Converse Rubber vs Universal Rubber

on February 7, 2012

Intellectual Property Law Law on Trademarks, Service Marks and Trade Names Trade Name Infringement Converse Rubber Corporation is an American corporation while Universal Rubber Product is a corporation licensed to do business in the country. Converse has been operating since 1946. Universal Rubber has been operating since 196 . !ater" Universal Rubber #iled an application #or the trademar$ %Universal Converse and &evice' be#ore the Philippine Patent (##ice. Converse Rubber opposed as it averred that the word %Converse' which is part o# its corporate name cannot be granted as part o# Universal Rubber)s trademar$ or trade name because it will li$ely deceive purchasers o# Universal Rubber)s products as it may be mista$en by unwary customers to be manu#actured by Converse Rubber. *he &irector o# Patents did not grant the opposition by Converse Rubber. ISSUE: +hether or not the decision o# the &irector o# Patents is correct.

HELD: ,o. -rom a cursory appreciation o# the Converse Rubber)s corporate name %C(,./R0/ RU11/R C(RP(RA*2(,") it is evident that the word %C(,./R0/' is the dominant word which identi#ies Converse Rubber #rom other corporations engaged in similar business. Universal Rubber" in the stipulation o# #acts" admitted Converse Rubber)s e3istence since 1946 as a duly organi4ed #oreign corporation engaged in the manu#acture o# rubber shoes. *his admission necessarily betrays its $nowledge o# the reputation and business o# petitioner even be#ore it applied #or registration o# the trademar$ in 5uestion. 6nowing" there#ore" that the word %C(,./R0/' belongs to and is being used by Converse Rubber" and is in #act the dominant word in its corporate name" Universal Rubber has no right to appropriate the same #or use on its products which are similar to those being produced by Converse Rubber.