Supreme Court: registration creates only prima facie presumption of ownership

In November 2013 the Philippines Supreme Court decided a case in favour of the petitioner, German corporation Birkenstock Orthopaedie GmbH and Co KG, holding that the latter was the true and lawful owner of the mark BIRKENSTOCK and was thus entitled to its registration.

Birkenstock filed trademark applications for several graphic variants of the BIRKENSTOCK mark. There were, however, prior similar marks. Philippine Shoe Expo Marketing Corporation filed oppositions against the applications, alleging that its predecessor-in-title, Shoe Town International and Industrial Corporation, had used the BIRKENSTOCK (and device) mark for more than 16 years. The mark had been cancelled due to a failure to file the required 10th-year declaration of use, but Shoe Expo argued that it had continued to use the mark despite the failure to file the required declaration of use.

Ruling in favour of Birkenstock, the Supreme Court held that it had established its true and lawful ownership of the mark BIRKENSTOCK. Birkenstock had submitted evidence relating to the origin and history of the mark and its use in commerce long before Shoe Expo had registered its mark in the Philippines. BIRKENSTOCK was first adopted in 1774 by its inventor Johann Birkenstock. On the contrary, Shoe Expo presented only its cancelled registration for BIRKENSTOCK (and device), sales invoices and advertisements. The court thus held that Shoe Expo’s evidence did not conclusively prove ownership, as it merely showed Shoe Expo’s transactions.

The court rationalised that registration, by itself, is not a mode of acquiring ownership. It merely creates a prima facie presumption, which must give way to contrary evidence. The court further held that it is not the application or registration that vests ownership of the mark, but it is the ownership of the trademark that confers the right to register the same. Hence, the prima facie presumption brought about by the registration of the mark may be defeated by evidence of prior use by another, as a trademark is a creation of use and belongs to the one who first used it in trade.

Nick Redfearn, Rouse, Indonesia