GODOFREDO L. LORENZANA AND TIBURCIO E. EVALLE, IN HIS CAPACITY AS DIRECTOR OF PATENTS, PETITIONERS-APPELLANTS, VS. CRISPINA L. MACAGBA, SOLOMON L. LORENZANA, CRISTETA L. ALVAREZ…

Petition for review on certiorari of a Court of Appeals
decision* in
CA-G.R. No. 43346-R entitled “Crispina L. Macagba, et. al., Opposers-Appellants
vs. Godofredo L. Lorenzana,
et. al., Respondents-Applicants-Appellees“,
which set aside the decision of the Director of Patents (Decision No 516) dated
14 February 1969 and reinstated opposition proceedings in Inter Partes Case No. 485 with the Phil. Patent Office, for
hearing on the merits.

On 3 August 1956,
petitioner Godofredo L. Lorenzana
filed an application with the Phil. Patent Office for registration in the
Supplemental Register of the trademark “LORENZANA & DESIGN” which
he had allegedly been using in his bagoong and
patis business since 1940.  After summary proceedings,
a Certificate of Registration (No. SR-275) was issued in his name on 3 September 1959^[1].

On 21 (26, in the Court of Appeals decision) March 1962, Godofredo’s brother Solomon, one of
the private respondents herein, asked for the cancellation of Certificate of
Registration No. SR-275 in a petition docketed as Inter Partes
Case No. 263.  Solomon alleged that the
trademark “LORENZANA & DESIGN”
formed part of the estate of the late
Felipe Lorenzana, his and Godofredo’s
father, who had been in the fish products and other derivatives business since
1925 or thereabouts, and that therefore, Godofredo
can not have the trademark registered in his name^[2].

After protracted hearings which lasted for over five (5) years,
the Director of Patents held Godofredo (herein
petitioner) as entitled to registration of the questioned trademark in the
Supplemental Register, in Decision No. 443,
dated 26 June 1967.  This decision was
appealed by private respondent Solomon L. Lorenzana
in a petition for review with this Court but the petition was dismissed for having
been filed one day late^[3].

On 8 September 1967,
petitioner again filed with the Phil. Patent Office an application for the
registration of the trademark “LORENZANA”, this time in the Principal
Register.  This was opposed on 21 August 1968 by
private respondents Crispina L. Macagba,
Solomon L. Lorenzana, Cristeta
L. Alvarez, Gabriel L. Lorenzana, Antonio L. Camins and Sostenes L. Lorenzana, six (6) of the eleven (11) children of the late Felipe Lorenzana,
and petitioner’s brothers and sisters, in Inter Partes
Case No. 485.  Petitioner moved to
dismiss the opposition, on the ground of res judicata.  On 14
February 1969, the
opposition was dismissed by the Director of Patents in Decision No. 516^[4].

Private respondents
appealed the dismissal of their opposition to the Court of Appeals.  On 18 May 1971,
the Court of Appeals promulgated its decision, ruling thus:

“We find the appeal to be meritorious.  The Director of Patents erred in dismissing
the opposition on the ground of res judicata.

“There is no identity of subject matter and cause of action
between Inter Partes Case No. 263 and Inter Partes Case No. 485. 
It is true that case trademark is involved but the nature and object of
the proceedings in both cases are different.

“Inter Partes Case No. 263 was for
the cancellation of a registration
in the supplemental register; while Inter Partes Case
No. 485 involves a registration in the principal register.

“Registration in the principal register is governed by Sec. 4,
Republic Act No. 166, as amended.  xxx.  [while registration in] the supplemental register [is] pursuant to Section
19-A of Rep. Act No. 166 as amended xxx.

“An analytical comparison of the xxx provisions reveal that (a) the applicant for registration on the principal register
must be the owner; (b) the trademarks
to be registered in the supplemental register are those not registerable in the principal register; (c) the proceedings
for registration in the supplemental register are summary in nature; (d) that trademarks for the supplemental register shall not be published for or be subject to opposition, but shall be published on registration in the Official
Gazette; (e) that the certificates of registration for marks and tradenames registered on the supplemental register shall be
conspicuously different from certificates issued for marks and tradenames registered on the principal register; and
(f) the registration on the principal register is prima facie
evidence of the validity of the registration as expressly provided in Rule 113,
Revised Rules of Practice in the Philippines Patent Office
which reads:

“According to the law, a certificate of registration on the Principal Register of a mark or
trade name is prima facie evidence of validity of registration,
the registrant’s ownership of the mark or trade name, 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.  (Rule 113, Ibid; Sec. 20,
Rep. Act No. 166).

while registration on the supplemental
register is not
prima facie evidence of the validity of registration and cannot be filed, with effect, with the Bureau
of Customs in order to exclude from the Philippines, foreign goods bearing
infringing marks or trade names according to Rule 124 of the aforementioned
Rules which provides:

“According to the law, a certificate of registration on the
Supplemental Register is not prima facie evidence of the validity
of registration, of the registrant’s exclusive right to use the same in
connection with the goods, business, or services specified in
the certificate.  Such a certificate of registration cannot be filed,
with effect, with the Bureau of Customs in order to exclude from the Philippines, foreign goods bearing infringing marks or
trade names (Rule 124, Ibid).

“With the exception of Solomon L. Lorenzana
and Godofredo L. Lorenzana,
there is no identity of parties between Inter Partes
Cases Nos. 263 and 485. 
The parties are brothers and
sisters, being the children of
the late Felipe Lorenzana who, according to the
appellants, was the original
owner of the trade-mark in question. 
The appellants claim co-ownership of the trademarks as
heirs of Felipe Lorenzana.  The co-opposers are
not privies of Solomon L. Lorenzana, the petitioner
in Inter Partes Case No. 263, because the former do
not derive their claim or title to the trademark “LORENZANA &
DESIGN” from the latter.  Such is a co-owner in his own right by inheritance.

“In view of the foregoing, this Court holds that the decision
in Inter Partes Case No. 263 is not a bar to the
institution and prosecution of the
instant case, Inter Partes Case No. 435 [should be
No. 485] on the ground of res adjudicata.

“WHEREFORE, the decision appealed from is set aside.  Inter Partes Case No. 435 [should be No. 485] is hereby
ordered reinstated and the record
thereof is returned to the Philippines Patent Office for
hearing on the merits, without pronouncement as to costs^[5]“.

From the above decision of the Court of Appeals, petitioner has
come to this Court on a petition for review on certiorari.  Petitioner contends that the Court of Appeals
decision has disregarded the rule of res judicata, so that a remand of
Inter Partes Case No. 485 to the Phil. Patent Office
would merely be a replay of the five-year hearing in Inter Partes
Case No. 263.  He also argues that the
other respondents are privies of Solomon L. Lorenzana
and, hence, bound by the decision in Inter Partes
Case No. 263 in which registration of petitioner’s trademark in the
Supplemental Register had already been ordered.

Petitioner’s contentions are without merit.

It is a
settled doctrine that for
res judicata to apply, the following requisites must
concur:  1) there must be a prior final
judgment or order; 2) the court rendering the judgment or order must have
jurisdiction over the subject
matter and over the parties; 3)
the judgment or order must be on the
merits; and 4) there must be, between the two (2) cases, the earlier and the instant, identity of parties,
identity of subject matter, and identity of cause of action.

There is no identity of parties, subject matter and cause of action between
Inter Partes
Case No. 263 and Inter Partes
Case No. 485.

As pointed out by the Court of Appeals, Inter Partes Case No. 263
involved registration in the Supplemental Register,
while Inter Partes Case No. 485 is concerned
with registration in the Principal Register.  Substantial distinction exists between
registration in the Principal Register and registration in the Supplemental
Register.  The different effects of the
two (2) types of registration of trademarks may be enumerated as follows:

(1)  Registration in the
Principal Register gives rise to a presumption of the validity of the
registration, the registrant’s ownership of the mark, and his right to the
exclusive use thereof^[6].
There is no such presumption in registrations in the Supplemental Register.

(2)  Registration in the
Principal Register is limited to the actual owner of the trademark^[7]
and proceedings therein pass on the issue of ownership,
which may be contested through opposition^[8] or interference^[9] proceedings, or, after registration, in a petition for cancellation^[10].

Registration in the Principal Register is constructive notice of the registrant’s claim of
ownership, while registration in the Supplemental Register is merely proof of actual use of the trademark and notice that the
registrant had used or appropriated it^[11].  It
is not subject to opposition although it may be cancelled after its issuance^[12].  Corollarily, registration in the Principal Register is a basis for an action for infringement while registration in the Supplemental
Register is not.

(3)  In applications for
registration in the Principal
Register, publication of the application
is necessary^[13].  This is not so in applications for
registration in the Supplemental
Register.  Certificates of registration
under both Registers are also different from each other^[14].

(4)  Proof of registration in the Principal Register may be filed
with the Bureau of Customs to exclude foreign goods bearing infringing marks
while this does not hold true for registrations in the Supplemental Register^[15].

Neither may the other private respondents herein be considered as
privies of private respondent Solomon L. Lorenzana in
Inter Partes Case No. 263 and thus bound by Decision
No. 443 and this Court’s resolution dismissing the appeal from such decision, as contented by petitioners.  The
document that petitioner Godofredo cites, namely, a “Petition in Intervention” allegedly executed
by his other brothers and sisters, the ten (10) other children of the late
Felipe L. Lorenzana, which was later offered and
admitted as an exhibit to impeach
the testimony of one of the
alleged signatories therein who testified for petitioner’s cause in Inter Partes Case No. 263, was never formally filed with the
Phil. Patent Office and the signatories therein were never allowed to intervene.  The document is not verified or notarized,
and there is no signature therein of Filomena Lorenzana, one of the ten (10) would-be intervenors, nor of the would-be counsel^[16].

Besides, whatever privity the
petitioner Godofredo alleges as existing between
Solomon and his other brothers
and sisters is of no moment, given the differences between registration in the
Principal Register and registration in the Supplemental Register, already
adverted to, which means that the cause of action in Inter Partes
Case No. 263, is distinct and separate from the cause of action in Inter Partes Case No. 485.

WHEREFORE,
the petition is DENIED.  The decision
appealed from is AFFIRMED.  Inter Partes Case No. 485 is ordered reinstated and the records
thereof are returned to the Phil. Patent Office for hearing on the merits,
without pronouncement as to costs.

SO ORDERED.

Yap, Acting C.J., (Chairman), Melencio-Herrera,
Paras, and Sarmiento, JJ., concur.

*
Penned by Justice Ramon C. Fernandez with the concurrence of Justice Hermogenes
Concepcion Jr. and Justice Cecilia Munoz-Palma.

^[1] Rollo at 13

^[2] Appellants’ Brief, Court of Appeals, p. 5, 45

^[3] Resolution dated 19 March 1968 in G.R. No. L-27997; Rollo
at 3; Appellants’ Brief, id, p. 6

^[4] Rollo at 4

^[5] Rollo at 16, 19, 20

^[6] Section 20, Rep. Act No. 166 as amended.

^[7] Unno Commercial Enterprises v. Gen. Milling Corp. 120 SCRA 804 (1983)

^[8] Section 8, Rep. Act No. 166 as amended

^[9] Section 10-A, supra.

^[10] Section 17-A, supra.

^[11] La Chemise Lacoste,
S.A., vs. Fernandez, 129
SCRA 373, 1984:  “Registration in
the Supplemental Register.  xxx serves as notice that the registrant is using or has appropriated the
trademark”.

^[12] Section 19-A, Rep. Act No. 166 as amended.

^[13] Section 7, supra.

^[14] Section 19-A, ibid.

^[15] La Chemise Lacoste,
S.A., vs. Fernandez,
id., citing Rule 124, Revised Rules of Practice Before the Phil. Pat. Off. in
Trademark Cases.

^[16] Rollo at 39, 40