Protecting Global Brands in the Philippines: Well-Known Marks and Trademark Rights

The Supreme Court’s 2011 decision in Fredco Manufacturing Corporation v. President and Fellows of Harvard College clarifies how Philippine law protects globally recognized brands. The case addresses a recurring conflict: a local company registers a famous foreign name for its own goods, then claims exclusive rights based on earlier local registration. The Court ruled that internationally well-known marks enjoy protection in the Philippines even without local use or registration, and that a local registrant cannot appropriate a famous name to falsely suggest a connection with its true owner.

The Facts of the Case

Fredco Manufacturing Corporation, a Philippine company, filed a petition to cancel Harvard University’s trademark registration for the “Harvard Veritas Shield Symbol” covering goods such as t-shirts, sweatshirts, and hats under Class 25. Fredco claimed that its predecessor, New York Garments, had used the mark “Harvard” for clothing in the Philippines since 1982 and obtained a registration in 1988. That registration was later cancelled in 1998 when New York Garments failed to file the required affidavit of use.

Harvard University opposed the cancellation, asserting that it had used the “Harvard” name in commerce since 1872 and had registered the mark in at least 50 countries. Harvard also pointed out that Fredco’s logo included the words “Cambridge, Massachusetts,” “Established 1936,” and “USA,” creating a false impression of affiliation with the university.

The Intellectual Property Office’s Bureau of Legal Affairs initially cancelled Harvard’s registration for Class 25 goods. On appeal, the IPO Director General reversed, and the Court of Appeals affirmed. Fredco then appealed to the Supreme Court.

The Issue

The central issue was whether Fredco, as a local user and prior registrant, had a better right to the mark “Harvard” than Harvard University, which had not used the mark in the Philippines before its registration.

The Ruling

The Supreme Court denied Fredco’s petition and affirmed the Court of Appeals. The Court declared that “Harvard” is a well-known name and mark not only in the United States but also internationally, including the Philippines.

The Court reasoned that under Section 4(a) of Republic Act No. 166, the former Philippine Trademark Law, a mark that falsely suggests a connection with an institution cannot be registered. Fredco’s use of “Harvard” with “Cambridge, Massachusetts” and “USA” clearly suggested a connection with Harvard University, which did not exist. The Court noted that Fredco’s explanation that it used these words to “evoke a desirable aura” confirmed it was riding on Harvard’s goodwill.

The Court also applied the Paris Convention for the Protection of Industrial Property, to which the Philippines is a signatory. Under Article 6 bis, member countries must refuse or cancel registration of marks that reproduce, imitate, or translate a well-known mark. Article 8 protects trade names without the obligation of filing or registration. The Court held that “Harvard” is both a trade name and a trademark of Harvard University, and is therefore protected in the Philippines even without local registration.

The Court further noted that under Section 123.1(e) of the Intellectual Property Code (Republic Act No. 8293), a mark considered well-known internationally and in the Philippines cannot be registered by another, whether or not it is registered locally. The Court also cited Rule 102 of the IPO rules, which lists criteria for determining whether a mark is well-known, including the extent of use, promotion, registration, and commercial value worldwide.

Practical Takeaways

• Well-known marks are protected without local registration. A foreign brand that is internationally recognized can invoke protection in the Philippines even if it has not been used or registered locally.
• Local registration does not cure bad faith. A local company cannot secure exclusive rights to a famous mark by registering it first if the registration falsely suggests a connection with the true owner.
• Trade names enjoy protection under the Paris Convention. A trade name like “Harvard” is protected in member countries without the need for filing or registration.
• False origin claims are fatal. Using words like “Cambridge, Massachusetts” or “USA” on products bearing a famous name will be treated as an attempt to deceive consumers and exploit another’s goodwill.
• Failure to maintain registrations weakens claims. Fredco’s cancellation of its own registration due to a missed affidavit of use undermined its claim of ownership.

This article is general information and not legal advice. For your specific situation, consult a lawyer or ask ASG Legal AI.