In a recent decision, the Supreme Court of the Philippines denied the opposition filed by Ecole de Cuisine Manille, Inc., a.k.a. Cordon Bleu of the Philippines (Ecole), against the trademark application of Renaud Cointreau & Cie and Le Cordon Bleu Int’l. (Cointreau) for LE CORDON BLEU & Device, covering goods falling under Classes 8, 9, 16, 21, 24, 25, 29 and 30.

Cointreau's application was filed in 1990 and was opposed by Ecole in 1993. Ecole’s opposition was based on its prior use of the subject mark in the Philippines for its cooking and culinary activities since 1948. In its defense, Cointreau argued that it had been using the mark since as early as 1895 for its Le Cordon Bleu culinary school in Paris, France, where Ecole’s director, Lourdes L. Dayrit, had trained as a student.

On July 31, 2006, the Bureau of Legal Affairs of the Intellectual Property Office of the Philippines (IPOPHIL) rejected Cointreau’s application on the ground that there was not sufficient evidence to establish Cointreau’s prior use of the mark in the Philippines. It further stated that adoption and use of the trademark must be in Philippine commerce and not abroad. However, this decision was reversed by the Director General of the IPOPHIL, who held that the old Trademarks Law does not require actual use in the Philippines to acquire ownership of the mark. The IPOPHIL Director General considered Cointreau’s earlier use of the mark outside the Philippines and noted that Ecole failed to explain how it came up with the mark. For these reasons, the IPOPHIL Director General concluded that Ecole had unjustly appropriated the mark.

The decision of the IPOPHIL Director General was affirmed by the Court of Appeals and the Supreme Court.

In denying the opposition, the Supreme Court explained that only the owner of a mark has the right to register the mark, and a prior user of the mark in the Philippines is not necessarily the owner. A prior user of a mark in commerce can prove ownership only when the mark has not been validly appropriated by another. In this case, the Supreme Court noted, Cointreau had been using the subject mark in France well before Ecole started using it in the Philippines. Ecole de Cuisine Manille (Cordon Bleu of the Philippines), Inc. v. Renaud Cointreau & Cie & Le Cordon Bleu Int’l., B.V., G.R. No. 185830 (S. Ct. June 5, 2013).

The Court also noted that the Philippines and France are both signatories to the Paris Convention for the Protection of Industrial Property. Thus, Cointreau’s mark, even if not registered in the Philippines, was also afforded protection against infringement and/or unfair competition. The Court found that prior use of the mark in France effectively barred its subsequent registration by another party in the Philippines. That being the case, even if Ecole was the first to use the mark in the Philippines, it could not be said to have legally appropriated the mark, and hence was not entitled to registration.

This case is significant because it clarifies that prior use of a mark in the Philippines does not guarantee registration.

This article was first published in INTA Bulletin, Vol. 68 No.16, September 1, 2013.