Friday, August 29, 2008 IN-N-OUT burger case By Clint Fabiosa & Andrew Ong I protect
IN the past, it was rather common for local businesses to copy foreign marks and register them for their own use.
Perhaps, after seeing the foreign marks in some countries abroad or upon surfing in the Internet and noticing their commercial success, the local entrepreneur wishes to ride on the brand-recall qualities of the marks, so he decides to use the same in the Philippines. But is this still feasible in light of the more recent rulings of the Supreme Court?
In the 2007 case involving a US trademark for burgers, the Supreme Court, applying Articles 6(bis) and 8 of The Convention of Paris for the Protection of Industrial Property, considered “IN-N-OUT” (for burgers) as an internationally well-known mark on the basis of the mark’s registrations in various countries around the world and its comprehensive advertisements therein.
This, notwithstanding the fact that “IN-N-OUT” has not been used, much less well-known in the Philippines.
The Court declared that “(the) fact that respondent’s marks are neither registered nor used in the Philippines is of no moment. The scope of protection initially afforded by Article 6(bis) of the Paris Convention has been expanded in the 1999 Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks, wherein the World Intellectual Property Organization General Assembly and the Paris Union agreed to a non-binding recommendation that a well-known mark should be protected in a country even if the mark is neither registered nor used in that country.” As a result, the local registration was cancelled in favor of the “true owner” of the mark.
