Republic of the Philippines
SUPREME COURT
Manila
EN BANC
G.R. No. L-6235 March 28, 1955
ONG AI GUI alias TAN AI GUI, applicant-petitioner,
vs.
the Director of the Philippines Patent Office, respondent.
E. I. DU PONT DE NEMOURS AND COMPANY, intervenor.
Jose P. Laurel for petitioner.
Solicitor General Juan R. Liwag and Solicitor Pacifico P. de Castro for respondent.
J. A. Wolfson for intervenor.
LABRADOR, J.:
On November 8, 1948, Ong Ai Gui alias Tan Ai
Gui filed an application (No. 803) with the Director of Patents for the
registration of the following trade-name: "20th Century Nylon Shirts
Factory." It is stated in connection with the application that the
trade-name was used for the first time by the applicant on September 12,
1941 for his business described as follows: "General merchandise
dealing principally in textiles, haberdasheries; also operating as
manufacturer of shirts, pants and other men's and woman's wears." Upon
the filing of the application, the same was referred by the Director to
an examiner. The latter in a report dated August 18, 1950 held that the
words "shirts factory" are not registrable; so the applicant made a
disclaimer of said words (shirts factory) inserting a statement to that
effect in his original application. On August 13, 1951 the Director
ordered the publication of the trade-name in the official Gazette.
Publication was made but before the expiration of the
period for filing opposition, Atty. J. A. Wolfson, on behalf of E. I.
De Pont de Nemours and Company, presented on February 27, 1952, an
opposition on the ground that the word "nylon" was a name coined by E.
I. Du Pont de Nemours and Company as the generic name of a synthetic
fabric material, invented, patented, manufactured and sold by it and
that this word is a generic term; that the use of the name "nylon" is
descriptive or deceptively misdescriptive of the goods, business of
manufactures of the applicant; that the use of the name would produce
confusion in trade and would deceive the public; and that "nylon" is not
distinctive of applicant's goods; business and manufactures and
applicant does not claim that it has so become. This opposition,
however, was dismissed by the Director on the ground that at the time it
was submitted Atty. J. A. Wolfson did not have, nor did he submit,
authority to file it (opposition) in the corporate name, and that the
subsequent authorization from the corporation to that effect did not
cure the general defect in the opposition.
But while he dismissed the opposition, the Director
ruled that the application must be disapproved unless the word "nylon"
is also disclaimed. The grounds for the disapproval of the application
were as follows:
"Nylon" is merely descriptive of the business of
shirt-making if the shirts are made of nylon. It is deceptively
misdescriptive of said business, if the shirts are not made of nylon. In
either case, its registration in the Principal Register as a
trade-name, or as a part of a trade-name, is expressly forbidden by
subsection (e) of Section 4 of Republic Act No. 166, as amended by
Section 2 of Republic Act No. 638.
x x x x x x x x x
But even if the trade-name here in question were
applied for under the said subsection (f), "Nylon" would still have to
be disclaimed. Used in connection with shirt-making, "Nylon" can never
become distinctive, can never acquire secondary meaning, because it is a
generic term, like cotton, silk, linen, or ramie. Just as no length of
use and no amount of advertising will make "cotton," "silk," "linen," or
"ramie," distinctive of shirts or of the business of making them, so no
length of use and no amount of advertising will make "nylon"
distinctive of shirts or of the business of manufacturing them."
Again the above decision applicant has filed an
appeal to this Court. During the pendency of this appeal, E. I. Du Pont
de Nemours and Co. filed a petition to intervene, which petition was
granted. It has also, through counsel, filed a brief answering the
arguments of the applicant-appellant and supporting the decision
appealed from.
There are two main questions raised in the appeal,
one legal and the other procedural. The legal question is put up by the
claim of the applicant-appellant that while he admits that the term
"nylon" is by itself alone descriptive and generic, what he desires to
register is not the said word alone but the whole combination of "20th
Century Nylon Shirts Factory." It is to be noted in answer to this
contention that the Director of Patents has not completely denied the
registration of the whole trade-name. He has made a conditional denial
only, permitting the registration of the name but with the disclaimer of
the terms "shirt factory" and "nylon." The import of the decision is
that the trade-name may be registered, but applicant-appellant may not
be entitled to the exclusive use of the terms "shirts factory" and
"nylon" as against any other who may subsequently use the said terms, juris publici, incapable of appropriation by any single individual to the exclusion of others. This is supported by reason and authority.
A word or a combination of words which is merely
descriptive of an article of trade, or of its composition,
characteristics, or qualities, cannot be appropriated and protected as a
trademark to the exclusion of its use by others. The reason for this is
that inasmuch as all persons have an equal right to produce and vend
similar articles, they also have the right to describe them properly and
to use any appropriate to himself exclusively any word or expression,
properly descriptive of the article, its qualities, ingredients, or
characteristics, and thus limit other persons in the use of language
appropriate to the description of their manufactures, the right to the
use of such language being common to all. This rule excluding
descriptive terms has also been held to apply to trade-names. As to
whether words employed fall within this prohibition, it is said that the
true test is not whether they are exhaustively descriptive of the
article designated, but whether in themselves, and as they are commonly
used by those who understand their meaning, they are reasonably
indicative and descriptive of the thing intended. If they are thus
descriptive, and not arbitrary, they cannot be appropriated from general
use and become the exclusive property of anyone. (52 Am. Jur. 542-543.)
.
. . . If the trade-name consists of a descriptive
word, no monopoly of the right to use the same can be acquired. This is
but a corollary of the proposition that a descriptive word cannot be the
subject of a trade mark. G. & C. Merriam Co. vs. Salfield (C. C.
A.) 198, 369. Other may use the same or similar descriptive word in
connection with their own wares, provided they take proper steps to
prevent the public being deceived. . . . (Richmond Remedies Co. vs. Dr.
Miles Medical Co., 16 E. (sd) 598.)
. . . The so-called descriptive terms, which may be
used to described the product adequately, can not be monopolized by a
single user and are available to all. It is only natural that the trade
will prefer those marks which bear some reference to the article itself.
Therefore, even those descriptive marks which are distinctive by
themselves can be appropriated by others with impunity. A descriptive
word may be admittedly distinctive, especially if the user is the first
creator of the article. It will, however, be denied protection, not
because it lacks distinctiveness, but rather because others are equally
entitled to its use. . . (2 Callman. Unfair Competition and Trade Marks,
pp. 869-870.)
The claim that a combination of words may be
registered as a trade-name is no justification for not applying the
rules or principles hereinabove mentioned. The use of a generic term in a
trade-name is always conditional, i. e., subject to the limitation that
the registrant does not acquire the exclusive right to the descriptive
or generic term or word.
. . . A combination of marks or words may constitute a
valid trademark or (in the case of words) a tradename even though some
of the constituent portions thereof would not be subject, separately, to
exclusive appropriation as such. Thus, although a word may be
descriptive and not subject to exclusive use as a trademark, it may
properly become the subject of a trademark by combination with another
word or term which is nondescriptive, although no exclusive right to
then descriptive word or term id created . . . (52 Am. Jur. 553.)
The citation of appellant himself supports the
decision thus: ". . . although perhaps not entitled to protection
against infringement by the use of the descriptive matter by another."
(Frost vs. Rindskopt, 42 Fed. 408.)
It must also be noted that no claim is made in the
application that the trade-name sought to be registered has acquired
what is known as a secondary meaning within the provisions of paragraph
(f) of section 4 of Republic Act No. 166. All that the applicant
declares in his statement accompanying his application is that the said
trade-name has been continuously used by it in business in the
Philippines for about seven years, without allegation or proof that the
trade-name has become distinctive of the applicant's business or
services. Furthermore, the use of the term "nylon" in the trade-name is
both "descriptive" and "deceptively and misdescriptive" of the
applicant-appellant's business, for apparently he does not use nylon in
the manufacture of the shirts, pants and wears that he produces and
sells. How can a secondary meaning be acquired if appellant's products
are not made of nylon? Certainly no exclusive right can be acquired by
deception of fraud.
The procedural question arises from the fact that
after the Director had ordered publication and notwithstanding dismissal
of an opposition, the Director nevertheless conditionally denied the
application after its publication and failed to give applicant
opportunity for a hearing, as specifically required by section 7 of
Republic Act No. 166.
It is argued that after approval of the findings of
the commissioner to whom the application id referred and giving of the
order of publication, it becomes the ministerial duty of the Director to
issue the corresponding certificate of registration and that his power
is confined to this issuance alone. The answer to this argument is the
fact that the law allows oppositions to be filed after publication,
thus:
Sec. 8. Opposition. — Any person who believes
that he would be damaged by the registration of a mark or trade-name
may, upon payment of the required fee and within thirty days after the
publication under the first paragraph of section seven hereof, file with
the Director an opposition to the application. Such opposition shall be
in writing and verified by the oppositor, or by any person on his
behalf who knows the facts, and shall specify the grounds on which it is
based and include a statement of the facts relied upon. Copies of
certificates of registration of marks or trade-names registered in other
countries or other supporting documents mentioned in the opposition
shall be filed therewith, together with the translation thereof into
English, if not in the English language. For good cause shown and upon
payment of the required surcharge, the time for filing an opposition may
be extended for an additional thirty days by the Director, who shall
notify the applicant of such extension. (Republic Act No. 166.)
Of what use is the period given to oppositors to
register their oppositions if such oppositions are not to be given
consideration at all, because the Director has only the ministerial duty
after publication to issue the certificate of registration; the first
is that conducted in the Office of the Director and taking place prior
to publication, and the second, that conducted after publication, in
which the public is given the opportunity to contest the application. In
the first, the application is referred to an examiner, who, after study
and investigation makes a report and recommendation to the Director
who, upon finding that applicant is entitled to registration, orders
publication of the publication. (Sec. 7, Rep. Act No. 166.) If he finds
that applicant is not entitled to registration, he may then and there
dismiss the application. In the second, opportunity is offered the
public or any interested party to come in and object to the petition
(Sec. 8, Id.), giving proofs and reasons for the objection,
applicant being given opportunity also to submit proofs or arguments in
support of the application. (Sec. 9, Id.) It is the decision of
the Director, given after this hearing, or opportunity to every
interested party to be heard, that finally terminates the proceedings
and in which the registration is finally approved or disapproved.
Thereafter, notice of the issuance of the certificate of registration is
published. (Sec. 10, Id.)
It is evident that the decision of the Director after
the first step, ordering publication, can not have any finality. Of
what use is the second step in the proceedings, if the Director is bound
by his first decision, giving course to the publication? His first
decision is merely provisional, in the sense that the application
appears to be meritorious and is entitled to be given course leading to
the more formal and important second step of hearing and trial, where
the public and interested parties are allowed to take part.
The argument that the Director failed to comply with
paragraph 2 of section 7, Republic Act No. 166 cannot be raised in the
case at bar, because the Director did not find that the applicant is not
entitled to registration. He actually found that he is entitled to
registration and that is why an order for the publication of the
application was issued. How can the Director comply with the provisions
of said paragraph 2 if he did not disapprove the applicant's petition
for registration?
We, therefore, find that the errors assigned in the
appeal have not been committed id hereby respondent Director of Patents.
His decision is hereby affirmed, with costs against the
applicant-appellant.
Paras, C. J., Pablo, Bengzon, Padilla, Reyes, A., Jugo, Bautista Angelo, Concepcion, and Reyes, J. B. L., JJ., concur.
The Lawphil Project - Arellano Law Foundation
No comments:
Post a Comment