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    Converse Rubber v. Universal Rubber

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    Alyanna Apacible
    This case involves a dispute over the trademark application filed by Universal Rubber Products for "Universal Converse and Device" for rubber shoes and slippers. Converse Rubber Corporation filed an opposition, arguing the mark was confusingly similar to its corporate name and would cause confusion among consumers. At trial, a merchant testified to selling Converse shoes in the Philippines for years. The Director of Patents approved Universal's application. The Supreme Court reversed, finding Universal's partial use of Converse's corporate name was likely to confuse or deceive the public given Converse's established reputation and sales in the country.

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    Converse Rubber v. Universal Rubber

    Uploaded by

    Alyanna Apacible
    731 views3 pages
    This case involves a dispute over the trademark application filed by Universal Rubber Products for "Universal Converse and Device" for rubber shoes and slippers. Converse Rubber Corporation filed an opposition, arguing the mark was confusingly similar to its corporate name and would cause confusion among consumers. At trial, a merchant testified to selling Converse shoes in the Philippines for years. The Director of Patents approved Universal's application. The Supreme Court reversed, finding Universal's partial use of Converse's corporate name was likely to confuse or deceive the public given Converse's established reputation and sales in the country.

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    INTELLECTUAL PROPERTY LAW

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    This case involves a dispute over the trademark application filed by Universal Rubber Products for "Universal Converse and Device" for rubber shoes and slippers. Converse Rubber Corporation filed an opposition, arguing the mark was confusingly similar to its corporate name and would cause confusion among consumers. At trial, a merchant testified to selling Converse shoes in the Philippines for years. The Director of Patents approved Universal's application. The Supreme Court reversed, finding Universal's partial use of Converse's corporate name was likely to confuse or deceive the public given Converse's established reputation and sales in the country.

    Copyright:

    © All Rights Reserved
    Download as DOCX, PDF, TXT or read online from Scribd
    Download as docx, pdf, or txt
    731 views3 pages

    Converse Rubber v. Universal Rubber

    Uploaded by

    Alyanna Apacible
    This case involves a dispute over the trademark application filed by Universal Rubber Products for "Universal Converse and Device" for rubber shoes and slippers. Converse Rubber Corporation filed an opposition, arguing the mark was confusingly similar to its corporate name and would cause confusion among consumers. At trial, a merchant testified to selling Converse shoes in the Philippines for years. The Director of Patents approved Universal's application. The Supreme Court reversed, finding Universal's partial use of Converse's corporate name was likely to confuse or deceive the public given Converse's established reputation and sales in the country.

    Copyright:

    © All Rights Reserved
    Download as DOCX, PDF, TXT or read online from Scribd
    Download as docx, pdf, or txt
    of 3

    Converse Rubber Corporation v.

    Universal Rubber Products


    January 8, 1987
    Fernan
    SUMMARY: Universal filed an application with the Philippine Patent Office for the registration of the trademark Universal Converse
    and Device for rubber shoes and rubber slippers. Converse Rubber Corporation, a US corporation not licensed to do business and
    not actually doing business in the Philippines, filed its opposition to the application for registration. At the trial, Converse presented
    Carmen Pacquing, a private merchant. She testified that she had been selling Converse rubber shoes in the local market since 1956,
    and that sales of Converse rubber shoes averaged 12 20 pairs a month. She also testified that in the invoices she would issue for
    sales of Converses rubber shoes, she would place Converse Chuck Taylor, Converse All Star or All Star Converse Chuck Taylor.
    The Director of Patents gave due course to Universals application. The SC set aside the Director of Patents and denied the
    application.
    DOCTRINE: A tradename is any individual name or surname, firm name, device, or word used by manufacturers, industrialists,
    merchants, and others to identify their businesses, vocations, or occupations. It refers to the business and its goodwill (A trademark
    refers to the goods itself). Ownership of a tradename is a property right which the owner is entitled to protect when there is damage
    to him from confusion of goods in the mind of the public.
    Tradenames of persons who are nationals of, domiciled, or have a bona fide or effective business or commercial establishment in
    any foreign country, which is a party to an international convention or treaty relating to marks or tradenames on the repression of
    unfair competition to which the Philippines may be a party, shall be protected without the obligation of filing or registration whether
    or not they form parts of marks.
    FACTS:
    x Universal Rubber Products filed an application with the Philippine Patent Office for the registration of the trademark
    Universal Converse and Device for rubber shoes and rubber slippers.
    x Converse Rubber Corporation filed its opposition to the application for registration. It averred that:
    o The trademark sought to be registered is confusingly similar to the word Converse which is part of its corporate
    name, as to likely deceive purchasers. Universals products may be mistaken by the unwary public to be
    manufactured by Converse.
    o The registration of the trademark in favor of Universal will cause great and irreparable injury to the business
    reputation and goodwill of Converse.
    x At the pre-trial, the parties agreed to the stipulation of the following facts:
    o Converse was duly organized under Massachusetts law and has been in existence since 1946.
    o Converse is not licensed to do business in the Philippines.
    o Converse manufactures rubber shoes and uses the trademarks Chuck Taylor and All-Star thereon.
    x At the trial, Converse presented Carmen Pacquing, a private merchant. She testified that:
    o She had been selling Converse rubber shoes in the local market since 1956, and that sales of Converse rubber
    shoes averaged 12 20 pairs a month purchased mostly by private school (Ateneo, La Salle, SAN Beda Beda)
    basketball players.
    o She knew Converses rubber shoes were from the US because the trademark says Made in the USA and is
    accompanied by a blue or red star.
    o In the invoices she would issue for sales of Converses rubber shoes, she would place Converse Chuck Taylor,
    Converse All Star or All Star Converse Chuck Taylor.
    x At the trial, Universal presented its corporate secretary (unnamed). She testified that:
    o Universal has been selling Universal Converse sandals and rubber shoes since 1962 and 1963, respectively.
    o She was unaware of the name Converse prior to her corporations sale of Universal Converse rubber shoes and
    sandals.
    x The Director of Patents gave due course to Universals application. Converses MR was also denied.
    o Converse failed to present proof that the word Converse has become so identified with it.
    o Converse only presented a single witness who has never even dealt with Converse. In fact, the entry of Converses
    goods in the Philippines was effected without its hand.
    o Converses proof of its corporate personality cannot establish use of the word Converse, as Converse is not even
    licenses to do business in the Philippines and does not do business on its own.
    o Besides, Converse uses the trademarks Chuck Taylor and All-Star on its rubber shoes, and not Converse.
    o No determination can be made as to whether the word Converse appears on Converses rubber shoes, as it
    never presented any label or specimen of its shoes.

    Hence, this petition.

    ISSUE: WON Universals partial appropriation of Converses corporate name is of such a character that it is calculated to deceive or
    confuse the public, to the injury of Converse
    Tradename
    Any individual name or surname, firm name, device, or word used by manufacturers, industrialists, merchants, and others
    to identify their businesses, vocations, or occupations
    Refers to the business and its goodwill (A trademark refers to the goods itself)
    Ownership of a tradename is a property right which the owner is entitled to protect when there is damage to him from
    confusion of goods in the mind of the public
    Case at bar
    A cursory appreciation of Converses corporate name, Converse Rubber Corporation will show that the word Converse
    is the dominant word which identifies it from other corporations engaged in similar business
    Universal admitted in the stipulation of facts Converses existence since 1946. This admission betrays its knowledge of the
    reputation and business of Converse even before its application.
    o Therefore, Universal has no right to appropriate the word for use on its products which are similar to Converses. A
    corporation is entitled to the cancellation of a mark that is confusingly similar to its corporate name.
    Universals witness had no idea why the corporation Universal Converse as its trademark. Such unexplained use by
    Universal of the dominant word of Converses corporate name lends itself open to the suspicion of fraudulent motive.
    o When there is no reasonable explanation for the defendants choice of a mark, though the field for his selection
    was so broad, the inference is inevitable that it was chosen deliberately to deceive.
    The sales invoices submitted by the witness show that it is the word Converse that mainly identifies Converses products.
    (ex. Converse Chuck Taylor, Converse All Star, All Star Converse Chuck Taylor, etc.)
    o Thus, the word Converse has grown to be identified with Converses products.
    o The sales invoices provide the best proof that there were actual sales of Converses products in the country.
    o The most convincing proof of use of a mark in commerce is testimony of such witnesses as customers. The witness
    has testified as such customer.
    All brands of goods filter into the market, indiscriminately sold by merchants, not necessarily with the knowledge or
    consent of the manufacturer.
    o The actual sale of goods in the local market is what establishes trademark use, and thus serves as the basis for any
    action aimed at trademark pre-exemption.
    o It is a corollary logical deduction that while Converse is not licensed to do business in the country, and is not
    actually doing business here, it cannot earn a reputation or goodwill as regards its products.
    There is also confusing similarity between Universals and Converses trademarks, which could confuse the purchasing
    public to the prejudice of Converse.
    o The trademarks of both Universal and Converse are imprinted in a circular manner on the side of the shoes.
    o It is sufficient that the similarity between the two labels is such that there is a possibility or likelihood of the
    ordinary purchaser of the older brand to mistake the new brand for it.
    Assuming that the trademark sought to be registered is distinctively dissimilar from Converses, the likelihood of confusion
    still subsists on the origins of the goods.
    o By appropriating the word Converse, Universals products are likely to be mistaken as having been produced by
    Converse.
    o The risk of damage also includes confusion of reputation if the public could reasonably assume that the goods of
    the parties originates from the same source.
    Right of a foreign corporation not licensed to do business/ not actually doing business to maintain an action in the forum
    La Chemise Lacoste v. Fernandez:
    o A foreign corporation which has never done any business in the Philippines and which is unlicensed and
    unregistered to do business here, but is widely and favorably known through the use of its products bearing its
    corporate name and tradename, has a legal right to maintain an action to restrain residents and inhabitants from
    organizing a corporation bearing the same name when it appears that they have personal knowledge of the
    existence of such a foreign corporation, and it is apparent that the purpose of the proposed domestic corporation
    is to deal and trade the same goods as those of the foreign corporation.
    Paris Convention

    o
    -

    Art. 8: A trade name shall be protected in all the countries of the Union, without the obligation of filing or
    registration, whether or not it forms part of the trademark.

    RA 166
    o Sec. 37: Tradenames of persons who are nationals of, domiciled, or have a bona fide or effective business or
    commercial establishment in any foreign country, which is a party to an international convention or treaty relating
    to marks or tradenames on the repression of unfair competition to which the Philippines may be a party, shall be
    protected without the obligation of filing or registration whether or not they form parts of marks.

    DISPOSITIVE: Director of Patents set aside. Universals application is denied.


    alycat b2015

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