The Supreme Court ruled that the registration of the Gloria Maris trademark under one of the company’s incorporators was unlawful.
The Supreme Court’s Third Division, in a decision penned by Associate Justice Maria Filomena Singh, ordered the cancellation of the certificates of registration over the Gloria Maris trademark, consisting of the words “Gloria Maris” with a shark’s fin enclosed in a plate of an irregular shape (Gloria Maris trademark), in the name of Pacifico Lim.
Gloria Maris Shark’s Fin Restaurant Inc. was registered with the Securities and Exchange Commission (SEC) in 1994 with five incorporators, including Lim. Court records showed that Gloria Maris’ board of directors entrusted Lim with registering the Gloria Maris trademark with the Intellectual Property Office (IPO).
The board later discovered that the Gloria Maris trademark was registered with the IPO only in 2005 and in Lim’s name, not Gloria Maris’. Lim had also franchised the concept of Gloria Maris restaurant to several companies.
The Supreme Court held that a trademark registered in bad faith may be canceled for being unfair competition under the Intellectual Property Code. Thus, it ordered the cancellation of Lim’s registration over the trademark.
Gloria Maris earlier sought to cancel the registration before the Bureau of Legal Affairs (BLA) of the IPO, but the BLA ruled in Lim’s favor. The BLA found that Lim created the Gloria Maris trademark in 1993, prior to Gloria Maris’ registration with the SEC, and also noted that the trademark application in Lim’s name was published in the IPO Gazette, which Gloria Maris did not oppose.
Gloria Maris appealed to the Office of the Director General (ODG), which reversed the BLA’s ruling. The ODG found that Gloria Maris had been using the name “Gloria Maris” as part of its corporate name and business identity for more than 10 years before Lim’s registration with the IPO.
However, the Court of Appeals reinstated the BLA’s ruling in favor of Lim, prompting Gloria Maris’ present petition before the Supreme Court.
The Supreme Court ruled in favor of Gloria Maris, finding that Lim registered the Gloria Maris trademark in bad faith. Bad faith in the context of trademark registration means that the applicant has knowledge of prior creation, use, and/or registration by another of an identical or similar trademark.
Lim knew that Gloria Maris had been using the mark and name “Gloria Maris” for more than 10 years, the court said. He was also the company’s incorporator and director and remained a shareholder even after registering the trademark.
It was also bad faith on Lim’s part to benefit from the goodwill built by the Gloria Maris brand when the company as a whole built and established the brand.
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