The Supreme Court has granted the petition of brothers Albert King and Arthur King, heirs of King Si Biak, and cancelled two Lido trademark registrations held by Panciteria Lido Chinese Cuisine Co. (PLCCC). The Court ruled that PLCCC registered the marks in bad faith and could not acquire protectable trademark rights over marks long identified with the partnership Eng Son Co.
The Case
The Lido Restaurant was owned by Eng Son Co., a partnership established in 1997 between King Si Biak and Annie Alipio (Alipio). When the business relationship between the two deteriorated, Alipio filed in 2008 her own application for registration of the trademark "Panciteria Lido" for restaurant falling under Class 43. King Si Biak opposed the application, docketed as Inter Partes Case (IPC) No. 14-2009-00213.
In a Decision dated November 19, 2010, the Bureau of Legal Affairs (BLA) ruled that the right to register the trademark "Panciteria Lido" belonged to Eng Son Co., considering Alipio's own admission that the partnership owned the business. The BLA held that even assuming the partnership had been dissolved at Alipio's instance, such dissolution did not terminate the partnership, which continued to exist until the winding up of its affairs. This Decision had since attained finality.
King Si Biak passed away in 2010, leaving the brothers King as his heirs. Alipio entered into a new partnership with other individuals and formed respondent PLCCC. In 2012, PLCCC applied for the registration of the subject Lido marks. The applications were granted, prompting the heirs to file the petitions for cancellation.
The BLA Adjudication Officer granted the petitions in a Decision dated December 18, 2020, and the BLA Director affirmed this on December 30, 2022. On December 18, 2023, the IPO Office of the Director General reversed and dismissed the petitions, holding that ownership of a trademark is acquired through registration rather than prior use. The Court of Appeals, in a Resolution dated March 25, 2024, denied the brothers' motion for extension of time and dismissed their petition for being filed 15 days beyond the reglementary period.
The Issue
The case centered on whether PLCCC's registration of the subject Lido marks was validly obtained in accordance with the Intellectual Property Code, and whether the brothers King possessed sufficient legal interest to maintain the cancellation proceedings.
The Ruling
The Supreme Court found that, through Alipio, PLCCC knew that the right to register the Lido mark belonged to Eng Son Co., yet it caused the registration of the subject marks in its own name. The Court held that this bad faith precluded PLCCC from acquiring protectable trademark rights under the Intellectual Property Code and warranted the cancellation of its registrations.
The Court's disposition reads: "ACCORDINGLY, the Petition is GRANTED. The Resolutions dated March 25, 2024 and February 12, 2025 of the Court of Appeals in CA-G.R. SP No. 182419 are REVERSED and SET ASIDE. The Decision dated December 18, 2023 of the Office of the Director General of the Intellectual Property Office is REVERSED. The Decision dated December 18, 2020 of the Bureau of Legal Affairs Adjudication Officer, as affirmed by the Decision dated December 30, 2022 of the BLA Director, is REINSTATED insofar as consistent with this Decision. Trademark Registration Nos.4-2012-014828 and 4-2012-014829 in favor of Panciteria Lido Chinese Cuisine Co. are CANCELLED."
By the Numbers
- G.R. No. 279019
- Eng Son Co. partnership established in 1997
- Alipio's application filed in 2008
- BLA Decision on "Panciteria Lido" dated November 19, 2010
- King Si Biak passed away in 2010
- PLCCC applied for the subject marks in 2012
- Trademark Registration Nos. 4-2012-014828 and 4-2012-014829
- BLA Adjudication Officer Decision dated December 18, 2020
- BLA Director Decision dated December 30, 2022
- IPO Director General Decision dated December 18, 2023
- CA Resolutions dated March 25, 2024 and February 12, 2025
- Petition filed 15 days beyond the reglementary period
The Court's Reasoning
The Court explained that even if the question of bad faith were laid aside, PLCCC's registrations would remain infirm under Section 165.2 of the Intellectual Property Code, which protects a trade name, whether or not registered, against any subsequent use by a third party likely to mislead the public. For decades, Eng Son Co. conducted business under the names "Lido," "Panciteria Lido," and "Lido Restaurant." By registering marks dominated by the distinctive "Lido" identity associated with Eng Son Co., PLCCC appropriated Eng Son Co.'s protected trade name, and such registration is void on that ground.
The Court rejected the IPO Director General's conclusion that King Si Biak's death vested exclusive rights over the disputed marks in Alipio. Under the Civil Code, property acquired by a partnership belongs to the partnership itself, and no partner may appropriate specific partnership property as exclusively their own. Although the death of a partner causes the dissolution of the partnership, it does not terminate the partnership, which continues until the winding up of its affairs has been completed. The records did not establish that Eng Son Co. was ever liquidated or that the winding up of its affairs was undertaken, nor that ownership of the subject marks was lawfully transferred to Alipio or PLCCC.
The Court also held that the brothers King possessed sufficient legal interest to maintain the cancellation proceedings. Whatever proprietary interest King Si Biak held in Eng Son Co. passed, upon his death, to his heirs in accordance with the rules on succession, giving them sufficient legal interest to challenge acts allegedly impairing their predecessor's partnership interest. The Court concluded that the case does not turn on who secured a certificate of registration, but on whether such registration was validly obtained in accordance with the Intellectual Property Code, which it was not.
Source: Supreme Court Decision, G.R. No. 279019.
This report summarizes a public Supreme Court decision and is not legal advice.