SEHWANI vs IN-N-OUT BURGER

***I acquired this in the internet and it summarized the case better than I could.

On October 15, 2007, the Third Division of the Supreme Court, the highest judiciary authority in the Philippines, confirmed that the owner of a well-known trademark has the legal capacity to sue for violation of IP rights in the Philippines even if the trademark was neither registered nor used in the Philippines. In-N-Out Burger, Inc. (INOB), a U.S.-based hamburger fast food chain, applied to register its trademark IN-N-OUT Burger & Arrow Design and service mark IN-N-OUT in the Philippines in June 1997. During the application, INOB discovered that a local company, Sehwani, Inc., had already registered IN-N-OUT in 1993 for restaurant services, without INOBs permission. Sehwani had appointed a licensee, Benitas Frites Inc., and is connected to a restaurant in Pasig City that was using INOBs trademarks. INOBs demands to Sehwani were basically ignored. As a result, INOB filed with the Philippines Intellectual Property Office (IPO) an administrative complaint against Sehwani, Benitas Frites, Inc. and the restaurant operator in Pasig City for unfair competition and for cancellation of the trademark registration, along with a claim for damages. In 2003, the Bureau of Legal Affairs (BLA) of the IPO rendered its decision on the administrative complaint. The BLA held, on the basis of the evidence filed, that IN-N-OUT is an internationally well-known mark and ordered that Sehwanis prior registration of IN-N-OUT be cancelled. In coming to its decision, the BLA also remarked that INOB has legal capacity to sue in the Philippines for IP violations. Sehwanis appeal to the Director General of the IPO was filed too late and accordingly dismissed on the technicality. Sehwanis petition to the Court of Appeal was also dismissed for lack of merit. Not giving up, Sehwani took the matter further up to the Supreme Court and argued strenuously that INOB did not have legal capacity to sue in the Philippines because it was not conducting business in the Philippines and its marks were neither registered nor used in the Philippines. The Supreme Court was unmoved by Sehwanis submissions. In ruling for INOB, the Supreme Court noted that both the United States and the Philippines are signatories to the Paris Convention. INOBs causes of action were anchored in Articles 6bis and 8 of the Paris Convention. In particular, the Supreme Court held that competent authority for determining whether a trademark is well known in the country where protection is sought under Article 6bis is the competent authority of the registration or use, which in the Philippines is the IPO. Whether a trademark is well known is a factual question and involves an appreciation of the evidence adduced before the BLA. In the face of the numerous trademark registrations of INOB around the world and the comprehensive advertisements presented at trial, the Supreme Court held that the BLA correctly found that the trademarks of INOB are internationally well known. The Supreme Court went on to explain that the fact that INOBs trademarks were neither registered nor used in the Philippines is of no consequence because of the expansion of the scope of protection afforded by Article 6bis by the1999 Joint Resolution Concerning Provisions on the Protection of Well-Known Marks. It was agreed in the Joint Resolution between the World Intellectual Property Organization General Assembly and the Paris Union to support 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. The decision affirms the Philippines commitment to protect the rights of owners of internationally well-known marks.