G.R.
No. 115115 July
18, 1995
CONRAD AND COMPANY, INC.
vs.
HON. COURT OF APPEALS, FITRITE INC., and
vs.
HON. COURT OF APPEALS, FITRITE INC., and
VICTORIA BISCUITS CO., INC.
FACTS:
Private respondents, FITRITE Inc. and
Victoria Biscuits Co., Inc., are engaged in the business of manufacturing,
selling and distributing biscuits and cookies bearing the trademark “SUNSHINE”
in the Philippines. Petitioner, CONRAD AND COMPANU, Inc. is engaged in the
business of importing, selling and distributing biscuits and cookies in the
Philippines.
Private
respondents were granted the trademark “SUNSHINE” to be used on biscuits and
cookies by the Bureau of Patents, Trademarks and Technology Transfer (BPTTT).
For quite some time, the trademark “SUNSHINE” has been used by the private
respondents in the concept of an owner on its biscuits and cookies.
Meanwhile,
petitioner was designated as the exclusive importer and dealer of the products
of “Sunshine Biscuits, Inc.” for sale in the Philippines.
Private
respondents then filed a case before the Regional Trial Court, seeking for
remedies against infringement under Sec. 23 of Republic Act No. 166, as
amended, as well as of the remedies against unfair competition under Sec. 29 of the same statue.
Petitioner
then filed a motion to dismiss the complaint invoking, among others, the
doctrine of primary jurisdiction.
ISSUE:
Whether
or not the doctrine of primary jurisdiction is applicable in the case at bar.
HELD:
No, the doctrine finds no merit in the case
at bar.
While
an application for the administrative cancellation of a registered trademark
falls under the exclusive cognizance of BPTTT, an action, however, for
infringement or unfair competition, as well as the remedy for injunction and
relief for damages, is explicitly and unquestionably within the competence and
jurisdiction of ordinary courts.
An application with BPTTT for an
administrative cancellation of a registered trade mark cannot per se have the
effect of restraining or preventing the
courts from the exercise of their lawfully conferred jurisdiction. A contrary
rule would unduly expand the doctrine of primary jurisdiction which, simply
expressed, would merely behoove regular courts, in controversies involving
specialized disputes, to defer to the findings of resolutions of administrative
tribunals on certain technical matters.