Lacoste vs. Fernandez

La Chemise Lacoste vs. Fernandez

GR 63796-97, 21 May 1984; First Division, Gutierrez Jr. (J)

Facts: 

La chemise Lacoste is a French corporation and the actual owner of the trademarks “Lacoste,” “Chemise Lacoste,” “Crocodile Device” and a composite mark consisting of the word “Lacoste” and a representation of a crocodile/alligator, used on clothings  and other goods sold in many parts of the world and which has been marketed in the Philippines (notably by Rustans) since 1964.  In 1975 and 1977, Hemandas Q. Co. was issued certificate of registration for the trademark “Chemise Lacoste and Q Crocodile Device” both in the supplemental and Principal Registry.  In 1980, La Chemise Lacoste SA filed for the registration of the “Crocodile device” and “Lacoste”.   Games and Garments (Gobindram Hemandas, assignee of Hemandas Q.Co.) opposed the registration of “Lacoste.”

In 1983, La Chemise Lacoste filed with the NBI a letter-complaint alleging acts of unfair competition committed by Hemandas and requesting the agency’s assistance.  A search warrant was issued by the trial court.  Various goods and articles were seized upon the execution of the warrants.  Hemandas filed motion to quash the warrants, which the court granted.  The search warrants were recalled, and the goods ordered to be returned.  La Chemise Lacoste filed a petition for certiorari.

Issue:  

Whether the proceedings before the patent office is a prejudicial question that need to be resolved before the criminal action for unfair competition may be pursued.

Held: 

No.  The proceedings pending before the Patent Office do not partake of the nature of a prejudicial question  which must first be definitely resolved.  The case which suspends the criminal action must be a civil case, not a mere administrative case, which is determinative of the innocence or guilt of the accused.   The issue whether a trademark used is different from another’s trademark is a matter of defense and will be better resolved in the criminal proceedings before a court of justice instead of raising it as a preliminary matter in an administrative proceeding.

Inasmuch as the goodwill and reputation of La Chemise Lacoste products date back even before 1964, Hemandas cannot be allowed to continue the trademark “Lacoste” for the reason that he was the first registrant in the Supplemental Register of a trademark used in international commerce.  Registration in the Supplemental Register cannot be given a posture as if the registration is in the Principal Register.  It must be noted that one may be declared an unfair competitor even if his competing trademark is registered.  La Chemise Lacoste is world renowned mark, and by virtue of the 20 November 1980 Memorandum of the Minister of Trade to the director of patents in compliance with the Paris Convention for the protection of industrial property, effectively cancels the registration of contrary claimants to the enumerated marks, which include “Lacoste"