La Chemise Lacoste Vs.

Fernandez
Facts:
La chemise Lacoste is a French corporation and the actual owner of the trademarks
Lacoste,Chemise Lacoste, Crocodile Device and a composite mark consisting of
the word Lacoste and are presentation of a crocodile/alligator, used on clothing's
and other goods sold in many parts of the world and which has been marketed in
the Philippines (notably by Rustans) since 1964.
In 1975 and 1977, Hemandas Q. Co. was issued certificate of registration for the
trademark Chemise Lacoste and Q Crocodile Device "both in the supplemental and
Principal Registry. In 1980, La Chemise Lacoste SA filed for the registration of the
Crocodile device and Lacoste.
Games and Garments (Gobindram Hemandas, assignee of Hemandas Q.Co.)
opposed the registration of Lacoste.
In 1983, La Chemise Lacoste filed with the NBI a letter-complaint alleging acts of
unfair competition committed by Hemandas and requesting the agencys assistance
for investigation and prosection.
A search warrant was issued by the trial court. Various goods and articles were
seized upon the execution of the warrants.
Hemandas filed motion to quash the warrants, which the court granted. The search
warrants were recalled, and the goods ordered to be returned. La Chemise Lacoste
filed a petition for certiorari.
The defendant argued that the petitioner has no capacity to sue being a foreign
corporation not doing business in the Philippines
Issue:
Whether or not La Chemise Lacoste has capacity to sue - Yes.
Ratio:
As early as 1927, this Court was, and it still is, of the view that a foreign corporation
not doing business in the Philippines needs no license to sue before Philippine
courts for infringement of trademark and unfair competition. Thus, in Western

Equipment and Supply Co. v. Reyes(51 Phil. 115), this Court held that 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
in the Philippines through the use therein of its products bearing its corporate and
tradename, has a legal right to maintain an action in the Philippines to restrain the
residents and inhabitants thereof from organizing a corporation therein bearing the
same name as the foreign corporation, 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 in the same
goods as those of the foreign corporation.
We further held: xxx xxx xxx
... That company is not here seeking to enforce any legal or control rights arising
from, or growing out of, any business which it has transacted in the Philippine
Islands. The sole purpose of the action:
Is to protect its reputation, its corporate name, its goodwill, whenever that
reputation, corporate name or goodwill have, through the natural development of its
trade, established themselves.' And it contends that its rights to the use of its
corporate and trade name: Is a property right, a right in rem, which it may assert
and protect against all the world, in any of the courts of the world-even in
jurisdictions where it does not transact business-just the same as it may protect its
tangible property, real or personal, against trespass, or conversion. .xxxxxx
Since it is the trade and not the mark that is to be protected, a trade-mark
acknowledges no territorial boundaries of municipalities or states or nations, but
extends to every market where the trader's goods have become known and
Identified by the use of the mark.
More important is the nature of the case which led to this petition. What preceded
this petition for certiorari was a letter complaint filed before the NBI charging
Hemandas with a criminal offense, i.e., violation of Article 189 of the Revised Penal
Code. If prosecution follows after the completion of the preliminary investigation
being conducted by the Special Prosecutor the information shall be in the name of
the People of the Philippines and no longer the petitioner which is only an aggrieved
party since a criminal offense is essentially an act against the State. It is the latter
which is principally the injured party although there is a private right violated.
Petitioner's capacity to sue would become, therefore, of not much significance in the
main case.