Laticrete International, Inc. vs. Laticrete Phils., Inc.

September 29, 2014 SEC CASE NO. 05-14-431 LATICRETE INTERNATIONAL, INC., petitioner, vs. LATICRETE PHILS., INC., respondent . DECISION Before us is a Petition for Change of Corporate Name filed on May 16, 2014 by petitioner Laticrete International, Inc. against respondent Laticrete Phils., Inc. The relevant facts as culled from the records are as follows: The petitioner alleges that it is a foreign corporation duly incorporated in the State of Connecticut, United States of America, and is a world-wide manufacturer and marketer of globally-proven construction solutions used in commercial, industrial and residential applications. To this end, petitioner alleges that its corporate name and trademark are internationally well-known and duly registered in different countries, including the Philippines. According to the petitioner, it is the registered trademark owner of the name "LATICRETE" under Trademark Registration No. 055695 with the Intellectual Property Office of the Philippines, filed on October 8, 1991, and registered on July 23, 1993, and likewise has another trademark application for its mark "LATICRETE" under application No. 4-2013-012177 filed on October 8, 2013. Petitioner further alleges that when it tried to register the name "Laticrete International, Inc." with the Commission, the name of respondent "Laticrete Phils. Inc." came about. Finally, petitioner alleges that as culled in the General Information Sheets of respondent for the years 1992 and 1993, respondent was registered as a corporation on April 17, 1991 with SEC Registration No. 0000189500. Respondent alleges in its Answer filed on June 13, 2014 that it registered the name "LATICRETE" in good faith, as it had an agreement with the petitioner as to the use of the latter's name, in furtherance of respondent's role as distributor of Laticrete products for the petitioner, as evidenced by a letter and a Distributor Agreement to that effect. Considering that petitioner transacted with the respondent, the former cannot deny the corporate existence of the latter. However, respondent alleges that it has long ceased its operations way back in 1993, and its Certificate of Registration that was subsequently revoked by the Commission on August 20, 2003 was never revived, as respondent has no interest in using its corporate name and is willing to forego its use in favor of the petitioner. During the Preliminary Conference held on July 22, 2014, the parties filed a Joint Motion to Issue Judgment based on a Compromise Agreement 1 in order to settle this case. Thus, the parties jointly moved that judgment be rendered in accordance with the terms of the Compromise Agreements. The pertinent provisions of the Compromise Agreements read as follows: TcEAIH "1. The Parties have voluntarily and amicably settled their differences and that both Parties move for judgment to be issued in the instant Petition for Corporate Name on the basis of the following terms and conditions, to wit: "1.1. Respondent acknowledges that Petitioner is a global manufacturer and marketer of construction solutions, and that petitioner is the owner of the internationally well-known trademark "LATICRETE." "1.2. Respondent discontinued doing business in 1993 and has not filed any petition to lift the revocation order with the Securities and Exchange Commission ("SEC"); "1.3. Respondent has no intention of reviving its registration with the SEC and does not wish to use its corporate name; "1.4. Respondent consents to the use of the Petitioner of the corporate name "LATICRETE PHILS., INC." "1.5. Respondent undertakes not to use the trademark "LATICRETE" in any manner or form or for whatever purpose, without the written consent of Petitioner. "2. The Parties, in good faith, undertake to honor its Compromise Agreement; "3. Pursuant to this Compromise Agreement, parties jointly move for judgment to be issued in this instant Petition for Change of Corporate Name based on the foregoing." WHEREFORE, finding the foregoing Compromise Agreement dated July 22, 2014 to be in order and not contrary to law, public policy, morals or good customs, judgment is hereby rendered APPROVING the same. The parties are enjoined to faithfully comply with the terms and conditions of their Compromise Agreement. Let the Company Monitoring and Registration Department be furnished a copy of this Decision for its appropriate action. SO ORDERED. Mandaluyong City, September 29, 2014. (SGD.) CAMILO S. CORREA General Counsel Footnotes 1. Copies of which are attached and made integral part of said Motion.