marks are visually and aurally different, and thus, no
confusion will occur. 51

Petitioner insists further that the Court ofAppeals erred in affirming the
Intellectual Property Office's decision not to admit her answer. She maintains
that the admission of her answer, including the evidence attached therewith
would result to the reversal of the Intellectual Property Office's decision. 52

Finally, she claims that the Intellectual Property Office's refusal to

admit her answer resulted in the derogation of her right to due process in that:
(1) she suffered because of the "improper service" of Notice of Answer; and
(2) "the strict adherence" to technical rules deprived her of the opportunity to
present evidence. 53 She asserts that a Deed of Assignment attached to her
answer stated that the subject trademark was first used in commerce in 1994
by Romualdo C. Rivera (Rivera). Rivera allegedly used the mark for his jelly
mix powder and allowed petitioner to use it starting 2001. She attached
delivery receipts dated 2004 to 2006 to support her claim of prior use. 54

On the other hand, respondent counters that petitioner's claim of denial

of due process is baseless. It notes that the issue of whether the Intellectual
Property Office erred in declaring petitioner in default has already been
resolved with finality by the Court of Appeals in C.A. GR No. SP. No.
100742. 55

Respondent likewise argues that its ownership of the mark "Mr.

Gulaman" has been proven by the following: 1) proof of ownership of the
copyrighted work "Mr. Gulaman"; 2) sample ofits product packaging; 3) sales
invoices; 56 and 4) Deed of Assignment. 57 It further maintains that petitioner's
allegation of the sales invoice having been tampered lacks sufficient basis. 58

!
50
Id. at 633---634.
51
Id. at 635-636.
52
Id. at 650-658.
53
Id. at 651-652.
54
Id. at 658.
55
Id. at 699-671.
56
Id. at 671.
57
Id. at 672.
58
Id. at 673.
 Decision 8 G.R. No. 213815

Lastly, respondent contends that on account ofits expertise over matters

falling under its jurisdiction, the Intellectual Property Office's findings of fact
should be respected. 59

The issue to be resolved is whether or not the Court of Appeals erred in

affirming the cancellation of petitioner's Certificate of Registration No. 4-
2005-00418.

At the outset, this Court notes that the question of whether the
Intellectual Property Office erred in refusing to admit petitioner's answer has
been resolved with finality by the Court of Appeals in C.A. GR No. SP. No.
100742.

In its June 18, 2008 Decision, 60 the Court of Appeals found no grave
abuse of discretion on the Intellectual Property Office's part in declaring
petitioner to have waived her right to file an answer. It held that petitioner not
only failed to file an answer within the reglementary period, she likewise
disregarded the verification requirement under Section 9 of the Intellectual
Property Office Order No. 79, series of2005. 61

Petitioner moved for reconsideration, but was denied on February 17,

2009. This decision of the Court of Appeals became final and executory on
March 9, 2009 and an Entry of Judgment was issued on July 14, 2009. 62

Accordingly, this Court will no longer delve on petitioner's claim of

denial of due process.

II

The Intellectual Property Code defines trademark as "any visible sign

capable of distinguishing the goods ... of an enterprise[.]" 63 It is "any
distinctive word, name, symbol, emblem, sign, or device, or any combination
thereof, adopted and used by a manufacturer or merchant on his goods to
identify and distinguish them from those manufactured, sold, or dealt by

59
60
Id. at 673---674.
Id. at 470--480. The Decision was penned by Associate Justice Ramon R. Garcia and concurred by
Associate Justices Juan Q. Enriquez, Jr. and Isaias P. Dicdican of the Twelfth Division, Court of Appeals,
I
Manila.
61
Id. at 478.
62
Id. at 205-206.
63
Republic Act No. 8293 (1997), secs. 121, 121.1 provide:
SECTION 121. Definitions. -As used in Part III, the following terms have the following meanings:
121.1. "Mark" means any visible sign capable of distinguishing the goods (trademark) or services
(service mark) of an enterprise and shall include a stamped or marked container of goods[.]
 Decision 9 G.R. No. 213815

others." It is an intellectual property which is protected by law. 64

The rights in a mark are acquired through registration made in

accordance with the Intellectual Property Code. 65 Once registered, the
certificate of registration constitutes "a prima facie evidence of the validity of
the registration, the registrant's ownership of the mark, and of the registrant's
exclusive right to use the same in connection with the goods or services and
those that are related thereto specified in the certificate." 66

Here, the Court of Appeals recognized the prima facie presumption

accorded by petitioner's certificate of registration. However, it noted that this
presumption is not indefeasible and may be overcome by evidence of prior
use by another. Applying this Court's pronouncement in Berris Agricultural
Co., Inc. v. Abyadang, 67 the Court of Appeals decreed:

... prima facie presumption brought about by the registration of a mark

may be challenged and overcome, in an appropriate action, by proof of the
nullity of the registration or of non-use of the mark, except when excused.
Moreover, the presumption may likewise be defeated by evidence ofprior
use by another person, i.e., it will controvert a claim oflegal appropriation
or ofownership based on registration by a subsequent user. This is because
a trademark is a creation ofuse and belongs to one who first used it in trade
or commerce.

That prima facie evidence attached to the Certificate of Registration

issued to herein petitioner was overcome by retracing the origin of
respondent's right from that of Mr. Benjamin Irao acquired in 1996 which
Mr. Irao assigned to herein respondent in February 2005, earlier than the
petitioner's certificate of Registration issued on 25 June 2006. 68 (Emphasis
in the original)

Berris 69 clarified that "trademark is a creation of use and belongs to one

who first used it in trade or commerce."70 Accordingly, while a certificate of
registration constitutes a prima facie evidence of the registrant's ownership of
the mark, this presumption may be overcome by proof of another person's (J
prior use. 71 f

64
Dermaline, Inc. v. Myra Pharmaceuticals, Inc., 642 Phil. 503, 510-51 I (2010) [Per J. Nachura, Second
Division].
65
Republic Act No. 8293 (1997), sec. 122 provides:
SECTION 122. How Marks are Acquired. - The rights in a mark shall be acquired through registration
made validly in accordance with the provisions of this law.
66
Republic Act No. 8293 (1997), sec. 138 provides:
SECTION 138. Certificates of Registration. - A certificate of registration of a mark shall be prima
facie evidence of the validity of the registration, the registrant's ownership of the mark, and of the
registrant's exclusive right to use the same in connection with the goods or services and those that are
related thereto specified in the certificate.
67
Berris Agricultural Co., Inc. v. Abyadang, 647 Phil. 517 (20 I 0) [Per J. Nachura, Second Division].
68
Rollo, pp. 69-71.
69
Berris Agricultural Co., Inc. v. Abyadang, 647 Phil. 517 (2010) [PerJ. Nachura, Second Division].
70
Id. at 526.
71
Id.
 Decision 10 G.R. No. 213815

The ruling in Berris was reiterated in Birkenstock Orthopaedie GmbH

and Co. KG v. Phil. Shoe Expo Marketing Corp. 72 where this Court stressed
that "it is not the application or registration of a trademark that vests
ownership thereof, but it is the ownership of a trademark that confers the right
to register the same." 73 The registration merely creates a prima facie
presumption of ownership which may be rebutted by evidence of actual and
real ownership of another74 or by proof that it was obtained fraudulently, 75
thus:

Clearly, it is not the application or registration of a trademark that

vests ownership thereof, but it is the ownership of a trademark that confers
the right to register the same. A trademark is an industrial property over
which its owner is entitled to property rights which cannot be appropriated
by unscrupulous entities that, in one way or another, happen to register such
trademark ahead of its true and lawful owner. The presumption of
ownership accorded to a registrant must then necessarily yield to superior
evidence of actual and real ownership of a trademark. 76

The rule that ownership is acquired by prior use was abandoned in the
recent case of Zuneca Pharmaceutical v. Natrapharm, Inc. 77

In Zuneca, this Court examined the laws on trademark and discussed

72

73
Birkenstock Orthopaedie GmbH and Co. KG v. Phil. Shoe Expo Marketing Corp., 721 Phil. 867 (2013)
[Per J. Perlas-Bernabe, Second Division].
Id. at 880.
f
74 Id.
75
Republic Act No. 8293 (1997), sec. 151 provides:
SECTION 151. Cancellation. - 151.1. A petition to cancel a registration of a mark under this Act may
be filed with the Bureau of Legal Affairs by any person who believes that he is or will be damaged by
the registration of a mark under this Act as follows:
(a) Within five (5) years from the date of the registration of the mark under this Act.
(b) At any time, if the registered mark becomes the generic name for the goods or services, or a portion
thereof, for which it is registered, or has been abandoned, or its registration was obtained fraudulently
or contrary to the provisions of this Act, or if the registered mark is being used by, or with the permission
of, the registrant so as to misrepresent the source of the goods or services on or in connection with which
the mark is used. If the registered mark becomes the generic name for less than all of the goods or
services for which it is regiStered, a petition to cancel the registration for only those goods or services
may be filed. A registered mark shall not be deemed to be the generic name of goods or services solely
because such mark is also used as a name of or to identify a unique product or service. The primary
significance of the registered mark to the relevant public rather than purchaser motivation shall be the
test for determining whether the registered mark has become the generic name of goods or services on
or in connection with which it has been used.
(c) At any time, if the registered owner of the mark without legitimate reason fails to use the mark within
the Philippines, or to cause it to be used in the Philippines by virtue of a license during an uninterrupted
period of three (3) years or longer.
151.2. Notwithstanding the foregoing provisions, the court or the administrative agency vested with
jurisdiction to hear and adjudicate any action to enforce the rights to a registered mark shall likewise
exercise jurisdiction to determine whether the registration of said mark may be cancelled in accordance
with this Act. The filing of a suit to enforce the registered mark with the proper court or agency shall
exclude any other court or agency from assuming jurisdiction over a subsequently filed petition to cancel
the same mark. On the other hand, the earlier filing of petition to cancel the mark with the Bureau of
Legal Affairs shall not constitute a prejudicial question that must be resolved before an action to enforce
the rights to same registered mark may be decided.
76
Birkenstock Orthopaedie GmbH and Co. KG v. Phil. Shoe Expo Marketing Corp., 721 Phil. 867, 880
(2013) [Per J. Perlas-Bernabe, Second Division].
77
G.R. No. 211850, September 8, 2020
<https://elibrary.judiciary.gov.ph/thebookshel£'showdocs/J/66500> [Per J. Caguioa, En Banc].
 Decision 11 G.R. No. 213815

how the rule on ownership progressed over time. This Court noted that in the
past, ownership over trademark was acquired through actual use. However,
upon the enactment of Republic Act No. 8293 or the Intellectual Property
Code, ownership is now acquired through registration, 78 thus:

The current rule under the IP Code is thus in stark contrast to the rule
on acquisition of ownership under the Trademark Law, as amended. To
recall, the Trademark Law, as amended, provided that prior use and non-
abandonment of a mark by one person barred the future registration of an
identical or a confusingly similar mark by a different proprietor when
confusion or deception was likely. It also stated that one acquired ownership
over a mark by actual use.

Once the IP Code took effect, however, the general rule on

ownership was changed and repealed. At present, as expressed in the
language of the provisions ofthe IP Code, prior use no longer determines
the acquisition of ownership of a mark in light of the adoption of the rule
that ownership of a mark is acquired through registration made validly in
accordance with the provisions ofthe IP Code. Accordingly, the trademark
provisions of the IP Code use the term "owner" in relation to registrations.
This fact is also apparent when comparing the provisions of the Trademark
Law, as amended, and the IP Code, viz.[.]

Subparagraph (d) of the above provision of the Trademark Law was

amended in the IP Code to, among others, remove the phrase "previously
used in the Philippines by another and not abandoned. " Under the
Trademark Law, as amended, the first user of the mark had the right to file
a cancellation case against an identical or confusingly mark registered in
good faith by another person. However, with the omission in the IP Code
provision of the phrase "previously used in the Philippines by another and
not abandoned, ·· said right of the first user is no longer available. In effect,
based on the language of the provisions of the IP Code, even if the mark was
previously used and not abandoned by another person, a good faith applicant
may still register the same and thus become the owner thereof, and the prior
user cannot ask for the cancellation of the latter's registration. If the
lawmakers had wanted to retain the regime of acquiring ownership through
use, this phrase should have been retained in order to avoid conflicts in
ownership. The removal of such a right unequivocally shows the intent of
the lawmakers to abandon the regime of ownership under the Trademark
Law, as amended.

On this point, our esteemed colleagues Associate Justices Leanen

and Lazaro-Javier have expressed their doubts regarding the abandonment
of the ownership regime under the Trademark Law, as amended, because of
the continued requirement of actual use under the IP Code and because of
the prima facie nature of a certificate of registration. In particular, Sections
124.2 and 145 of the IP Code provide that the applicant/registrant is required
to file a Declaration of Actual Use on specified periods, while Section 138
provides that a certificate of registration of a mark shall be prima facie
evidence of the validity of the registration, the registrant's ownership of the
mark, and of the registrant's exclusive right to use the same in connection
with the goods or services and those that are related thereto specified in the
78
Id.
 Decision 12 G.R. No. 213815

certificate.

Certainly, while the IP Code and the Rules of the IPO mandate that
the applicant/registrant must prove continued actual use of the mark, it is
the considered view of the Court that this does not imply that actual use is
still a recognized mode of acquisition of ownership under the IP Code.
Rather, these must be understood as provisions that require actual use of the
mark in order for the registered owner of a mark to maintain his ownership.

In the same vein, the prima facie nature of the certificate of

registration is not indicative of the fact that prior use is still a recognized
mode of acquiring ownership under the IP Code. Rather, it is meant to
recognize the instances when the certificate of registration is not reflective
of ownership of the holder thereof, such as when: [1] the first registrant has
acquired ownership of the mark through registration but subsequently lost
the same due to non-use or abandonment (e.g., failure to file the Declaration
of Actual Use); [2] the registration was done in bad faith; [3] the mark itself
becomes generic; [4] the mark was registered contrary to the IP Code (e.g.,
when a generic mark was successfully registered for some reason); or [5]
the registered mark is being used by, or with the permission of, the registrant
so as to misrepresent the source of the goods or services on or in connection
with which the mark is used. 79 (Emphasis supplied)

This Court continued that while registration vests ownership over a

mark, bad faith may still be a ground for the cancellation of trademark
registrations. 80 Section 151 (b) of the Intellectual Property Code states:

SECTION 151. Cancellation. - 151.1. A petition to cancel a

registration of a mark under this Act may be filed with the Bureau of Legal
Affairs by any person who believes that he is or will be damaged by the
registration of a mark under this Act as follows:

(b) At any time, if the registered mark becomes the generic

name for the goods or services, or a portion thereof, for
which it is registered, or has been abandoned, or its
registration was obtained fraudulently or contrary to the
provisions of this Act, or if the registered mark is being used
by, or with the permission of, the registrant so as to
misrepresent the source of the goods or services on or in
connection with which the mark is used. If the registered
mark becomes the generic name for less than all of the goods
or services for which it is registered, a petition to cancel the
registration for only those goods or services may be filed. A
registered mark shall not be deemed to be the generic name
of goods or services solely because such mark is also used
as a name of or to identify a unique product or service. The

t
primary significance of the registered mark to the relevant
public rather than purchaser motivation shall be the test for
determining whether the registered mark has become the
generic name of goods or services on or in connection with

79 Id.
80
Id.
 Decision 13 G.R. No. 213815

which it has been used.

Bad faith and fraud, m relation to trademark registration, were

discussed as follows:

The concepts of bad faith and fraud were defined in Mustang-

Bekleidungswerke GmbH + Co. KG v. Hung Chiu Ming, a case decided by
the Office of the Director General of the IPO under the Trademark Law, as
amended, viz.:

What constitutes fraud or bad faith in trademark

registration? Bad faith means that the applicant or registrant
has knowledge of prior creation, use and/or registration by
another of an identical or similar trademark. In other words,
it is copying and using somebody else's trademark. Fraud,
on the other hand, may be committed by making false claims
in connection with the trademark application and
registration, particularly, on the issues of origin, ownership,
and use of the trademark in question, among other things.

The concept of fraud contemplated above is not a mere inaccurate

claim as to the origin, ownership, and use of the trademark. In civil law, the
concept of fraud has been defined as the deliberate intention to cause
damage or prejudice. The same principle applies in the context of trademark
registrations: fraud is intentionally making false claims to take advantage of
another's goodwill thereby causing damage or prejudice to another. Indeed,
the concepts of bad faith and fraud go hand-in-hand in this context. There /
...,,,,...- /
is no distinction between the concepts of bad faith and fraud in trademark
registrations because the existence of one necessarily presupposes the
existence of the other. 81

Whether petitioner is guilty of bad faith or fraud requires a factual

determination. Its resolution necessitates a review of documentary exhibits
which cannot be undertaken through a Petition for Review under Rule 45 of
the Rules of Court. 82 As explained in Pascual v. Burgos: 83

The Rules of Court require that only questions of law should be

raised in petitions filed under Rule 45. This court is not a trier of facts. It
will not entertain questions of fact as the factual findings of the appellate
courts are "final, binding[,] or conclusive on the parties and upon this
[c]ourt" when supported by substantial evidence. Factual findings of the
appellate courts will not be reviewed nor disturbed on appeal to this court. 84
(Citations omitted)

Furthermore, by reason of its special knowledge and expertise over

matters falling within its jurisdiction, the Intellectual Property Office is in a
better position to determine whether there was bad faith. Its fmding on this

81 Id.
s2 Id.
83
776 Phil. 167 (2016) [Per J. Leanen, Second Division]
84
Id. at 182.
 Decision 14 G.R. No. 213815

matter "are generally accorded great respect, if not finality by the courts, as
long as they are supported by substantial evidence, even if such evidence
might not be overwhelming or even preponderant." 85

While the rule admits of exceptions, 86 this Court finds no reason to

depart and overturn the factual determination of the BLA-IPO as affirmed by
both the Office of the Director General and the Court of Appeals.

In cancelling petitioner's certificate of registration, the BLA-IPO

concluded that petitioner copied respondent's mark. It compared the two and
found that petitioner's mark is identical with respondent's. It noted that the
word "Mr. Gulaman" in both of their marks are "exactly the same in all
aspects[.]" 87 This conclusion was bolstered by its finding that in petitioner's
Declaration of Actual Use, she submitted photographs of a packaging showing
respondent's "Mr. Gulaman" and its logo design. 88

WHEREFORE, the Petition is DENIED. The October 31, 2013

Decision and August 8, 2014 Resolution of the Court of Appeals in CA-G.R.
SP No. 125161 are AFFIRMED.·

SO OREDERED.

r Associate Justice

WE CONCUR:

85
Berris Agricultural Co., Inc. v. Abyadang, 647 Phil. 517, 533 (2010) [Per J. Nachura, Second Division].
86
(I) When the conclusion is a finding gronnded entirely on speculation, sunnises or conjectures; (2) When
the inference made is manifestly mistaken, absurd or impossible; (3) Where there is a grave_ abuse of
discretion; (4) When the judgment is based on a misapprehension of facts; (5) When the findings of fact
are conflicting; (6) When the Court of Appeals, in making its fmdings, went beyond the issues of the
case and the same is contrary to the admissions of both appellant and appellee; (7) The findings of the
Court of Appeals are contrary to those of the trial court; (8) When the fmdings of fact are conclusions
without citation of specific evidence on which they are based; (9) When the facts set forth in the petition
as well as in the petitioner's main and reply briefs are not disputed by the respondents; and (10) The
finding of fact of the Court of Appeals is premised on the supposed absence of evidence and is
contradicted by the evidence on record. See Pascual v. Burgos, 776 Phil. 167, 182-183 (2016) [Per J.
Leonen, Second Division].
87
Rollo, pp. 162-163.
88
Id. at 62--{53.
Decision 15 G.R. No. 213815

EDG•ftn.uO L. DELOS SANTOS

Associate Justice Associate Justice

JHOSE~OPEZ
Associate Justice

ATTESTATION

I attest that the conclusions in the above Decision had been reached in
consultation before the case was assigned to the writer of the opinion of the
Court's Division.

CERTIFICATION

Pursuant to Section 13, Article VIII of the Constitution and the Division
Chairperson's Attestation, I certify that the conclusions in the above Decision
had been reached in consultation before the case was assigned to the writer of
the opinion of the Court's Division.