Philippine Supreme Court Jurisprudence


Philippine Supreme Court Jurisprudence > Year 1982 > May 1982 Decisions > G.R. No. L-53672 May 31, 1982 - BATA INDUSTRIES, LTD. v. COURT OF APPEALS, ET AL.

199 Phil. 506:




PHILIPPINE SUPREME COURT DECISIONS

SECOND DIVISION

[G.R. No. L-53672. May 31, 1982.]

BATA INDUSTRIES, LTD., Petitioner, v. THE HONORABLE COURT OF APPEALS; TIBURCIO S. EVALLE, DIRECTOR OF PATENTS, NEW OLYMPIAN RUBBER PRODUCTS CO., INC., Respondents.

Quasha, Asperilla, Ancheta, Valmonte, Peña & Marcos for Petitioner.

Andres C. Reyes, Sr. for Private Respondent.

Gil V. R. Racho for private respondent in collaboration with Atty. Reyes.

SYNOPSIS


The Director of Patents ordered the registration of the trademark BATA in favor of respondent domestic company based on a finding that it is respondent-applicant’s expense that created the enormous goodwill of the said trademark in the Philippines and not the opposer, and that opposer has technically abandoned its trademark BATA in the Philippines. Opposer, a Canadian corporation, is neither licensed nor doing business locally, although prior to World War II BATA shoes made by a Czechoslovakian corporation, and until 1948 shoes made by BATA Canada were sold in the Philippines. On appeal. the Court of Appeals reversed the decision of the Director of Patents. Subsequently, however, upon respondent’s second motion for reconsideration, the Appellate Court, through a new set of justices, set aside the judgment of reversal and affirmed the decision of the Director of Patents. On Petition for review, the Supreme Court dismissed the same for lack of merit. Hence, this motion for reconsideration wherein petitioner-movant, in addition to points of law, insinuates that there was something wrong when a new set of Court of Appeals justices rendered a completely different decision.

The Supreme Court denied petitioner’s motion and affirmed the questioned judgment of the Court of Appeals which sustained the decision of the Director of Patents ordering the registration of the trademark BATA in favor of Respondent. The Court held that there is nothing wrong and unusual when a decision is reconsidered by a division composed of the same justices who rendered the decision but more so when reconsideration is made by a different set of justices because the latter would have a fresh perspective unencumbered by the views expressed in the decision sought to be reconsidered.

Motion denied.


SYLLABUS


REMEDIAL LAW; CIVIL PROCEDURE; JUDGMENT; RECONSIDERATION THEREOF BY A NEW SET OF COURT OF APPEALS JUSTICES, NOT UNUSUAL; JUSTIFIED IN CASE AT BAR. — There is nothing wrong and unusual when a decision is reconsidered. This is so when the reconsideration is made by a division composed of the same Court of Appeals justices who rendered the decision but much more so when the reconsideration is made by a different set of justices as happened in this case. Obviously, the new set of justices would have a fresh perspective unencumbered by the views expressed in the decision sought to be reconsidered. Nor should it be a cause for wonder why Justices Gutierrez, Agrava and Nocon had replaced the original justices. Justice Cortez resigned to become a candidate for the governorship of Cagayan (he was elected), while Justices Serrano and Jimenez retired upon reaching the age of 65.


R E S O L U T I O N


ABAD SANTOS, J.:


On October 27, 1980, the petition in this case was denied for lack of merit. Petitioner moved to reconsider and as required, private respondent submitted comments. A hearing on the motion for reconsideration was held on June 7, 1982. This is Our resolution on the motion for reconsideration.

In Inter Partes Case No. 654 of the Philippine Patent Office, New Olympian Rubber Products Co., Inc. sought the registration of the mark BATA for casual rubber shoes. It alleged that it has used the mark since July 1, 1970.

Registration was opposed by Bata Industries, Ltd., a Canadian corporation, which alleged that it owns and has not abandoned the trademark BATA.chanrobles virtual lawlibrary

Stipulated by the parties were the following:chanrob1es virtual 1aw library

1. Bata Industries, Ltd. has no license to do business in the Philippines;

2. It is not presently selling footwear under the trademark BATA in the Philippines; and

3. It has no licensing agreement with any local entity or firm to sell its products in the Philippines.

Evidence received by the Philippine Patent Office showed that Bata shoes made by Gerbec and Hrdina of Czechoslovakia were sold in the Philippines prior to World War II. Some shoes made by Bata of Canada were perhaps also sold in the Philippines until 1948. However, the trademark BATA was never registered in the Philippines by any foreign entity. Under the circumstances, it was concluded that "opposer has, to all intents and purposes, technically abandoned its trademark BATA in the Philippines."cralaw virtua1aw library

Upon the other hand, the Philippine Patent Office found that New Olympian Rubber Products Co., Inc.:jgc:chanrobles.com.ph

". . . has overwhelmingly and convincingly established its right to the trademark BATA and consequently, its use and registration in its favor. There is no gainsaying the truth that the respondent has spent a considerable amount of money and effort in popularizing the trademark BATA for shoes in the Philippines through the advertising media since it was lawfully used in commerce on July 1, 1970. It can not be denied, therefore, that it is the respondent-applicant’s expense that created the enormous goodwill of the trademark BATA in the Philippines and not the opposer as claimed in its opposition to the registration of the BATA mark by the Respondent.

"Additionally, on evidence of record, having also secured (three) copyright registrations for the word BATA, respondent-applicant’s right to claim ownership of the trademark BATA in the Philippines, which it claims to be a Tagalog word which literally means ‘a little child’ (Exh. 5), is all the more fortified."cralaw virtua1aw library

The Philippine Patent Office dismissed the opposition and ordered the registration of the trademark BATA in favor of the domestic corporation.

Appeal from the decision of the Philippine Patent Office was made to the Court of Appeals by Bata Industries, Ltd. In a decision penned by Justice Justiniano P. Cortez dated August 9, 1979, with Justices Mariano Serrano and Jose B. Jimenez concurring, the PPO decision was reversed. A motion for reconsideration filed by New Olympian Rubber Products Co., Inc. was denied on October 17, 1979, by the same justices.chanrobles virtual lawlibrary

However, in a resolution on a second motion for reconsideration penned by Justice Hugo E. Gutierrez who is now a member of this Court, to which Justices Corazon J. Agrava and Rodolfo A. Nocon concurred (with the former filing a separate opinion), the decision of August 9, 1979, was set aside and that of the Director of Patents was affirmed.

In addition to points of law, Bata Industries, Ltd. questions "the circumstances surrounding the issuance of the questioned resolutions of the respondent Court of Appeals." In effect, it insinuates that there was something wrong when a new set of justices rendered a completely different decision.

It should be stated that there is nothing wrong and unusual when a decision is reconsidered. This is so when the reconsideration is made by a division composed of the same justices who rendered the decision but much more so when the reconsideration is made by a different set of justices as happened in this case. Obviously, the new set of justices would have a fresh perspective unencumbered by the views expressed in the decision sought to be reconsidered. Nor should it be a cause for wonder why Justices Gutierrez, Agrava and Nocon had replaced the original justices. Justice Cortez resigned to become a candidate for the governorship of Cagayan (he was elected), while Justices Serrano and Jimenez retired upon reaching the age of 65.

On the merits, the extended resolution penned by Justice Gutierrez does not have to be fortified by Us. We agree with Mr. Justice Gutierrez when he says:jgc:chanrobles.com.ph

"We are satisfied from the evidence that any slight goodwill generated by the Czechoslovakian product during the Commonwealth years was completely abandoned and lost in the more than 35 years that have passed since the liberation of Manila from the Japanese troops.

"The applicant-appellee has reproduced excerpts from the testimonies of the opposer-appellant’s witnesses to prove that the opposer-appellant was never a user of the trademark BATA either before or after the war, that the appellant is not the successor-in-interest of Gerbec and Hrdina who were not is representatives or agents, and could not have passed any rights to the appellant, that there was no privity of interest between the Czechoslovakian owner and the Canadian appellant and that the Czechoslovakian trademark has been abandoned in Czechoslovakia.

"We agree with the applicant-appellee that more than substantial evidence supports the findings and conclusions of the Director of Patents. The appellant has no Philippine goodwill that would be damaged by the registration of the mark in the appellee’s favor. We agree with the decision of the Director of Patents which sustains, on the basis of clear and convincing evidence, the right of the appellee to the registration and protection of its industrial property, the BATA trademark."cralaw virtua1aw library

WHEREFORE, the motion for reconsideration is hereby denied for lack of merit. No special pronouncement as to costs.chanrobles virtual lawlibrary

SO ORDERED.

Barredo (Chairman), Aquino, Guerrero, De Castro and Escolin, JJ., concur.

Concepcion Jr., J., on leave.




Back to Home | Back to Main


chanrobles.com



ChanRobles Professional Review, Inc.

ChanRobles Professional Review, Inc. : www.chanroblesprofessionalreview.com
ChanRobles On-Line Bar Review

ChanRobles Internet Bar Review : www.chanroblesbar.com
ChanRobles CPA Review Online

ChanRobles CPALE Review Online : www.chanroblescpareviewonline.com
ChanRobles Special Lecture Series

ChanRobles Special Lecture Series - Memory Man : www.chanroblesbar.com/memoryman





May-1982 Jurisprudence                 

  • Adm. Matter No. 2668-MJ May 22, 1982 - MARIANO B. LAUREL v. HERMENEGILDO C. CRUZ

    4199 Phil. 243

  • G.R. No. L-28245 May 22, 1982 - PHILIPPINE AMERICAN GENERAL INSURANCE COMPANY v. COURT OF APPEALS, ET AL.

    199 Phil. 245

  • G.R. No. L-29555 May 22, 1982 - ASSOCIATED DEVELOPMENT CORPORATION v. REPARATIONS COMMISSION

    199 Phil. 256

  • G.R. No. L-29917 May 22, 1982 - FOREMOST ENTERPRISES, INC. v. COURT OF APPEALS, ET AL.

    199 Phil. 264

  • G.R. Nos. L-48376-85 May 22, 1982 - BALAGTAS REALTY CORPORATION v. MANUEL V. ROMILLO, JR., ET AL.

    199 Phil. 267

  • G.R. No. L-54887 May 22, 1982 - GUILLERMA FLORDELIS, ET AL. v. FERMIN MAR, ET AL.

    199 Phil. 281

  • G.R. No. L-57535 May 24, 1982 - ZENITH INSURANCE CORPORATION v. FIDEL P. PURISIMA, ET AL.

    199 Phil. 291

  • Adm. Case No. 133-J May 31, 1982 - BERNARDITA R. MACARIOLA v. ELIAS B. ASUNCION

    199 Phil. 295

  • Adm. Case No. 797 May 31, 1982 - LYDIA CABATU v. EDGARDO C. DOMINGO

    199 Phil. 324

  • Adm. Matter No. 2180-MJ May 31, 1982 - EPHRAIM MARIANO, ET AL. v. CRISOSTOMO GONZALES

    199 Phil. 326

  • Adm. Matter No. 2240-MJ May 31, 1982 - COSME S. ABIOG, ET AL. v. JOSE M. PASCUAL

  • G.R. No. L-25271 May 31, 1982 - REPARATIONS COMMISSION v. GUILLERMO SANTOS, ET AL.

    199 Phil. 339

  • G.R. No. L-30028 May 31, 1982 - PEOPLE OF THE PHIL. v. CRESENCIO DOBLE, ET AL.

    199 Phil. 343

  • G.R. No. 31255 May 31, 1982 - MARCIAL A. EDILLON v. PIO B. FERANDOS

    199 Phil. 363

  • G.R. No. L-32734 May 31, 1982 - IN RE: CHUA TIONG KANG, ET AL. v. REPUBLIC OF THE PHIL.

    199 Phil. 366

  • G.R. No. L-33209 May 31, 1982 - JESUSA DEL ROSARIO v. COURT OF APPEALS, ET AL.

    199 Phil. 367

  • G.R. No. L-33794 May 31, 1982 - MANILA ELECTRIC COMPANY v. COURT OF APPEALS, ET AL.

    199 Phil. 381

  • G.R. No. L-35105 May 31, 1982 - BALIUAG ELECTRIC LIGHT AND POWER COMPANY, INC. v. JUAN F. ECHIVERI

    199 Phil. 393

  • G.R. No. L-35136 May 31, 1982 - PEOPLE OF THE PHIL. v. AMADO MONSALUD

    199 Phil. 398

  • G.R. No. L-36754 May 31, 1982 - PEOPLE OF THE PHIL. v. REYNALDO ABAYON, ET AL.

    199 Phil. 404

  • G.R. No. L-37074 May 31, 1982 - IN RE: BENITO LEE v. REPUBLIC OF THE PHIL.

    199 Phil. 436

  • G.R. No. L-37243 May 31, 1982 - IN RE: ALFONSO P. BICHARA v. REPUBLIC OF THE PHIL.

    199 Phil. 438

  • G.R. No. L-37477 May 31, 1982 - TORIBIO LESCANO v. JUAN A. BAES, ET AL.

    199 Phil. 440

  • G.R. No. L-39172 May 31, 1982 - SAMUEL DUMLAO v. COURT OF APPEALS, ET AL.

    199 Phil. 442

  • G.R. No. L-40101 May 31, 1982 - FABIAN BORLAS v. COURT OF APPEALS, ET AL.

    199 Phil. 448

  • G.R. No. L-46245 May 31, 1982 - MERALCO SECURITIES INDUSTRIAL CORP. v. CENTRAL BRD. OF ASSESSMENT APPEALS, ET AL.

    199 Phil. 453

  • G.R. No. L-47334 May 31, 1982 - MIGUEL VIOLAGO, ET AL. v. JOSE C. CAMPOS, JR., ET AL.

    199 Phil. 463

  • G.R. No. L-47943 May 31, 1982 - MANILA ELECTRIC COMPANY v. CENTRAL BOARD OF ASSESSMENT APPEALS, ET AL.

    199 Phil. 465

  • G.R. No. L-50081 May 31, 1982 - SANTOS CODILLA v. FLORENCIA LOPEZ, ET AL.

    199 Phil. 471

  • G.R. No. L-50261 May 31, 1982 - IN RE: CECILIA LAVIDES, ET AL. v. CITY COURT OF LUCENA

    199 Phil. 478

  • G.R. No. L-50466 May 31, 1982 - CALTEX (PHILIPPINES) INC. v. CENTRAL BOARD OF ASSESSMENT APPEALS, ET AL.

    199 Phil. 487

  • G.R. No. L-52038 May 31, 1982 - PEOPLE OF THE PHIL. v. CRISPIN ROYO, ET AL.

    199 Phil. 493

  • G.R. No. L-52516 May 31, 1982 - PEOPLE OF THE PHIL. v. NILO TALORONG

    199 Phil. 502

  • G.R. No. L-53672 May 31, 1982 - BATA INDUSTRIES, LTD. v. COURT OF APPEALS, ET AL.

    199 Phil. 506

  • G.R. No. L-54681 May 31, 1982 - LILIA B. BARRERA v. FRANCIS J. MILITANTE, ET AL.

    199 Phil. 511

  • G.R. No. L-55698 May 31, 1982 - ENGINEERING EQUIPMENT, INC. v. NATIONAL LABOR RELATIONS COMMISSION, ET AL.

    199 Phil. 517

  • G.R. No. L-55831 May 31, 1982 - PEOPLE OF THE PHIL. v. GILBERT MEDRANO, ET AL.

    199 Phil. 520

  • G.R. No. L-57771 May 31, 1982 - QUIRINO CAVILI, ET AL. v. CIPRIANO VAMENTA, JR., ET AL.

    199 Phil. 528

  • G.R. No. L-58681 May 31, 1982 - ALFREDO P. MALIT v. PEOPLE OF THE PHIL.

    199 Phil. 532

  • G.R. No. L-59743 May 31, 1982 - NATIONAL FEDERATION OF SUGAR WORKERS v. ETHELWOLDO R. OVEJERA, ET AL.

    199 Phil. 537