Conrad v.

CA (Short title) RULING & RATIO

G.R. No. 115115 | 246 SCRA 691 | July 18, 1995 1. YES.
Petitioner: CONRAD AND COMPANY, INC. 2. While an application for the administrative cancellation of a registered
Respondents: CA, FITRITE INC., and VICTORIA BISCUITS CO., INC. trademark on any of the grounds enumerated in Sec. 176 of RA 166, falls
under the exclusive cognizance of BPTTT, HOWEVER, action for
FACTS infringement or unfair competition, as well as the remedy of injunction
1. FITRITE, INC. and VICTORIA BISCUIT CO., INC., both domestic and relief for damages, is explicitly and unquestionably within the
corporations, are engaged in manufacturing, selling and distributing biscuits competence and jurisdiction of ordinary courts.
and cookies bearing the trademark "SUNSHINE" in the Philippines. 3. FITRITE are the holder of the Principal Register for the questioned trademark.
2. CONRAD AND COMPANY is also engaged in importing, selling and Registration in the Principal Register gives rise to a presumption of validity of
distributing biscuits and cookies in the Philippines. the registration and of the registrant's ownership and right to the exclusive use
3. In April 1982, FITRITE filed in the Bureau of Patents, Trademarks and of the mark. It is precisely such a registration that can serve as the basis
Technology Transfer (BPTTT) applications for registration of the trademark for an action for infringement.
"SUNSHINE," both in the Supplemental and Principal Registers, to be used 4. An application with BPTTT for an administrative cancellation of a
on biscuits and cookies. Since March 31, 1981 FITRITE had exclusively used registered trade mark cannot per se have the effect of restraining or
this trademark in the concept of owner on its biscuits and cookies. preventing the courts from the exercise of their lawfully conferred
o On May 20, 1983, Supplemental Register was Approved jurisdiction.
o On March 22, 1990, Principal Register was Approved
4. On May 20, 1990, FITRITE discovered that CONRAD had been importing, DISPOSITION
selling and distributing biscuits bearing its trademark in Philippines. Being acts WHEREFORE, the petition for review is DENIED for lack of merit, and the questioned
of infringement and unfair competition, FITRITE filed an action for injunction amended decision of the Court of Appeals is AFFIRMED. Costs against petitioner.
with damages.
5. CONRAD filed a motion to dismiss on the grounds of the doctrine of primary
jurisdiction and failure to state the cause of action.
6. Trial Court granted the motion to dismiss. Held that CONRAD having been
granted distributorship by Sunshine Biscuits USA over Philippine territory it
follows that the resolution of the issue with respect to the ownership of
Sunshine Biscuits which is the basis of FITRITE’s claim is lodged under the
exclusive jurisdiction of the BPTTT.
7. Court of Appeals reversed the decision of the Trial Court. It held that No
evidence had been introduced to show that “SUNHINE” trademark has been
registered in the USA. Hence, unless and until FITRITE’s certificate as
registrant of the said trademark cancelled by BPTTT, the trademark belongs
to FITRITE.
8. CA also ordered the trial court to proceed with the case for "injunction with
damages" filed by FITRITE notwithstanding the pendency of an administrative
case for the cancellation.

Hence, this petition.

ISSUE/S
1. W/N the Trial Court may proceed with the infringement case despite the pendency
of Administrative case for cancellation.

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