Facts
Respondent Pacifico Q. Lim (Lim) is engaged in the restaurant business. He offered a proposal to the owners of Petitioner Gloria Maria Shark’s Fin Restaurant, Inc. (Gloria Maris) because he claims that petitioner was about to go out of business.
On January 26, 1994, “Gloriamaris Shark’s Fin Restaurant, Inc.” was registered with the Securities and Exchange Commission (SEC) by its incorporators. In 2005, three trademarks bearing the name “Gloria Maris” were registered by Lim, as owner, with the Intellectual Property Office (IPO).
On December 4, 2009, petitioner filed separate petitions to cancel Lim’s Certificates of Registration.
ISSUE: Whether or not Lim committed unlawful trademark registration and use
Ruling
Yes.
A trademark registration in bad faith is considered unfair competition under the Intellectual Property Code:The Complaint-Affidavit filed by Marvin does not comply with the Jurisdictional requirements for the filing of an adultery case.
168.2. Any person who shall employ deception or any other means contrary to good faith by which he shall pass off the goods manufactured by him or in which he deals, or his business, or services for those of the one having established such good will, or who shall commit any acts calculated to produce said result, shall be guilty of unfair competition, and shall be subject to an action therefor.
The bad faith in the context of trademark registrations means that the applicant or registrant has knowledge of prior creation, use, and/or registration by another of an identical or similar trademark.
Here, Lim’s registration of the subject trademarks was done in bad faith. First, Lim had full knowledge that the name “Gloria Maris” had been used by petitioner Gloria Maris for more than 10 years since it was incorporated in 1994 for its fine-dining Chinese restaurant. Second, Lim was an incorporator and a director of Gloria Maris. Third, it was bad faith on Lim’s part to reap the fruits of the goodwill built by the Gloria Maris brand when he registered the subject marks in his own name.
Consequently, the trademarks registered by Lim, which bear the name “Gloria Maris,” have been unlawfully registered.