CASE DIGEST: Canon vs. CA

CANON KABUSHIKI KAISHA vs. COURT OF APPEALS 

G.R. No. 120900, July 20, 2000 

FACTS:

            On January 15, 1985, private respondent NSR Rubber Corporation filed an application for registration of the mark CANON for sandals in the Bureau of Patents, Trademarks, and Technology Transfer (BPTTT). Canon Kabushiki Kaisha filed a Verified Notice of Opposition alleging that it will be damaged by the registration of the trademark CANON in the name of private respondent since they were using the same trademark for their footwear line of products.  The private respondent will also use the name Canon for its footwear products.

Based on the records, the evidence presented by petitioner consisted of its certificates of registration for the mark CANON in various countries covering goods belonging to class 2, paints, chemical products, toner, and dye stuff. Petitioner also submitted in evidence its Philippine Trademark Registration No. 39398, showing its ownership over the trademark CANON.

The BPTTT, on November 10, 1992, issued its decision dismissing the opposition of petitioner and giving due course to NSR's application for the registration of the trademark CANON. Canon Kabushiki Kaisha filed an appeal with the Court of Appeals that eventually affirmed the decision of the BPTTT.

ISSUE:

            Is the use of trademark, CANON, by the private respondent affects the business of Canon Kabushiki Kaisha who has an existing ownership of a trademark also known as CANON?

HELD:

            The Supreme Court says that ordinarily, the ownership of a trademark or tradename is a property right that the owner is entitled to protect as mandated by the Trademark Law. However, when a trademark is used by a party for a product in which the other party does not deal, the use of the same trademark on the latter's product cannot be validly objected to.

            The BPTTT correctly ruled that since the certificate of registration of petitioner for the trademark CANON covers class 2 (paints, chemical products, toner, dyestuff), private respondent can use the trademark CANON for its goods classified as class 25 (sandals). Clearly, there is a world of difference between the paints, chemical products, toner, and dyestuff of petitioner and the sandals of private respondent.

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