Case No.
12 (Hilario)
Emerald Garment Manufacturing Corporation vs. The H.D. Lee Company, Inc.
G.R. No. 210693
June 7, 2017
FACTS:
On December 21, 2001, H.D. Lee filed before the IPO an application for the registration
of the trademark, "LEE & OGIVE CURVE DESIGN." H.D. Lee claimed that the said
mark was first used in the Philippines on October 31, 1996. Relative thereto, Application
No. 4-2201-009602, on outer clothing categorized under Class 25, which includes
jeans, casual pants, trousers, slacks, shorts, jackets, vests, shirts, blouses, sweaters,
tops, skirts, jumpers, caps, hats, socks, shoes, suspenders, belts and bandannas, was
filed. Within three years from the filing of the application, H.D. Lee submitted to the IPO
a Declaration of Actual Use of the mark.
H.D. Lee's application was published in the Intellectual Property Philippines' Electronic
Gazette for Trademarks, which was belatedly released on January 5, 2007.
Emerald opposed H.D. Lee's application. Emerald argued that the approval of the
application will violate the exclusive use of its marks, "DOUBLE REVERSIBLE WAVE
LINE," and "DOUBLE CURVE LINES," which it has been using on a line of clothing
apparel since October 1, 1973 and 1980, respectively. Further, Section 123.l (d) of
Republic Act No. 8293, otherwise known as the Intellectual Property Code (IPC), will
likewise be breached because the "LEE & OGIVE CURVE DESIGN' is confusingly
similar or identical to the "DOUBLE CURVE LINES' previously registered in Emerald's
name.
Refuting Emerald's opposition, H.D. Lee insisted that it is the owner and prior user of
"LEE & OGIVE CURVE DESIGN." H.D. Lee maintained that it initially used the said
mark on February 18, 1946, and registered the same in the United States of America
(USA) on April 10, 1984 under Registration No. 1,273,602. The mark has been
commercially advertised and used all over the world as well. The IPO Director of Bureau
of Legal Affairs denied H.D. Lee's application. It ruled that H.D. Lee established neither
its ownership of the mark "LEE & OGIVE CURVE DESIGN' nor its international
reputation.
ISSUE:
Does Emerald Garment Manufacturing Corporation have the rights over the registration
of the marks "DOUBLE CURVE LINES” and "DOUBLE REVERSIBLE WAVE LINE” as
against H.D. Lee's "OGIVE CURVE DESIGN”?
HELD:
Yes, Emerald Garment Manufacturing Corporation has duly established its rights over
the registration of the marks “DOUBLE CURVE LINES” and "DOUBLE REVERSIBLE
WAVE LINE.”
In G.R. No. 195415, the Court, via the Resolutions dated November 28, 2012 and
January 28, 2013, made the following findings with finality: (1) Emerald has been using
the mark "DOUBLE REVERSIBLE WAVE LINE (Back Pocket Design)" since October
1973, with sales invoices proving actual commercial use of the mark more than two
months before the application for its registration in 1990; (2) H.D. Lee's sale of its
garments in the Philippines only began in 1996; and (3) H.D. Lee failed to prove that the
mark "OGIVE CURVE DEVICE' was well-known locally and internationally at the time
Emerald filed its application for the registration of the mark "DOUBLE REVERSIBLE
WAVE LINE (Back Pocket Design)." On the other hand, Emerald's application for the
registration of its mark "DOUBLE CURVE LINES' had likewise been resolved with
finality by the IPO DG on June 5, 2008, and the corresponding Entry of Judgment was
recorded on October 21, 2008.
H.D. Lee argues that the principle of conclusiveness of judgment does not apply since
no identity of issue exists between the instant petition, on one hand, and G.R. No.
195415, on the other. The Court finds the foregoing untenable as the issues all point to
the registrability of the confusingly similar marks "DOUBLE CURVE LINES," "DOUBLE
REVERSIBLE WAVE LINE," and "OGIVE CURVE DESIGN." Further, H.D. Lee's claim
that the instant petition involves the mark "LEE & OGIVE CURVE DESIGN' and not
"OGIVE CURVE DESIGN' is specious and a clear attempt to engage into hair-splitting
distinctions. A thorough examination of the pleadings submitted by H.D. Lee itself
shows that indeed, the focus is the "OGIVE CURVE DESIGN," which remains to be the
dominant feature of the mark sought to be registered.
The Court needs to stress that in G.R. No. 195415 and Inter Partes Case No. 3498
before the IPO, Emerald had already established with finality its rights over the
registration of the marks "DOUBLE CURVE LINES' and "DOUBLE REVERSIBLE
WAVE LINE' as against H.D. Lee's "OGIVE CURVE DESIGN."
