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This period is 15 years short of the thirty-year requirement

mandated by Article 1137. 47
WHEREFORE, premises considered, the petition is
GRANTED. The assailed Decision of the Court of Appeals is
hereby REVERSED and SET ASIDE.
SO ORDERED.
Carpio (Chairperson), Brion, del Castillo, and Perlas-
Bernabe, JJ., concur.

SECOND DIVISION

[G.R. No. 194307. November 20, 2013]

BIRKENSTOCK ORTHOPAEDIE GMBH AND CO. KG

(formerly BIRKENSTOCK ORTHOPAEDIE GMBH),
petitioner, vs. PHILIPPINE SHOE EXPO MARKETING
CORPORATION, respondent.

SYLLABUS

1. REMEDIAL LAW; RULES OF PROCEDURE; MAY BE

RELAXED IN MERITORIOUS CASES TO RELIEVE A
LITIGANT OF AN INJUSTICE NOT COMMENSURATE
WITH THE DEGREE OF HIS THOUGHTLESSNESS IN
NOT COMPLYING WITH THE PROCEDURE
PRESCRIBED.— It is well-settled that “the rules of procedure
are mere tools aimed at facilitating the attainment of justice,
rather than its frustration. A strict and rigid application of

47
Civil Code, Art. 1137. Ownership and other real rights over immovables
also prescribe through uninterrupted adverse possession thereof for thirty
years, without need of title or of good faith.
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the rules must always be eschewed when it would subvert the
primary objective of the rules, that is, to enhance fair trials
and expedite justice. Technicalities should never be used to
defeat the substantive rights of the other party. Every party-
litigant must be afforded the amplest opportunity for the
proper and just determination of his cause, free from the
constraints of technicalities.” “Indeed, the primordial policy
is a faithful observance of [procedural rules], and their
relaxation or suspension should only be for persuasive
reasons and only in meritorious cases, to relieve a litigant of
an injustice not commensurate with the degree of his
thoughtlessness in not complying with the procedure
prescribed.” This is especially true with quasi-judicial and
administrative bodies, such as the IPO, which are not bound
by technical rules of procedure. x x x In the case at bar,
while petitioner submitted mere photocopies as documentary
evidence in the Consolidated Opposition Cases, it should
be noted that the IPO had already obtained the originals of
such documentary evidence in the related Cancellation Case
earlier filed before it. Under this circumstance and the merits
of the instant case x x x, the Court holds the IPO Director
General’s relaxation of procedure was a valid exercise of his
discretion in the interest of substantial justice.
2. MERCANTILE LAW; INTELLECTUAL PROPERTY LAWS;
REPUBLIC ACT NO. 166; TRADEMARKS; FAILURE TO
FILE THE DECLARATION OF ACTUAL USE WITHIN
THE REQUISITE PERIOD RESULTS IN THE
AUTOMATIC CANCELLATION OF REGISTRATION
OF A TRADEMARK.— Republic Act No. (RA) 166, the
governing law for Registration No. 56334, requires the filing
of a DAU on specified periods x x x. The aforementioned
provision clearly reveals that failure to file the DAU within
the requisite period results in the automatic cancellation
of registration of trademark. In turn, such failure is tantamount
to the abandonment or withdrawal of any right or interest the
registrant has over his trademark. In this case, respondent
admitted that it failed to file the 10th Year DAU for Registration
No. 56334 within the requisite period, or on or before October
21, 2004. As a c o n s e q u e n c e , i t w a s d e e m e d t o h a v e
abandoned or withdrawn any right or interest over the mark
“BIRKENSTOCK.” Neither can it invoke Section 236 of the
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IP Code which pertains to intellectual property rights obtained
under previous intellectual property laws, e.g., RA 166, precisely
because it already lost any right or interest over the said mark.
3. ID.; ID.; ID.; ID.; TO REGISTER A TRADEMARK, ONE
MUST BE THE OWNER THEREOF AND MUST HAVE
ACTUALLY USED THE MARK IN COMMERCE IN THE
PHILIPPINES FOR TWO MONTHS PRIOR TO
REGISTRATION.— Under Section 2 of RA 166, which is
also the law governing the subject applications, in order to
register a trademark, one must be the owner thereof and must
have actually used the mark in commerce in the Philippines
for two (2) months prior to application for registration. Section
2-A of the same law sets out to define how one goes about
acquiring ownership thereof. Under the same section, it is clear
that actual use in commerce is also the test of ownership but
the provision went further by saying that the mark must not
have been so appropriated by another. Significantly, to be an
owner, Section 2-A does not require that the actual use of
trademark must be within the Philippines. Thus, under RA
166, one may be an owner of a mark due to its actual use but
may not yet have the right to register such ownership here
due to the owner’s failure to use the same in the Philippines
for two (2) months prior to registration.
4. ID.; ID.; TRADEMARKS; IT IS NOT THE REGISTRATION
OF A TRADEMARK THAT VESTS OWNERSHIP
THEREOF, BUT IT IS THE OWNERSHIP OF A
TRADEMARK THAT CONFERS THE RIGHT TO
REGISTER THE SAME.— [R]egistration of a trademark,
by itself, is not a mode of acquiring ownership. If the applicant
is not the owner of the trademark, he has no right to apply for
its registration. Registration merely creates a prima facie
presumption of the validity of the registration, of the registrant’s
ownership of the trademark, and of the exclusive right to the
use thereof. Such presumption, just like the presumptive
regularity in the performance of official functions, is rebuttable
and must give way to evidence to the contrary. Clearly, it is
not the application or registration of a trademark that vests
ownership thereof, but it is the ownership of a trademark
that confers the right to register the same. A trademark is
an industrial property over which its owner is entitled to
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property rights which cannot be appropriated by unscrupulous
entities that, in one way or another, happen to register such
trademark ahead of its true and lawful owner. The presumption
of ownership accorded to a registrant must then necessarily
yield to superior evidence of actual and real ownership of a
trademark.

APPEARANCES OF COUNSEL

Angara Abello Concepcion Regala & Cruz for petitioner.

Brondial Law Office for respondent.

DECISION

PERLAS-BERNABE, J.:

Assailed in this Petition for Review on Certiorari1 are the

Court of Appeals’ (CA) Decision2 dated June 25, 2010 and
Resolution3 dated October 27, 2010 in CA-G.R. SP No. 112278
which reversed and set aside the Intellectual Property Office
(IPO) Director General’s Decision 4 dated December 22, 2009
that allowed the registration of various trademarks in favor of
petitioner Birkenstock Orthopaedie GmbH & Co. KG.
The Facts
Petitioner, a corporation duly organized and existing under
the laws of Germany, applied for various trademark
registrations before the IPO, namely: (a) “BIRKENSTOCK”
under Trademark Application Serial No. (TASN) 4-1994-091508
for goods falling under Class 25 of the International Classification
of Goods and Services (Nice Classification) with filing date of

1
Rollo, pp. 11-74.
2
Id. at 98-126. Penned by Associate Justice Juan Q. Enriquez, Jr.,
with Associate Justices Ramon M. Bato, Jr. and Florito S. Macalino,
concurring.
3
Id. at 128-129.
4
Id. at 132-146. Penned by Director General Adrian S. Cristobal, Jr.
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March 11, 1994; (b) “BIRKENSTOCK BAD HONNEF-RHEIN

& DEVICE COMPRISING OF ROUND COMPANY SEAL
AND REPRESENTATION OF A FOOT, CROSS AND
SUNBEAM” under TASN 4-1994-091509 for goods falling
under Class 25 of the Nice Classification with filing date of
March 11, 1994; and (c) “BIRKENSTOCK BAD HONNEF-
RHEIN & DEVICE COMPRISING OF ROUND COMPANY
SEAL AND REPRESENTATION OF A FOOT, CROSS AND
SUNBEAM” under TASN 4-1994-095043 for goods falling under
Class 10 of the Nice Classification with filing date of September
5, 1994 (subject applications).5
However, registration proceedings of the subject applications
were suspended in view of an existing registration of the mark
“BIRKENSTOCK AND DEVICE” under Registration No. 56334
dated October 21, 1993 (Registration No. 56334) in the name
of Shoe Town International and Industrial Corporation, the
predecessor-in-interest of respondent Philippine Shoe Expo
Marketing Corporation. 6 In this regard, on May 27, 1997
petitioner filed a petition for cancellation of Registration No.
56334 on the ground that it is the lawful and rightful owner of
the Birkenstock marks (Cancellation Case).7 During its pendency,
however, respondent and/or its predecessor-in-interest failed
to file the required 10 th Year Declaration of Actual Use (10 th
Year DAU) for Registration No. 56334 on or before October
21, 2004, 8 thereby resulting in the cancellation of such mark.9
Accordingly, the cancellation case was dismissed for being moot
and academic. 10

5
Id. at 99.
6
On February 24, 2004, Shoe Town International and Industrial Cor-
poration formally assigned the mark “BIRKENSTOCK AND DEVICE” under
Registration No. 56334 in favor of respondent; id. at 102.
7
Id. at 20.
8
Id. at 102.
9
Id. at 142.
10
Id. at 21.
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The aforesaid cancellation of Registration No. 56334 paved

the way for the publication of the subject applications in the
IPO e-Gazette on February 2, 2007. 11 In response, respondent
filed three (3) separate verified notices of oppositions to the
subject applications docketed as Inter Partes Case Nos. 14-
2007-00108, 14-2007-00115, and 14-2007-00116, 12 claiming,
inter alia, that: (a) it, together with its predecessor-in-interest,
has been using Birkenstock marks in the Philippines for more
than 16 years through the mark “BIRKENSTOCK AND
DEVICE”; (b) the marks covered by the subject applications
are identical to the one covered by Registration No. 56334 and
thus, petitioner has no right to the registration of such marks;
(c) on November 15, 1991, respondent’s predecessor-in-
interest likewise obtained a Certificate of Copyright Registration
No. 0-11193 for the word “BIRKENSTOCK”; (d) while
respondent and its predecessor-in-interest failed to file the 10th
Year DAU, it continued the use of “BIRKENSTOCK AND
DEVICE” in lawful commerce; and (e) to record its continued
ownership and exclusive right to use the “BIRKENSTOCK”
marks, it has filed TASN 4-2006-010273 as a “re-application”
of its old registration, Registration No. 56334.13 On November
13, 2007, the Bureau of Legal Affairs (BLA) of the IPO issued
Order No. 2007-2051 consolidating the aforesaid inter partes
cases (Consolidated Opposition Cases). 14
The Ruling of the BLA
In its Decision 15 dated May 28, 2008, the BLA of the IPO
sustained respondent’s opposition, thus, ordering the rejection
of the subject applications. It ruled that the competing marks of
the parties are confusingly similar since they contained the word
“BIRKENSTOCK” and are used on the same and related goods.

11
Id. at 99.
12
Id. at 99-100.
13
Id. at 101-105.
14
Id. at 111 and 133.
15
Id. at 111. Decision No. 2008-102.
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It found respondent and its predecessor-in- interest as the prior

user and adopter of “BIRKENSTOCK” in the Philippines, while
on the other hand, petitioner failed to present evidence of actual
use in the trade and business in this country. It opined that
while Registration No. 56334 was cancelled, it does not follow
that prior right over the mark was lost, as proof of continuous
and uninterrupted use in trade and business in the Philippines
was presented. The BLA likewise opined that petitioner’s marks
are not well-known in the Philippines and internationally and
that the various certificates of registration submitted by petitioners
were all photocopies and, therefore, not admissible as evidence. 16
Aggrieved, petitioner appealed to the IPO Director General.
The Ruling of the IPO Director General
In his Decision17 dated December 22, 2009, the IPO Director
General reversed and set aside the ruling of the BLA, thus allowing
the registration of the subject applications. He held that with
the cancellation of Registration No. 56334 for respondent’s failure
to file the 10 th Year DAU, there is no more reason to reject the
subject applications on the ground of prior registration by another
proprietor. 18 More importantly, he found that the evidence
presented proved that petitioner is the true and lawful owner
and prior user of “BIRKENSTOCK” marks and thus, entitled
to the registration of the marks covered by the subject
applications. 19 The IPO Director General further held that
respondent’s copyright for the word “BIRKENSTOCK” is of
no moment since copyright and trademark are different forms
of intellectual property that cannot be interchanged.20
Finding the IPO Director General’s reversal of the BLA
unacceptable, respondent filed a petition for review with the CA.

16
Id. at 113 and 139.
17
Id. at 132-146.
18
Id. at 142.
19
Id. at 144-145.
20
Id. at 146.
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Ruling of the CA
21
In its Decision dated June 25, 2010, the CA reversed and
set aside the ruling of the IPO Director General and reinstated
that of the BLA. It disallowed the registration of the subject
applications on the ground that the marks covered by such
applications “are confusingly similar, if not outright identical”
with respondent’s mark.22 It equally held that respondent’s failure
to file the 10 th Year DAU for Registration No. 56334 “did not
deprive petitioner of its ownership of the ‘BIRKENSTOCK’
mark since it has submitted substantial evidence showing its
continued use, promotion and advertisement thereof up to the
present.” 23 It opined that when respondent’s predecessor-in-
interest adopted and started its actual use of “BIRKENSTOCK,”
there is neither an existing registration nor a pending application
for the same and thus, it cannot be said that it acted in bad
faith in adopting and starting the use of such mark.24 Finally,
the CA agreed with respondent that petitioner’s documentary
evidence, being mere photocopies, were submitted in violation
of Section 8.1 of Office Order No. 79, Series of 2005 (Rules
on Inter Partes Proceedings).
Dissatisfied, petitioner filed a Motion for Reconsideration 25
dated July 20, 2010, which was, however, denied in a Resolution26
dated October 27, 2010. Hence, this petition. 27
Issues Before the Court
The primordial issue raised for the Court’s resolution is whether
or not the subject marks should be allowed registration in the
name of petitioner.

21
Id. at 98-126.
22
Id. at 119.
23
Id. at 121.
24
Id. at 125.
25
Id. at 147-182.
26
Id. at 128-129.
27
Id. 11-74
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The Court’s Ruling

The petition is meritorious.
A. Admissibility of Petitioner’s
Documentary Evidence.
In its Comment 28 dated April 29, 2011, respondent asserts
that the documentary evidence submitted by petitioner in the
Consolidated Opposition Cases, which are mere photocopies,
are violative of Section 8.1 of the Rules on Inter Partes
Proceedings, which requires certified true copies of documents
and evidence presented by parties in lieu of originals. 29 As such,
they should be deemed inadmissible.
The Court is not convinced.
It is well-settled that “the rules of procedure are mere tools
aimed at facilitating the attainment of justice, rather than its
frustration. A strict and rigid application of the rules must always
be eschewed when it would subvert the primary objective of
the rules, that is, to enhance fair trials and expedite justice.
Technicalities should never be used to defeat the substantive
rights of the other party. Every party-litigant must be afforded
the amplest opportunity for the proper and just determination
of his cause, free from the constraints of technicalities.”30 “Indeed,
the primordial policy is a faithful observance of [procedural
rules], and their relaxation or suspension should only be for

28
Id. at 190-221.
29
Section 8.1 of the Rules on Inter Partes Proceedings states:
8.1. Within three (3) working days from receipt of the petition or opposi-
tion, the Bureau shall issue an order for the respondent to file an answer
together with the affidavits of witnesses and originals of documents, and
at the same time shall notify all parties required to be notified in the IP
Code and these Regulations, provided that in case of public documents,
certified true copies may be substituted in lieu of the originals. The affidavits
and documents shall be marked consecutively as “exhibits” beginning with
the number “1”.
30
Alcantara v. Philippine Commercial and International Bank, G.R.
No. 151349, October 20, 2010, 634 SCRA 48, 61.
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persuasive reasons and only in meritorious cases, to relieve a

litigant of an injustice not commensurate with the degree of his
thoughtlessness in not complying with the procedure prescribed.”31
This is especially true with quasi-judicial and administrative
bodies, such as the IPO, which are not bound by technical rules
of procedure. 32 On this score, Section 5 of the Rules on Inter
Partes Proceedings provides:
Sec. 5. Rules of Procedure to be followed in the conduct of hearing
of Inter Partes cases. – The rules of procedure herein contained
primarily apply in the conduct of hearing of Inter Partes cases.
The Rules of Court may be applied suppletorily. The Bureau shall
not be bound by strict technical rules of procedure and evidence
but may adopt, in the absence of any applicable rule herein,
such mode of proceedings which is consistent with the
requirements of fair play and conducive to the just, speedy and
inexpensive disposition of cases, and which will give the Bureau
the greatest possibility to focus on the contentious issues before it.
(Emphasis and underscoring supplied)

In the case at bar, while petitioner submitted mere photocopies

as documentary evidence in the Consolidated Opposition Cases,
it should be noted that the IPO had already obtained the originals
of such documentary evidence in the related Cancellation Case
earlier filed before it. Under this circumstance and the merits
of the instant case as will be subsequently discussed, the Court
holds that the IPO Director General’s relaxation of procedure
was a valid exercise of his discretion in the interest of substantial
justice.33
Having settled the foregoing procedural matter, the Court
now proceeds to resolve the substantive issues.
B. Registration and ownership of
“BIRKENSTOCK.”

31
Asia United Bank v. Goodland Company, Inc., G.R. No. 188051,
November 22, 2010, 635 SCRA 637, 645.
32
See E.Y. Industrial Sales, Inc. v. Shen Dar Electricity and Machinery
Co., Ltd., G.R. No. 184850, October 20, 2010, 634 SCRA 363, 378.
33
See id. at 378-381.
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Republic Act No. (RA) 166,34 the governing law for Registration
No. 56334, requires the filing of a DAU on specified periods,35
to wit:
Section 12. Duration. – Each certificate of registration shall remain
in force for twenty years: Provided, That registrations under the
provisions of this Act shall be cancelled by the Director, unless
within one year following the fifth, tenth and fifteenth

34
Entitled, “AN ACT TO PROVIDE FOR THE REGISTRATION
AND PROTECTION OF TRADE-MARKS, TRADE- NAMES AND SERV-
ICE-MARKS, DEFINING UNFAIR COMPETITION AND FALSE
MARKING AND PROVIDING REMEDIES AGAINST THE SAME, AND
FOR OTHER PURPOSES.”
35
Such rule was carried over in Sections 124.2 and 145 of RA 8293,
otherwise known as the Intellectual Property Code of the Philippines (IP
Code), viz.:
Sec. 124. Requirements of Application. – x x x
xxx xxx xxx
124.2. The applicant or the registrant shall file a declaration of actual
use of the mark with evidence to that effect, as prescribed by the Regulations
within three (3) years from the filing date of the application. Otherwise,
the application shall be refused or the mark shall be removed from the
Register by the Director.
Sec. 145. Duration. – A certificate of registration shall remain in force
for ten (10) years: Provided, That the registrant shall file a declaration of
actual use and evidence to that effect, or shall show valid reasons based
on the existence of obstacles to such use, as prescribed by the Regulations,
within one (1) year from the fifth anniversary of the date of the registration
of the mark. Otherwise, the mark shall be removed from the Register by
the Office.
In the same manner, Rules 204 and 801 of the Rules and Regulations
on Trademarks provide:
Rule 204. Declaration of Actual Use. – The Office will not require
any proof of use in commerce in the processing of trademark applications.
However, without need of any notice from the Office, all applicants or
registrants shall file a declaration of actual use of the mark with evidence
to that effect within three years, without possibility of extension, from
the filing date of the application. Otherwise, the application shall be refused
or the mark shall be removed from the register by the Director motu proprio.
Rule 801. Duration. – A certificate of registration shall remain in force
for ten (10) years, Provided, That without need of any notice from the
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anniversaries of the date of issue of the certificate of registration,
the registrant shall file in the Patent Office an affidavit showing
that the mark or trade-name is still in use or showing that its
non-use is due to special circumstance which excuse such non-use
and is not due to any intention to abandon the same, and pay the
required fee.
The Director shall notify the registrant who files the above-
prescribed affidavits of his acceptance or refusal thereof and, if a
refusal, the reasons therefor. (Emphasis and underscoring supplied)

The aforementioned provision clearly reveals that failure to

file the DAU within the requisite period results in the automatic
cancellation of registration of a trademark. In turn, such failure
is tantamount to the abandonment or withdrawal of any right
or interest the registrant has over his trademark.36
In this case, respondent admitted that it failed to file the 10 th
Year DAU for Registration No. 56334 within the requisite period,
or on or before October 21, 2004. As a consequence, it was
deemed to have abandoned or withdrawn any right or interest
over the mark “BIRKENSTOCK.” Neither can it invoke Section
236 37 of the IP Code which pertains to intellectual property
rights obtained under previous intellectual property laws, e.g.,
RA 166, precisely because it already lost any right or interest
over the said mark.

Office, the registrant shall file a declaration of actual use and evidence to
that effect, or shall show valid reasons based on the existence of obstacles
to such use, as prescribed by these Regulations, within one (1) year from
the fifth anniversary of the date of the registration of the mark. Otherwise,
the Office shall remove the mark from the Register. Within one (1) month
from receipt of the declaration of actual use or reason for nonuse, the
Examiner shall notify the registrant of the action taken thereon such as
acceptance or refusal.
36
See Mattel, Inc. v. Francisco, G.R. No. 166886, July 30, 2008, 560
SCRA 504, 513-514.
37
Section 236 of the IP Code provides:
Sec. 236. Preservation of Existing Rights. – Nothing herein shall
adversely affect the rights on the enforcement of rights in patents, utility
models, industrial designs, marks and works, acquired in good faith prior
to the effective date of this Act.
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Besides, petitioner has duly established its true and lawful

ownership of the mark “BIRKENSTOCK.”
Under Section 238 of RA 166, which is also the law governing
the subject applications, in order to register a trademark,
one must be the owner thereof and must have actually used the
mark in commerce in the Philippines for two (2) months prior
to the application for registration. Section 2-A39 of the same
law sets out to define how one goes about acquiring ownership
thereof. Under the same section, it is clear that actual use in
commerce is also the test of ownership but the provision went
further by saying that the mark must not have been so appropriated
by another. Significantly, to be an owner, Section 2-A does
not require that the actual use of a trademark must be within
the Philippines. Thus, under RA 166, one may be an owner of
a mark due to its actual use but may not yet have the right to
register such ownership here due to the owner’s failure to use

38
Section 2 of RA 166 provides:
Sec. 2. What are registrable. – Trademarks, trade names and service
marks owned by persons, corporations, partnerships or associations domiciled
in the Philippines and by persons, corporations, partnerships or associations
domiciled in any foreign country may be registered in accordance with
the provisions of this Act: Provided, That said trademarks, trade names,
or service marks are actually in use in commerce and services not less
than two months in the Philippines before the time the applications for
registration are filed; And provided, further, That the country of which
the applicant for registration is a citizen grants by law substantially similar
privileges to citizens of the Philippines, and such fact is officially certified,
with a certified true copy of the foreign law translated into the English
language, by the government of the foreign country to the Government of
the Republic of the Philippines.
39
Section 2-A, which was added by RA 638 to RA 166, provides:
Sec. 2-A. Ownership of trademarks, trade names and service marks;
how acquired. – Anyone who lawfully produces or deals in merchandise
of any kind or who engages in any lawful business, or who renders any
lawful service in commerce, by actual use thereof in manufacture or trade,
in business, and in the service rendered, may appropriate to his exclusive
use a trademark, a trade name , or a service mark not so appropriated by
another, to distinguish his merchandise, business or service from the
merchandise, business or services of others. The ownership or possession
of a trademark, trade name, service mark, heretofore or hereafter appropriated,
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the same in the Philippines for two (2) months prior to

registration. 40
It must be emphasized that registration of a trademark, by
itself, is not a mode of acquiring ownership. If the applicant is
not the owner of the trademark, he has no right to apply for its
registration. Registration merely creates a prima facie presumption
of the validity of the registration, of the registrant’s ownership
of the trademark, and of the exclusive right to the use thereof.
Such presumption, just like the presumptive regularity in the
performance of official functions, is rebuttable and must give
way to evidence to the contrary. 41
Clearly, it is not the application or registration of a trademark
that vests ownership thereof, but it is the ownership of a trademark
that confers the right to register the same. A trademark is an
industrial property over which its owner is entitled to property
rights which cannot be appropriated by unscrupulous entities
that, in one way or another, happen to register such trademark
ahead of its true and lawful owner. The presumption of ownership
accorded to a registrant must then necessarily yield to superior
evidence of actual and real ownership of a trademark. The Court’s
pronouncement in Berris Agricultural Co., Inc. v. Abyadang 42
is instructive on this point:
The ownership of a trademark is acquired by its registration and
its actual use by the manufacturer or distributor of the goods made

as in this section provided, shall be recognized and protected in the same

manner and to the same extent as are other property rights known to this
law.
40
Ecole de Cuisine Manille (The Cordon Bleu of the Philippines), Inc.
v. Renaud Cointreau & Cie and Le Cordon Bleu Int’l., B.V., G.R. No.
185830, June 5, 2013, citing Shangri-La International Hotel Management,
Ltd. v. Developers Group of Companies, Inc., G.R. No. 159938, March
31, 2006, 486 SCRA 405, 426.
41
Shangri-La International Hotel Management, Ltd. v. Developers Group
of Companies, Inc., G.R. No. 159938, March 31, 2006, 486 SCRA 405,
420-421.
42
G.R. No. 183404, October 13, 2010, 633 SCRA 196.
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Birkenstock Orthopaedie GmbH and Co. KG vs.
Phil. Shoe Expo Marketing Corp.
available to the purchasing public. x x x A certificate of registration
of a mark, once issued, constitutes prima facie evidence of the validity
of the registration, of the registrant’s ownership of the mark, and
of the registrant’s exclusive right to use the same in connection
with the goods or services and those that are related thereto specified
in the certificate. x x x In other words, the prima facie presumption
brought about by the registration of a mark may be challenged and
overcome in an appropriate action, x x x by evidence of prior use
by another person, i.e., it will controvert a claim of legal
appropriation or of ownership based on registration by a
subsequent user. This is because a trademark is a creation of
use and belongs to one who first used it in trade or commerce. 43
(Emphasis and underscoring supplied)

In the instant case, petitioner was able to establish that it is

the owner of the mark “BIRKENSTOCK.” It submitted evidence
relating to the origin and history of “BIRKENSTOCK” and its
use in commerce long before respondent was able to register
the same here in the Philippines. It has sufficiently proven that
“BIRKENSTOCK” was first adopted in Europe in 1774 by its
inventor, Johann Birkenstock, a shoemaker, on his line of quality
footwear and thereafter, numerous generations of his kin
continuously engaged in the manufacture and sale of shoes and
sandals bearing the mark “BIRKENSTOCK” until it became
the entity now known as the petitioner. Petitioner also submitted
various certificates of registration of the mark “BIRKENSTOCK”
in various countries and that it has used such mark in different
countries worldwide, including the Philippines. 44
On the other hand, aside from Registration No. 56334 which
had been cancelled, respondent only presented copies of sales
invoices and advertisements, which are not conclusive evidence
of its claim of ownership of the mark “BIRKENSTOCK” as
these merely show the transactions made by respondent involving
the same. 45

43
Id. at 204-205.
44
Rollo, p. 143.
45
Id.
 Supreme Court E-Library

882 PHILIPPINE REPORTS

Birkenstock Orthopaedie GmbH and Co. KG vs.
Phil. Shoe Expo Marketing Corp.

In view of the foregoing circumstances, the Court finds the

petitioner to be the true and lawful owner of the mark
“BIRKENSTOCK” and entitled to its registration, and that
respondent was in bad faith in having it registered in its name.
In this regard, the Court quotes with approval the words of the
IPO Director General, viz.:
The facts and evidence fail to show that [respondent] was in good
faith in using and in registering the mark BIRKENSTOCK.
BIRKENSTOCK, obviously of German origin, is a highly distinct
and arbitrary mark. It is very remote that two persons did coin the
same or identical marks. To come up with a highly distinct and
uncommon mark previously appropriated by another, for use in the
same line of business, and without any plausible explanation, is
incredible. The field from which a person may select a trademark
is practically unlimited. As in all other cases of colorable imitations,
the unanswered riddle is why, of the millions of terms and
combinations of letters and designs available, [respondent] had to
come up with a mark identical or so closely similar to the [petitioner’s]
if there was no intent to take advantage of the goodwill generated
by the [petitioner’s] mark. Being on the same line of business, it is
highly probable that the [respondent] knew of the existence of
BIRKENSTOCK and its use by the [petitioner], before
[respondent] appropriated the same mark and had it registered in
its name. 46
WHEREFORE, the petition is GRANTED. The Decision
dated June 25, 2010 and Resolution dated October 27, 2010 of
the Court of Appeals in CA-G.R. SP No. 112278 are
REVERSED and SET ASIDE. Accordingly, the Decision dated
December 22, 2009 of the IPO Director General is hereby
REINSTATED.
SO ORDERED.
Brion (Acting Chairperson), del Castillo, Perez, and Reyes,*
JJ., concur.

46
Id. at 144-145.
*
Designated Additional Member per Raffle dated October 17, 2012.