The Supreme Court has declared as unlawful the registration of the Gloria Maris trademark under one of its company’s incorporators in a trademark dispute.
In a decision promulgated on May 20 this year, the High Court’s Third Division through Associate Justice Maria Filomena Singh ordered the cancellation of the Certificates of Registration over the Gloria Maris trademark, consisting of the words “Gloria Maris” with a shark’s fin enclosed in a plate of an irregular shape in the name of Pacifico Q. Lim.
Gloria Maris Shark’s Fin Restaurant, Inc. was registered in 1994 with the Securities and Exchange Commission, with five incorporators, including Lim.
Records of the case showed that Lim was entrusted by Gloria Maris’ Board of Directors with registering the company’s trademark with the Intellectual Property Office (now Intellectual Property Office of the Philippines).
However, they later discovered the Gloria Maris trademark was registered with the IPOPHL only in 2005 and in Lim’s name, not Gloria Maris’.
He also franchised the concept of Gloria Maris restaurant to several companies.
Gloria Maris sought to cancel the registration before the Bureau of Legal Affairs (BLA) of the IPOPHL but the latter ruled in Lim’s favor.
In its ruling, the IPOPHL said it found that Lim created the Gloria Maris trademark in 1993, prior to Gloria Maris’ registration with the SEC.
The BLA also noted that the trademark application in Lim’s name was published in the IPO Gazette, which Gloria Maris did not oppose.
Gloria Maris appealed to the Office of the Director General (ODG), which reversed the BLA.
The ODG found that Gloria Maris had been using the name “Gloria Maris” as part of its corporate name and business identity for more than 10 years before Lim’s registration with the IPO.
However, the Court of Appeals reinstated the BLA’s ruling in favor of Lim, prompting Gloria Maris to elevate the case to the High Court.
The High Court this time ruled in favor of Gloria Maris, finding that Lim registered the Gloria Maris trademark in bad faith.
Bad faith in the context of trademark registration, according to the SC, means that the applicant has knowledge of prior creation, use, and/or registration by another of an identical or similar trademark.”
“Lim knew that Gloria Maris had been using the mark and name “Gloria Maris” for more than 10 years. He was also the company’s incorporator and director and remained a shareholder even after registering the trademark. It was also bad faith on Lim’s part to benefit from the goodwill built by the Gloria Maris brand when the company as a whole built and established the brand,” it said.
“Given the foregoing, the Court rules that based on the evidence on record, Gloria Maris was able to prove through substantial evidence that it has been using the name “Gloria Maris” in the conduct of its business, years before Lim’s registration and, more importantly, Lim knew about it,” the SC said.
With this, the SC held that a trademark registered in bad faith may be canceled for unfair competition under the Intellectual Property Code.
Concurring with the ruling are Associate Justices Alfredo Benjamin Caguioa, Henri Jean Paul Inting, Samuel Gaerlan and Japar Dimaampao.
