Based on the evidence, EYIS owns the “VESPA” trademark; it

EY Industrial Vs. Shen Dar has prior use, as shown by various sales invoices.

Ownership of a mark or trade name may be acquired not

Facts:
necessarily by registration but by adoption and use in trade or
 EY Industrial Sales is a domestic corporation engaged in the
commerce. As between actual use of a mark without registration,
production, distribution and sale of air compressors.
and registration of the mark without actual use thereof, the former
 Shen Dar is a Taiwan-based foreign corporation engaged in
prevails over the latter.
the manufacture of compressors.
 From 1997-2004, EY Industrial imported air compressors
For a rule widely accepted and firmly entrenched, because it has
from Shen Dar.
come down through the years, is that actual use in commerce or
 In 1997, Shen Dar filed a Trademark Application with the
business is a pre-requisite to the acquisition of the right of
Intellectual Property Office (IPO) for the mark “Vespa” for the
ownership. It is non sequitur to hold that porque EYIS is a
use of air compressors. It was approved in 2007.
distributor, it is no longer the owner.
 In 1999, EY Industrial filed a Trademark Application also for
the mark “VESPA” for the use of air compressors. It was
FIRST-TO-FILE RULE
approved in 2004.
 Shen Dar filed a Petition for Cancellation of the Industrial’s
Under Section 123.1 of IPO provision, the registration of a mark
EYES COR with the Bureau of Legal Affairs contending that:
is prevented with the filing of an earlier application for
a. there was a violation of Section 123.1 (D) of the
registration.
Intellectual Property Code which provides that: A mark
cannot be registered if it is identical to a mark with an earlier
This must not, however, be interpreted to mean that ownership
filing or priority date. b. EY Industrial is only a distributor of
should be based upon an earlier filing date. While RA 8293 (IPC)
the air compressors
removed the previous requirement of proof of actual use prior to
 On the other hand, EY Industrial alleged that it is the sole
the filing of an application for registration of a mark, proof of prior
assembler and fabricator of VESPA air compressors since
and continuous use is necessary to establish ownership of a
the early 1990s and that Shen Dar supplied them air
mark. Such ownership constitutes sufficient evidence to oppose
compressors with the mark “SD” and not “VESPA”
the registration of a mark.
Issues:
When we talk about trademark, we are just talking about the
1. Who between EY Industrial and Shen Dar is entitled to the
mark. It does not include the product. Shen Dar is the
trademark “VESPA”. EY INDUSTRIAL SALES
manufacturer of the product, but they did not name the product
2. WON the Bureau of Legal Affairs has the power to cancel the
as VESPA. It was EY that named the VESPA, and used the
application of Shen Dar even if it is Shen Dar who filed the case?
VESPA, even though they were only the distributors. 
It was EY
YES
that actually used the trademark through the use of receipts, and
Held: other documents.
1st: EY INDUSTRIAL has the right to the trademark.
The first to file rule – According to the SC that Shen Dar filed
under the old IPC where prior use is the one applied. 


2nd: BLA has the power to cancel the application.

Shen Dar challenges the propriety of such cancellation on the

ground that there was no petition for cancellation as required
under Sec. 151 of RA 8293.

The IPO Director General stated that, despite the fact that the
instant case was for the cancellation of the COR issued in favor
of EYIS, the interests of justice dictate, and in view of its findings,
that the COR of Shen Dar must be cancelled.

The above rule reflects the oft-repeated legal principle that quasi-
judicial and administrative bodies are not bound by technical
rules of procedure. Such principle, however, is tempered by
fundamental evidentiary rules, including due process.

The fact that no petition for cancellation was filed against the
COR issued to Shen Dar does not preclude the cancellation of
Shen Dar’s COR. It must be emphasized that, during the hearing
for the cancellation of EYIS’ COR before the BLA, Shen Dar tried
to establish that it, not EYIS, was the true owner of the mark
“VESPA” and, thus, entitled to have it registered. Shen Dar had
more than sufficient opportunity to present its evidence and argue
its case, and it did. It was given its day in court and its right to
due process was respected. The IPO Director General’s
disregard of the procedure for the cancellation of a registered
mark was a valid exercise of his discretion.

Remember, EY’s application was the one granted, and it is Shen

Dar’s application that was cancelled. 
It does not mean that even
you were the one who filed, it your application cannot be
cancelled. The BLA, who has jurisdiction over the case, were able
to determine that it is Shen Dar’s trademark that should not have
been issued with registration, even it is the plaintiff.