Conrad V CA 246 SCRA 691

Conrad v.
CA, 246 SCRA 691
Plaintiffs appellants FITRITE, INC. and VICTORIA BISCUIT CO., INC. [private respondents here], both
domestic corporations, are engaged in the business of manufacturing, selling and distributing biscuits and
cookies bearing the trademark "SUNSHINE" in the Philippines.
-Defendant CONRAD AND COMPANY [petitioner here] is also engaged in the business of importing,
selling and distributing biscuits and cookies in the Philippines.
- 1982, plaintiff FITRITE filed in the Bureau of Patents, Trademarks and Technology Transfer (hereto
referred as BPTTT) applications for registration of the trademark "SUNSHINE," both in the Supplemental
and Principal Registers, to be used on biscuits and cookies. Since March 31, 1981 FITRITE had
exclusively used this trademark in the concept of owner on its biscuits and cookies. On May 20, 1983
FITRITE's application for this trademark in the Supplemental Register was approved by the BPTTT and
FITRITE was issued a Certificate of Registration for a term of 20 years from the date of approval.
On March 22, 1990 FITRITE's application for the same trademark in the Principal Register was approved
by BPTTT and FITRITE was issued a Certificate of Registration for a term of 20 years from said date of
approval. On June 28, 1984 FITRITE authorized its sister company, co-plaintiff VICTORIA BISCUIT
CO., to use this trademark on its biscuits and cookies, as well as to manufacture, promote, sell and
distribute products bearing said trademark. It then assigned its trademark "SUNSHINE AND DEVICE
LABEL," together with its interest and business goodwill to said VICTORIA BISCUIT. From the time
FITRITE was issued the Certificate of Registration for this trademark on May 20, 1983 up to the filing of
the complaint a quo FITRITE and VICTORIA BISCUIT have been manufacturing, selling and distributing
on a massive scale biscuits and cookies bearing this trademark; so that through the years of extensive
marketing of plaintiffs' biscuits and cookies with this trademark, their products have become popularly
known and enjoyed wide acceptability.
- through the affidavit executed on May 30, 1990 by defendant CONRAD's own Import Manager and
Executive Assistant by the name of Raul Olaya, plaintiffs succeeded in tracing and discovered that
CONRAD had been importing, selling and distributing biscuits and cookies, and other food items bearing
this trademark in the Philippines. Although CONRAD had never before been engaged in the importation,
sale and distribution of products similar to those of plaintiffs, on April 18, 1988 CONRAD was suddenly
designated exclusive importer and dealer of the products of "Sunshine Biscuits, Inc." for sale in the
Philippine market; and on April 21, 1988, per the affidavit of said Raul Olaya, CONRAD made its first
importation, which was continuously repeated up to the present
-The acts of CONRAD, done without plaintiffs' consent, were deliberately calculated to mislead and
deceive the purchasers by making them believe that its (CONRAD'S) "Sunshine" products had originated
from plaintiffs and thereby inducing them to patronize those products, all to the damage and prejudice of
both the purchasing public and plaintiffs.
-Plaintiffs demanded that it cease and desist from continuing with those acts, but the demand was ignored.
Being acts of infringement and unfair competition in violation of plaintiffs' rights, plaintiffs can validly
avail themselves of the 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 statute.
- petitioner invoked, among other grounds, litis pendentia, the doctrine of primary jurisdiction and failure
to state a cause of action. RTC, acting on a motion to dismiss filed by petitioner, ordered the dismissal of
the complaint
CA: reversed the order of the trial court and ordered the reinstatement of the case. Unless and until
FITRITE's certificates both in the Supplemental and Principal Registers as registrant of said "SUNSHINE"
trademark are cancelled by BPTTT, or so long as said "SUNSHINE" trademark has not been successfully
proved by CONRAD in the action
a quo as belonging to Sunshine Biscuits, Inc. or so long as said trademark has not been successfully proved
by Sunshine Biscuits, Inc. in the cancellation proceeding before BPTTT as belonging to it (Sunshine
Biscuits), for all legal intents and purposes the trademark belongs to FITRITE and all those acts of
importing, selling and distributing by CONRAD constitute infringement as defined in said Sec. 22 of
Republic Act No. 166, as amended.
Issue: WON the case for "injunction with damages" filed by private respondents notwithstanding the
pendency of an administrative case for the cancellation of Fitrite's trademark filed by supposedly "Conrad's
principal" with the Bureau of Patents, Trademarks and Technology Transfer ("BPTTT") should be granted
Held: Yes. We find for private respondents.
FITRITE is the registrant of the "SUNSHINE" trademark in the Philippines; that CONRAD's claim that its
principal, Sunshine Biscuits, Inc., is the registrant of a "SUNSHINE" trademark in the United States of
America is a mere allegation still subject to proof; that there is no identity of causes of action and because
the cause before BPTTT is the cancellability of FITRITE's registration while the cause in the case a quo is
infringement by CONRAD of said "SUNSHINE" trademark of FITRITE; that there is implied admission
that CONRAD has been importing, selling and distributing biscuits, cookies and other food items bearing
said "SUNSHINE" trademark without FITRITE's consent; that so long as the cancellation proceeding
remains pending in BPTTT, said "SUNSHINE" trademark belongs exclusively to FITRITE in the
Philippines, and any person using it without FITRITE's consent is guilty of infringement.

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Conrad v.

CA, 246 SCRA 691

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