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EN BANC

G.R. No. L-54158 August 31, 1984

PAGASA INDUSTRIAL CORPORATION, Petitioner, vs. COURT OF APPEALS, TIBURCIO S. EVALLE as Director of Patents, and YOSHIDA KOGYO KABUSHIKI KAISHA, Respondents.

Quasha, Asperilla, Ancheta, Valmonte, Peña & Marcos and Francisco Lava, Jr. for petitioner.chanrobles virtual law library

The Solicitor General for respondent Appellate Court.chanrobles virtual law library

Romulo, Mabanta, Buenaventura & delos Angeles for private respondent.

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R E S O L U T I O N

AQUINO, J.:

This case is about the conflicting claims of Pagasa Industrial Corporation and Yoshida Kogyo Kabushiki Kaisha for the trademark YKK for zippers.chanroblesvirtualawlibrarychanrobles virtual law library

The Director of Patents issued to Yoshida on November 9, 1961 Certificate of Registration No. 9331 for the said trademark for slide fasteners and zippers in class 41. It claimed to have used the trademark since September 1, 1950.chanroblesvirtualawlibrarychanrobles virtual law library

Notwithstanding that prior registration, the Director on April 4, 1968, or more than six years later, issued to Pagasa Certificate of Registration No. 13756 for the same trademarkfor its zippers, based on alleged use of the trademark since March 1, 1966.

On January 23, 1975, Yoshida asked the Director to cancel the registration in favor of Pagasa. The trademark, used for the same product by two different entities, has caused confusion, mistake and deception. The Director explained that the duplicitous registration was attributable to the fact that his examiner "miserably overlooked" the anterior registration by Yoshida. Had it not been for such costly oversight, Pagasa's application would have been rejected.chanroblesvirtualawlibrarychanrobles virtual law library

In his decision of May 5, 1977, the Director cancelled Pagasa's certificate of registration in accordance with section 4 (d) and chapter IV of Republic Act No. 166.chanroblesvirtualawlibrarychanrobles virtual law library

Pagasa appealed to the Court of Appeals which in its decision dated February 6, 1980 affirmed the cancellation. It found that prior to 1968 Pagasa knew that Yoshida was the registered owner and user of the YKK trademark which is an acronym of its corporate name.chanroblesvirtualawlibrarychanrobles virtual law library

Tadao Yoshida, the president of Yoshida, and Tsutomu Isaka the export manager, visited in 1960 (1965) Pagasa's factory which was manufacturing zippers under the Royal brand Anacleto Chi, Pagasa's president visited in turn Yoshida's factory in Toyoma,Japan.chanroblesvirtualawlibrarychanrobles virtual law library

The Appellate Court concluded that Pagasa's knowledge that Yoshida was using the YKK trademark precludes the application of the equitable principle of laches, estoppel and acquiescence. It noted that Pagasa acted in bad faith. As observed by Yoshida's counsel, Pagasa's registration of YKK as its own trademark was an act of ingratitude.chanroblesvirtualawlibrarychanrobles virtual law library

Pagasa appealed to this Court. The Second Division in a decision dated November 19, 1982, reversed the decision of the Appellate Court (118 SCRA 526). Yoshida filed a motion for reconsideration which was denied in the resolution of January 12, 1983. It was granted leave to file a second motion for reconsideration over Pagasa's opposition. The case was transferred to the Banc.chanroblesvirtualawlibrarychanrobles virtual law library

We hold that the second motion for reconsideration should be granted. Pagasa contended originally that the Appellate Court erred in holding that Pagasa cannot invoke the equitable principles of laches, estoppel and acquiescence because Yoshida had not abandoned the YKK trademark and Pagasa was aware of its prior existence and registration. It allegedly erred further in ruling that registration gives the registrant a vested right in the trademark.chanroblesvirtualawlibrarychanrobles virtual law library

These contentions are devoid of merit. The appeal should not have been given due course. The Director of Patents sensibly and correctly cancelled the registration in favor of Pagasa which has not shown any semblance of justification for usurping the trademark YKK. The registration in favor of Pagasa was admitted by the Director to be a mistake. He said that Pagasa's application should have been denied outright.chanroblesvirtualawlibrarychanrobles virtual law library

Pagasa cannot rely on equity because he who comes into equity must come with clean hands. Equity refuses to lend its aid in any manner to one seeking its active interposition who has been guilty of unlawful or inequitable conduct in the matter with relation to which he seeks relief (30 C.J.S. 1009).chanroblesvirtualawlibrarychanrobles virtual law library

"Registration is sufficient prima-facie proof that all acts necessary to entitle the mark to registration were duly performed" (87 C.J.S. 421). Obviously, Yoshida's prior registration is superior and must prevail.chanroblesvirtualawlibrarychanrobles virtual law library

WHEREFORE, the decisions of the Director of Patents and the Court of Appeals are affirmed. Costs against the petitioner.chanroblesvirtualawlibrarychanrobles virtual law library

SO ORDERED.

Fernando, C.J., Teehankee, Makasiar, Abad Santos, Melencio-Herrera, Plana, Escolin and Gutierrez, JJ., concur.chanroblesvirtualawlibrary chanrobles virtual law library

Concepcion, Jr., Guerrero, Relova, Cuevas, and De la Fuente, JJ., took no part.