FREDCO MANUFACTURING CORPORATION vs.

PRESIDENT AND FELLOWS OF

Facts: On August 10, 2005, Fredco Manufacturing Corporation (Fredco), a corporation organized and
existing under the laws of the Philippines, filed a Petition for Cancellation of Registration No. 56561
before the Bureau of Legal Affairs of the Intellectual Property Office (IPO) against President and Fellows
of Harvard College (Harvard University), a corporation organized and existing under the laws of
Massachusetts, United States of America. Fredco alleged that Registration No. 56561 was issued to
Harvard University on 25 November 1993 for the mark “Harvard Veritas Shield Symbol” for decals, tote
bags, serving trays, sweatshirts, t-shirts, hats and flying discs. Fredco alleged that the mark “Harvard” for
t-shirts, polo shirts, sandos, briefs, jackets and slacks was first used in the Philippines on January 2, 1982
by New York Garments Manufacturing &Export Co., Inc. (New York Garments), a domestic corporation
and Fredco’s predecessor-in-interest, who filed for trademark registration of the mark “Harvard” for
goods under Class 25 on January 24, 1985 which matured into a registration and a Certificate of
Registration was issued on December 12, 1988, with a 20-year term subject to renewal at the end of the
term. The registration was later assigned to Romeo Chuateco, a member of the family that owned New
York Garments. Fredco alleged that at the time of issuance of Registration No. 56561 to Harvard
University, New York Garments had already registered the mark “Harvard” for goods under Class 25.

Harvard University, on the other hand, alleged that it is the lawful owner of the name and mark “Harvard”
in numerous countries worldwide, including the Philippines. Harvard University is over 350 years old and
is a highly regarded institution of higher learning in the United States and throughout the world. Harvard
University further alleged that the name and the mark have been rated as one of the most famous brands
in the world, valued between US $750,000,000 and US $1,000,000,000.Harvard University alleged that in
March 2002, it discovered, through its international trademark watch program, Fredco’s website
www.harvard-usa.com which advertises and promotes the brand name “Harvard Jeans USA” without
Harvard University’s consent.

Issue:
Whether or not the Fredco’s action to cancel the registration of Harvard University for the trademark
“Harvard” will prosper.

Held:
No. Fredco’s registration of the mark “Harvard” and its identification of origin as “Cambridge,
Massachusetts” falsely suggest that Fredco or its goods are connected with Harvard University, which
uses the same mark “Harvard” and is also located in Cambridge, Massachusetts. Fredco’s registration of
the mark “Harvard” should not have been allowed because Section 4(a) of R.A. No. 166 prohibits the
registration of a mark “which may disparage or falsely suggest a connection with persons, living or dead,
institutions, beliefs. Fredco’s use of the mark “Harvard,” coupled with its claimed origin in Cambridge,
Massachusetts, obviously suggests a false connection with Harvard University. On this ground alone,
Fredco’s registration of the mark “Harvard” should have been disallowed.

Section 123.1(e) of R.A. No. 8293 categorically states that “a mark which is considered by the competent
authority of the Philippines to be well-known internationally and in the Philippines, whether or not it is
registered here,” cannot be registered by another in the Philippines. It does not require that the well-
known mark be used in commerce in the Philippines but only that it be well-known in the Philippines.
Also, the Philippines and the United States of America are both signatories to the Paris Convention for
the Protection of Industrial Property (Paris Convention). Thus, this Court has ruled that the Philippines is
obligated to assure nationals of countries of the Paris Convention that they are afforded an effective
protection against violation of their intellectual property rights in the Philippines in the same way that
their own countries are obligated to accord similar protection to Philippine nationals. “Harvard” is the
trade name of the world famous Harvard University, and it is also a trademark of Harvard University.
Under Article 8 of the Paris Convention, as well as Section 37 of R.A. No. 166, Harvard University is
entitled to protection in the Philippines of its trade name “Harvard” even without registration of such
trade name in the Philippines. This means that no educational entity in the Philippines can use the trade
name “Harvard” without the consent of Harvard University. Likewise, no entity in the Philippines can
claim, expressly or impliedly through the use of the name and mark “Harvard,” that its products or
services are authorized, approved, or licensed by, or sourced from, Harvard University without the latter’s
consent.

Ratio Decidendi:
Section 4(a) of R.A. No. 166 prohibits the registration of a mark “which may disparage or falsely suggest
a connection with persons, living or dead, institutions, beliefs.

Section 123.1(e) of R.A. No. 8293 categorically states that “a mark which is considered by the competent
authority of the Philippines to be well-known internationally and in the Philippines, whether or not it is
registered here,” cannot be registered by another in the Philippines. Section 123.1(e) does not require that
the well-known mark be used in commerce in the Philippines but only that it be well-known in the
Philippines.

Article 8 of the Paris Convention provides that: A trade name shall be protected in all the countries of the
Union without the obligation of filing or registration, whether or not it forms part of a trademark.