The Philippine Supreme Court is inclined to think so in the November 19, 1999 case of Pribhdas J. Mirpuri, petitioner, vs. Court of Appeals, Director of Patents, and the Barbizon Corporation, respondents. The facts unfold in this manner.

In 1970, Lolita Escobar, the predecessor-in-interest of petitioner Mirpuri, filed an application for the registration of the trademark "BARBIZON" which was used to identify the associated ladies undergarment products made by Escobar.

Respondent Barbizon Corporation, a New York firm producing ladies undergarments, opposed Escobar’s application in a case docketed as Inter Partes Case (IPC) No. 686.

The Director of Patents dismissed the opposition and granted petitioner’s application in 1974. The decision became final and Escobar was issued a certificate of registration. Escobar later assigned her rights over the mark to petitioner Mirpuri.

However, because of Escobar’s failure to file an Affidavit of Use, the trademark registration for "BARBIZON" was cancelled in 1979.

In 1981, Escobar reapplied for registration of the cancelled trademark. Mirpuri filed his own application for registration of Escobar’s trademark. Escobar later assigned her application to Mirpuri.

Once again, respondent, based on existing United States registrations and use worldwide, opposed the petitioner’s application in a case docketed as IPC No. 2049.

Petitioner stated that respondent’s opposition was a rehash based on the same grounds as IPC No. 686, which had already been decided. In short, res judicata barred respondent from opposing petitioner’s application.

Literally, res judicata means a matter adjudged, a thing judicially acted upon or decided; a thing or matter settled by judgment. In res judicata, the judgment in the first action is considered conclusive as to every matter offered and received therein, as to any other admissible matter which might have been offered for that purpose, and all other matters that could have been adjudged therein. Res judicata is an absolute bar to a subsequent action for the same cause; and its requisites are: (a) the former judgment or order must be final; (b) the judgment or order must be one on the merits; (c) it must have been rendered by a court having jurisdiction over the subject matter and parties; (d) there must be between the first and second actions, identify of parties, of subject matter of causes of action.

In 1982, Escobar assigned to petitioner the use of the business name "Barbizon International", which petitioner subsequently registered with the Department of Trade and Industry (DTI). In 1987, DTI issued petitioner a certificate of registration for the business name.

In 1991, DTI cancelled petitioner’s registration of "Barbizon International", declaring that respondent is the true owner and prior user of the business name "Barbizon International".

In resolving the decade-old IPC No. 2049, the Director of Patents barred respondent’s opposition, and duly approved petitioner’s application on the ground that res judicata had already taken effect.

Respondent questioned the decision of the Director of Patents before the Court of Appeals (CA). In 1993, the CA reversed the decision of the Director of Patents, ruling that the decision of IPC No. 686 did not bar by judgment the opposition in IPC 2049 and ordering that the case be remanded to the Bureau of Patents for further proceedings. Thereby, no res judicata took place at all. Predictably, petitioner sought the intervention of the Supreme Court.

The Supreme Court held that although IPC Nos. 686 and 2049 involved the same parties and the same subject matter, no res judicata occurred because the two cases did not share identical causes of action. While IPC No. 686 merely raised issues of confusing similarity and damage, IPC No. 2049 introduced new causes of action, such as the prior use and registration of the trademark in the United States and other countries worldwide. The SC ruled that res judicata "does not apply to rights, claims or demands, although growing out of the same subject matter, which constitute separate or distinct causes of action and were not put in issue in the former action". Futhermore, both cases were based on markedly different laws: IPC No. 686 was based on the trademark law whereas IPC No. 2049 invoked the Convention of Paris for the Protection of Industrial Property and the two memoranda directed by then Ministers of Trade and Industry Luis Villafuerte and his successor Roberto Ongpin.

Significantly, private respondent cited protection of the trademark under the Paris Convention. The purpose of the Paris Accord was to afford foreign nationals the same treatment in each of the member countries as that country makes available to its own citizens. Both the Philippines and the United States are signatories to the agreement. Touching base with history, the Supreme Court stated that pursuant to the Paris accord, then Minister of Trade and Industry Luis Villafuerte issued a 1980 memorandum instructing the Director of Patents to reject all pending applications for Philippine registration of world-famous trademarks by applicants other than their original owners. Futhermore, the Director was instructed to order such existing Philippine registrants to surrender their certificates of registration. In 1983, then Minister Roberto Ongpin issued another memorandum. The memo gave the Patent Office the authority to refuse all applications "for or cancel the registration of trademarks which constitute a reproduction, translation or imitation of a trademark owned by a person, natural or corporate, who is a citizen of a country SIGNATORY to the PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY.

Subsequently, the Villafuerte and Ongpin memoranda were sustained by the Supreme Court in the 1984 landmark case of LA Chemise Lacoste, S.A. vs. Fernandez. The court ruled that under the Paris Convention, the Minister of Trade and Industry had the authority to determine whether a trademark was "well-known".

In fine, the Supreme Court reminded the bench and bar of the importance and objective of the World Trade Organization, of which the Philippines and the United States were signatories and thus must abide by the agreements forged by and amongst its member nations. In particular, the Court zeroed in on one of the annexes, the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). Members of the TRIPS desire to reduce distortions and impediments to international trade, taking into account the need to promote effective and adequate protection of intellectual property rights.

In pursuance to their well-argued reasoning, the SC denied the petition and sustained the findings of the Court of Appeals to remand the case to the Bureau of Patents for further proceedings, there being no res judicata.

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