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Mirpuri vs.

CA

Facts:

In 1970, Escobar filed an application with the Bureau of Patents for the registration of
the trademark Barbizon for use in horsiers and ladies undergarments (IPC No. 686).

Private respondent reported Barbizon Corporation, a corporation organized and doing


business under the laws of New York, USA, opposed the application. It was alleged that
its trademark is confusingly similar with that of Escobar and that the registration of the
said trademark will cause damage to its business reputation and goodwill. In 1974, the
Director of Patents gave due course to the application.

Escobar later assigned all his rights and interest over the trademark to petitioner. In
1979, Escobar failed to file with the Bureau the affidavit of use of the trademark required
under the Philippine Trademark Law.

Due to this failure, the Bureau cancelled Escobars certificate of registration. In 1981,
Escobar and petitioner separately filed this application for registration of the same
trademark. (IPC 2049).

Private respondent opposed again. This time it alleged (1) that the said trademark was
registered with the US Patent Office; (2) that it is entitled to protection as well-known
mark under Article 6 bis of the Paris Convention, EO 913 and the two Memoranda of the
Minister of Trade and Industry and (3) that its use on the same class of goods amounts
to a violation of the Trademark Law and Art. 189 of the RPC. Petitioner raised the
defense of Res Judicata.

Issue:

One of the requisites of res judicata is identical causes of action. Do IPC No. 686 and
IPC No. 2049 involve the same cause of action?

Held:

No. The issue of ownership of the trademark was not raised in IPC 686.

IPC 2049 raised the issue of ownership, the first registration and use of the trademark
in the US and other countries, and the international recognition of the trademark
established by extensive use and advertisement of respondents products for over 40
years here and abroad.

These are different from the issues of confessing similarity and damage in IPC 686.
The issue of prior use may have been raised in IPC 686 but this claim was limited to
prior use in the Philippines only. Prior use in IPC 2049 stems from the respondents
claims originator of the word and symbol Barbizon, as the first and registered user of
the mark attached to its products which have been sold and advertised would arise for a
considerable number of years prior to petitioners first application. Indeed, these are
substantial allegations that raised new issues and necessarily gave respondents a new
cause of action.

Moreover, the cancellation of petitioners certificate registration for failure to file the
affidavit of use arose after IPC 686. This gave respondent another cause to oppose the
second application.

It is also to be noted that the oppositions in the first and second cases are based on
different laws.

Causes of action which are distinct and independent from each other, although out of
the same contract, transaction, or state of facts, may be sued on separately, recovery on
one being no bar to subsequent actions on others.

The mere fact that the same relief is sought in the subsequent action will not render the
judgment in the prior action operating as res judicata, such as where the actions are
based on different statutes.