FACTS:

Petitioner Blue Cross Insurance, Inc. and Blue Cross Health Care, Inc. filed a
Petition for Cancellation seeking the cancellation of Certificate of
Registration of the service mark BLUE CROSS for distribution of hospital
care on pre-payment financing basis issued in the name of respondentsappellee Blue Cross and Blue Shield Association.
In their petition for cancellation, herein petitioner-appellants alleged that:
on July 21, 1986 Blue Cross Insurance, Inc. was registered as a business
name with the Bureau of Domestic Trade, Department of Trade and
Industry (DTI); that its certificate of registration of business name was
renewed on August 22, 1991; that as early as June 25, 1986 Blue Cross
Insurance, Inc. had adopted and commercially used the mark Blue Cross
as part of its corporate name/trade name; that to address the public
demand for health care maintenance services, the incorporators of Blue
Cross Insurance, Inc. formed Blue Cross Health Care, Inc. which was
registered with the Securities and Exchange Commission (SEC) on July 22,
1987 and registered as a business name with the DTI on August 25, 1987;
that Blue Cross Health Care, Inc. continued to commercially use the mark
BLUE CROSS as part of its corporate name/trade name since its
registration with the DTI on July 22, 1987 up to the present; that by virtue
of their prior adoption and commercial use of the mark BLUE CROSS,
Blue Cross Insurance, Inc. and Blue Cross Health Care, Inc. had the
exclusive title to, and interest in the said service mark or trade name.

respondent-appellee Blue Cross and Blue Shield Association raised, by way

of affirmative and/or special defenses that: its predecessor-in-interest, the
American Hospital Association, was already the owner of the mark Blue
Cross which was registered in the Philippines on August 27, 1959 under
Certificate of Registration No. 7619; that on February 5, 1952 the
respondent-appellee obtained United States patent and Trademark Office
service mark registration number 554,488 for the mark BLUE CROSS which
registration was valid for 20 years or until February 5, 1972; that
registration number 554,488 was renewed for another 10 years or until
February 5, 1992; that on July 22, 1986 it was granted a new Certificate of
Registration No. 35780 by the Patents Office for the said service mark; that
during the fifty (50) years that it has been used, the service mark BLUE
CROSS has achieved goodwill, fame and favorable reputation worldwide;
that the use by Blue Cross Insurance, Inc. and Blue Cross Health Care, Inc.
of the said service mark was without the consent and authorization of the
respondent-appellee; and that on March 26, 1992 it had filed a Petition
with the SEC for the cancellation of the service name BLUE CROSS from
the corporate name of Blue Cross Insurance, Inc. and Blue Cross Health
Care, Inc.

On 28 December 2007, Hon. Estrellita B. Abelardo, the Director of the

Bureau of Legal Affairs, IPO, rendered the assailed Decision denying the
petitioner-appellants petition for cancellation.
The Director held that the validity of Certificate of Registration No. 35780
which was issued on July 22, 1985 enjoys the presumption of validity.
The IPO ruled that while Certificate of Registration No. 7619 (which was
registered in the Philippines on August 27, 1959) had lapsed on August 27,
1979, the respondent- appellees continued use of the mark BLUE CROSS
preserved its trademark rights.
Finally, that the respondent-appellees use of the mark BLUE CROSS
precedes that of herein petitioner-appellants, and that the respondentappellees trademarks rights were acquired by it even previous to
petitioner-appellants use of it from 1987 and years thereafter.

Thus, this appeal is filed.

ISSUES:
- The petitioner-appellants argue that dismissing the appeal on a mere
technicality without considering the merits of the case is grave abuse of
discretion; that the presumption of the validity of registration and
ownership of the mark BLUE CROSS was debunked by the numerous
evidence presented by the petitioner-appellants.
- They underscore that the requirement of use is the foremost element,
aside from registration, that should have been considered as regards the
validity of registration and ownership of the said mark
HELD: The petition is not impressed with merit. PETITION DISMISSED.
RATIO:
- Section 2 of the Uniform Rules on Appeal states that:
- Section 2. Appeal to the Director General. The decisions or final orders
of the Bureau Director shall become final and executory thirty (30) days
after receipt of a copy thereof by the parties unless, within the same
period, a motion for reconsideration is filed with the Bureau Director or an
appeal to the Director General has been perfected; Provided, that only one
(1) motion for reconsideration of the decision or order of the Bureau
Director shall be allowed; and, in case the motion for reconsideration
is denied, the appellant or appellants has/have the balance of the
period prescribed above within which to file the appeal. (Emphasis
supplied)
- When the petitioner-appellants received a copy of the Decision dated 28
December 2007 on 18 January 2008, they had until 17 February 2008
within which to file a motion for reconsideration. Since 17 February 2008
fell on a Sunday, the appeal should be filed on the ensuing working day,
that is, 18 February 2008. A total of thirty (30) complete days have been
consumed.
- Thus, as correctly ruled by the IPO Director General, when the petitionerappellants received on 16 April 2009 the resolution denying their motion
for reconsideration, they only had one (1) day or until 17 April 2009 within
which to file their appeal memorandum.
- Consequently, their appeal memorandum which was filed on 18 May 2009
is far in excess of the 30-day period for perfecting an appeal.
- The IPO Director General correctly dismissed the appeal outright as it was
not filed within the prescribed period.

The petitioner-appellants underscore the need for actual use of the subject
service mark as a prerequisite, aside from registration, to the acquisition of
the right of ownership over it.
Against the evidence presented by the petitioners-appellants, the
respondent-appellee, aside from being a prior registrant, in fact presented
satisfactory proof of actual commercial use.
we adopt the findings and conclusion of Hon. Estrellita Beltran-Abelardo,
ratiocinated in this wise: the registrant enjoys in its favor the
presumption of validity of registration and ownership over the mark Blue
Cross.
Section 20 provides: 'Section 20. Certificate of registration prima facie
evidence of validity. - A certificate of registration of a mark or trade-name
shall be prima facie evidence of the validity of the registration, the
registrant's ownership of the mark or tradename, and of the registrant's
exclusive right to use the same in connection with the goods, business or

services specified in the certificate, subject to any conditions and

limitations stated therein.'
In addition to this, petitioner's own evidence reveal that prior to July 22,
1985, Blue Cross was already registered in the name of American
Hospital Association (Respondent- registrant's predecessor-in-interest)
under Certificate of Registration No. 7916 issued in August 27, 1959 for
distribution of hospital case on a pre-payment financing basis.
This fact was contained in a certification by the Bureau of Patents
Trademarks and Technology Transfer Bureau, (BPTTT) dated 27 May 1992.
(Exhibit H).
In this regard, the rights of an owner of a mark is maintained even if it fails
to renew registration and will not be prejudiced on account of one who
attempts to register a mark that does not belong to that person. The law
provides:
'Section 16. Effect of Failure to Renew registration. Mere failure to renew
any registration shall not affect the right of the registrant to apply for and
obtain a new registration under the provisions of this Act, nor such failure
entitle any other person to register a mark or trade-name unless he is
entitled thereto in accordance with the provisions of this Act.'
Preceding therefrom, even if the respondent-registrant earlier registration
of the Blue Cross mark lapsed after August 27, 1979, its continuous use
preserves its trademark rights which have been earlier acquired.
Moreover, respondent-registrant's use of the mark Blue Cross precedes
that of the petitioner.
Respondent-registrant also offered evidence of the registrations it secured
for its marks BLUE CROSS in countries all over the world.
Applying the law, this Bureau finds that respondent- registrant has shown
its actual adoption, use and ownership of the Blue Cross mark not only
through registration, but through the availability and usage of its card for
medical insurance in the Philippines. The use in commerce since 1966
proves that it is the owner of the BLUE CROSS mark and is entitled to
secure registration for the same on the basis of the aforequoted provisions
of Sec. 2 and Sec. 2-A of the old Trademark law.
Inspite of the fact that petitioner was able to show continuous use of the
mark from 1987 and years thereafter, this cannot defeat respondentresgistrant's trademarks rights already acquired previous to this period.
Therefore, its petition must necessarily fail.