La Chemise Lacoste v Fernandez
Brief Background:
La Chemise Lacoste is a well known European Manufacturer (French) and the actual owner of
the trademarks “Lacoste”, “Chemise Lacoste”, “Crocodile Device” and a composite mark consisting of
the word “Lacoste” and a representation of a crocodile/ alligator, used on clothing and other goods,
used on clothings and other goods sold in many parts of the world and which has been marketed in the
Philippines by the middleman company Rustan since 1964.
In 1975 Hemandas Q. Co. (respondent) was issued certificate of registration for the trademark
“Chemise Lacoste and Crocodile Device” under the Supplemental Register. On March 1977 the same
applied for the same trademark under the Principal Register and was granted by the Patent Office.
In 1980, La Chemise Lacoste filed for the registration of the “Crocodile Device “ and “Lacoste”.
The former was approved while the latter was opposed by one Games and Garments which was later
on found by the NBI as owned and operated by Hemandas (private respondent). The petitioner filed
before the court complaints against Hemandas for unfair competition . The trial court issued search
warrant and ordered seizure of the goods subject for the offense. Hemandas appealed and the search
warrant was recalled by Judge Fernande and the confiscated items were returned to the former.
A. Contention of the State
To private respondent (hemandas)
The private respondent was charged for allegedly committing the acts of unfair competition
(violation of Art. 189 of the RPC) when it opposed the application for registration of the
trademark” Lacoste” of the petitioner.
To the respondent court /Judge Fernandez
The respondent judge committed grave abuse of discretion amounting to lack or excess of
jurisdiction when he recalled the search warrant and ordered the return of confiscated items of
Hemandas
B. Defense of the Accused
Defense of Hemandas:
He cannot be held guilty with commission of acts of unfair competition because he claims that
the trademark used by him was different from the petitioner’s trademark. He likewise claimed that
he was the first registrant and holder of a certificate of registration of the trademark “Chemise
Lacoste and Crocodile Device” in the Supplemental Register.
Defense of Respondent Judge:
No probable cause to justify the issuance of search warrants.
C. Ruling
The court held that Hemandas cannot be allowed to continue the trademark “Lacoste”
for the reason that he was the first registrant in the Supplemental Register of a trademark used
in international commerce.
Hemandas registration is only in the Supplemental Register. Registration in the SR
cannot be given a posture as in the registration in the Principal Register. It must be noted that
one may be declared an unfair competitor even if his competing trademark is registered. La
Chemise Lacoste is a world renowned mark that is protected by the Paris Convention for the
Protection of Industrial Property (to which the Philippines and France are parties) which
provides for cancellation of registration of contrary claimants to registered international
trademarks including Lacoste.
A certificate of registration in the Supplemental Register serves only as notice that the
registrant is using or has appropriated the trademark. It is not prima facie evidence of the
validity of registration, of the registrant’s eclusive right to use the same in connection with the
goods, business or services specified in the certificate. It cannot likewise be filed with effect to
the Bureau of Customs in order to eclude from the Philippines, foreign goods bearing
infringement marks or trade names.
From a leading commentator on Philippine Commercial Laws as cited by SC;
“The registration of a mark upon the SR is not, as in the case of the Principal Register,
prima facie evidence of;
a. Validity of registration;
b. Registrant’s ownership of the mark; and
c. Registrant’s eclusive right to use the mark
It is not subject to opposition, although it may be cancelled after the issuance. Neither
may it be the subject of interference proceedings. Registration in the SR is not
constructive notice of registrant’s claim to ownership. A SR is provided for the
registration of marks which are not registrable on the Principal Register because of
some defects”