II. PATENTS 1. PATENTABLE INVENTIONS Aguas vs. De Leon 111 SCRA 238 (1982) FACTS: This is a petition for certiorari to review the decision of the Court of Appeals. On April 14, 1962, respondent Conrado de Leon filed in the CFI of Rizal at Quezon City a complaint for infringement of patent against petitioner Domiciano Aguas and F.H. Aquino and Sons alleging among others that being the original first and sole inventor of certain new and useful improvements in the process of making mosaic pre-cast tiles, and thereafter lawfully acquired from the Philippine Patent Office, Patent No. 658, the latter infringed the same by making, using and selling tiles embodying said patent invention. A writ of Preliminary Injuction was subsequently issued. Petitioner Aguas, in his answer, denied the allegations and instead averred inter alia that respondent De Leon is neither the original first nor sole inventor of the improvements in the process of making mosaic pre-cast t iles, the same having been used by several tile-making factories both here and abroad years before the alleged invention by De Leon; hence, it is not patentable. The trial court and the Court of Appeals, upon appeal rendered judgment in favor of respondent de Leon. Thus, this petition. ISSUE: Whether or not the alleged invention or discovery of respondent is patentable. HELD: Yea. x x x It should be noted that the private respondent does not claim to be the discoverer or inventor of the old process of tile-making. He only c laims to have introduced an improvement of said process. In fact, Letters Patent No. 658 was issued by the Philippine Patent Office t o the private respondent Conrado G. De Leon, to protect protec t his rights as the inventor of “ an alleged new and useful improvement in the process of making pre- cast tiles.” Indeed, section 7,
Republic Act No. 165, as amended provides: “ Any invention of a new and useful machine, manufactured product or substance, process, or an improvement of the foregoing, shall be patentable.” 3. REQUIREMENTS ANGEL VARGAS VARGAS vs F. M. YAPTICO YAPTICO & CO. (Ltd.) CO. (Ltd.) G.R. No. 14101, September 24, 1919 Facts: Plaintiff Angel Vargas, a farmer, was issued patents by the United States Patent Office for his so-called invention of an improved adjustable plow with the use his own native plow. A certified copy of the patent was filed in the Division of Patents, Copyrights, and Trademarks of the Executive Bureau, Government of the Philippine Islands. Defendant F. M. Yaptico & Co. (Ltd.), a firm engaged in the foundry business in Iloilo City, was a manufacturer of plow parts. I t produced points, shares, shoes, and heel pieces in a considerable amount adapted to replace worn-out parts of the Vargas plow. Vargas filed a case in the Court of First Instance of Iloilo to enjoin the alleged infringement of his U.S. Patent by the defendant F. M Yaptico & Co. (Ltd.), and to recover the damages suffered by reason of this infringement, to which the court issued the preliminary injunction prayed for. The defendant denied the allegations and defended that the patent lacked novelty or invention, that there was no priority of ideas or device in the principle and construction of the plow, and that the plow, whose manufacture it was sought to have enjoined by the plaintiff, had already been in public use for more than two years before the application of the plaintiff for his patent. The trial judge rendered judgment in favor of the defendant, declaring null and without effect the patent in question and dismissing the suit with costs against the plaintiff. Hence, the plaintiff appealed said judgment. Issues: 1. Whether the patented invention is void for lack of novelty and invention? 2. Whether the patent is invalid considering that the plow had already been in
public use for over two years prior to the application for a patent. Ruling: 1. Yes, the patent if void. The Supreme Court affirmed the trial court’s conclusion that the plow of the plaintiff is not different from the native plow, except in the material, in the form, in the weight and the grade of the result, the said differences giving it neither a new function nor a new result distinct from the function and the result obtained from the native plow. Also, its production does not presuppose the exercise of the inventive faculty but merely of mechanical skill, which does not give a right to a patent of an invention under the provisions of the Patent Law.
Doctors’ Pharmaceuticals Inc. filed a petition with the Director of Patents requesting the Director to grant a compulsory license. After careful evaluation and hearings, the Director granted the request of Doctors’ Pharmaceuticals.
ISSUE: Is the decision of the Director of Patents in granting Doctor’s Pharmaceutical Inc. compulsory license to use the substance chloramphenicol, valid?
HELD: 2. Yes, the patent is void. Under the provisions of the statute, an inventor's creation must not have been in public use or on sale in the United States (and the Philippine Islands) for more than two years prior to his application. Further, it was proved that the invention was used in public at Iloilo by others than Vargas, the inventor, more than two years before the application for the patent thus, the patent is invalid.
Yes the decision of the Director of Patents in granting Doctor’s Pharmaceutical Inc. compulsory license to use the substance chloramphenicol is valid. The Supreme Court says that patents issued to foods and medicines are not exclusive so as not to prevent the building up of patent monopolies. Public benefit is foremost. The Court dismissed the c ontention of Parke Davies that the Director of Patents erred in granting compulsory license. The decision appealed from is affirmed, with costs against petitioner.
4. LICENSING 5. INFRINGEMENT PARKE DAVIS and COMPANY vs. DOCTORS' PHARMACEUTICALS, INC., ET AL. G.R. No. L-22221, August 31, 1965 FACTS: Parke Davies and Company is an owner of a Patent entitled "Process for the Manufacturing of Antibiotics" (Letters Patent No. 50) which was issued by the Philippine Patent Office on February 9, 1950. The patent relates to a chemical compound represented by a formula commonly called chloramphenicol. The patent contains ten claims, nine of which are process claims, and the other is a product claim to the chemical substance chloramphenicol. Doctors’ Pharmaceuticals Inc. requested that it be granted a voluntary l icense to manufacture and produce our own brand of medicine, containing chloramphenicol, and to use, sell, distribute, or otherwise dispose of the same in the Philippines under such terms and conditions as may be deemed reasonable and mutually satisfactory, which Parke Davies declined.
Pearl & Dean (Phil), Inc. vs Shoemart, Inc. Pearl & Dean (Phil), Inc. is a corporation engaged in the manufacture of advertising display units called light boxes. In January 1981, Pearl & Dean was able to acquire copyrights over the designs of the display units. In 1988, their trademark application for “Poster Ads” was approved; they used the same trademark to advertise their light boxes. In 1985, Pearl & Dean negotiated with Shoemart, Inc. (SM) so that the former may be contracted to install light boxes in the ad spaces of SM. Eventually, SM rejected Pearl & Dean’s proposal. Two years later, Pearl & Dean received report that light boxes, exactly the same as theirs, were being used by SM in their ad spaces. They demanded SM to stop using the light boxes and at the same time asked for damages amounting to P20 M. SM refused to pay damages though they removed the light boxes. Pearl & Dean eventually sued SM. SM argued that it did not infringe on Pearl & Dean’s trademark because Pearl & Dean’s trademark is only applicable to envelopes and stationeries and not to the type of ad spaces owned by SM. SM also averred that “Poster Ads” is a g eneric term hence it is not subject t o trademark
registration. SM also averred that the actual light boxes are not copyrightable. The RTC ruled in favor of Pearl & Dean. But the Court of Appeals ruled in favor of SM. ISSUE: Whether or not the Court of Appeals is correct. HELD: Yes. The light boxes cannot, by any stretch of the imagination, be considered as either prints, pictorial illustrations, advertising copies, labels, tags or box wraps, to be properly classified as a copyrightable; what was copyrighted were the technical drawings only, and not th e light boxes themselves. In other cases, it was held that there is no copyright i nfringement when one who, without being authorized, uses a copyrighted architectural plan to construct a structure. This is because the copyright does not extend to the structures themselves. On the trademark infringement allegation, the words “Poster Ads” are a simple contraction of the generic term poster advertising. In the absence of any convincing proof that “Poster Ads” has acquired a secondary meaning in this jurisdiction, Pearl & Dean’s exclusive right to the use of “ Poster Ads” is limited to what is written in its certificate of registration, namely, stationeries.
The trial court found the defendant “not guilty” of contempt as charged; and this court, on appeal, held that “ The violation, if there has been any, was not of such a character that it could be made patent by the mere annunciation of the acts performed by the defendant, which are alleged to constitute the said violation. Consequently, the contempt with which the accused is c harged has not been fully and satisfactorily proved, and the order appealed from should accordingly be affirmed in so far as it holds that the def endant is not guilty of contempt. Substantially, the same question is submitted in these new proceedings as that submitted in the former case. ISSUE: Whether the use of a patented process by a third person, without license or authority therefore, constitutes an infringement when the alleged infringer has substituted in lieu of some unessential part of the patented process a wellknown mechanical equivalent. HELD:
CARLOS GSELL vs. VALERIANO VELOSO YAP-JUE FACTS: The principal case to which these proceedings are ancillary, was an action to enjoin infringement of a patented process for manufacture of curved handles for canes, parasols, and umbrellas. In that case, plaintiff established his title to a valid patent covering the process in question, and obtained against this defendant a judgment, granting a perpetual injunction restraining its infringement, which judgment was affirmed by this Court on appeal. The order was couched in the following terms: “It is ordered that the defendant abstain from manufacturing canes and umbrellas with a curved handle by means of a lamp or blowpipe fed with mineral oil or petroleum, which process was protected by patent no. 19288, issued in favor of Henry Gsell, and by him transferred to Carlos Gsell”. Thereafter the defendant continued to manufacture curved cane handles for walking sticks and umbrellas by a process in all respects identical with that used by the plaintiff under his patent, except only that he substituted for a lamp fed with petroleum or mineral oil, a lamp fed with alcohol.
Counsel for plaintiff invokes the doctrine o f “mechanical equivalents” in support of his contention, and indeed that doctrine is applicable to the facts of the case. This doctrine is founded upon sound rules of reason and logic, and unless restrained or modified by law in particular jurisdiction, is of universal application, so that it matters not whether a patent be issued by one sovereignty or another, the doctrine may properly be invoked to protect the patentee from colorable invasions of his patent under the guise of a substitution of some part of his invention by some well-known mechanical equivalent. The use of a process in all respects identical with a process protected by a valid patent, save only that a well-known mechanical equivalent is substituted in lieu of some particular part of the patented process is an infringement upon the rights of the owner of the patent, which will be enjoined in appropriate proceeding, and the use of such process, after the order enjoining its use has been issued, is a “contempt”, under the provision of sec tion 172 of the Code of Civil Procedure.
Smith Kline Beckman Corporation vs Court of Appeals Smith Kline is a US corporation licensed to do business in the Philippines. In 1981, a patent was issued to it for its invention entitled “Methods and Co mpos itions for Producing Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2Benzimidazole Carbamate.” The invention is a means to fight off gastrointestinal parasites from various cattles and pet animals. Tryco Pharma is a local corporation engaged in the same business as Smith Kline. Smith Kline sued Tryco Pharma because the latter was selling a veterinary product called Impregon which contains a drug called Albendazole which fights off gastro-intestinal roundworms, lungworms, tapeworms and fluke infestation in carabaos, cattle and goats. Smith Kline is claiming that Albendazole is covered in their patent because it is substantially the same as methyl 5 propylthio-2-benzimidazole carbamate covered by its patent since both of them are meant to combat worm or parasite infestation in animals. And that Albendazole is actually patented under Smith Kline in the US. Tryco Pharma averred that nowhere in Smith Kline’s patent does it mention that Albendazole is present but even if it were, th e same is “unpatentable”. Smith Kline thus invoked the doctrine of equivalents, which implies that the two substances substantially do the same function in substantially the same way to achieve the same results, thereby making them truly identical for in spite of the fact t hat the word Albendazole does not appear in Tryco Paharma’s letters of patent, it has ably shown by evidence its sameness with methyl 5 propylthio-2benzimidazole carbamate. ISSUE: Whether or not there is patent infringement in this case HELD: No. Smith Kline failed t o prove that Albendazole is a compound inherent in the patented invention. Nowhere in the patent is the word Albendazole found. When the language of its claims is clear and distinct, the patentee is bound thereby and may not claim anything beyond them. Further, there was a separate patent for Albendazole given by the US which implies that Albendazole is indeed separate and distinct from the patented compound here. A scrutiny of Smith Kline’s evidence fails to prove the substantial sa meness of the patented compound and Albendazole. While both compounds have the effect of neutralizing parasites in animals, identity of result does not amount to infringement of patent unless Albendazole operates in substantially the same
way or by substantially the same means as the patented compound, even though it performs the same function and achieves the same result. In other words, the principle or mode of operation must be the same or substantially the same. The doctrine of equivalents thus requires satisfaction of t he function-means-andresult test, the patentee having the burden to show that all t hree components of such equivalency test are met.
PATRICK HENRY FRANK and WILLIAM HENRY GOHN vs. CONSTANCIO BENITO G.R. No. L-27793, March 15, 1928 FACTS: Plaintiffs are the owners of a patent covering hemp-stripping machine No. 1519579 issued to them by the United States Patent Office and duly registered in the Bureau of Commerce and Industry of the Philippine Islands under the provisions of Act No. 2235 Plaintiffs allege that the defendant manufactured a hemp-stripping machine in which, without authority from the plaintiffs, and has embodied and used such spindles and their method of application and use, and is exhibiting his machine to the public for the purpose of inducing its purchase. Frank and Gohn stress that use by the Benito of such spindles and the principle of their application to the stripping of hemp is in violation of, and in conflict with, plaintiffs' patent, together with its conditions and specifications. Plaintiffs assert the violation of infringement upon the patent granted to Frank & Gohn, and requested that an action for injunction and damages be instituted against Benito. Respondent on the other hand contends that it had no prior knowledge of the prior existence of the hemp-stripping invention of the plaintiffs nor had any intent to imitate the Frank’s product. Likewise, the defendant contended that the facts alleged therein do not constitute a cause of action, that it is ambiguous and vague. The lower court rendered judgment in favor of the plaintiffs, to which was later affirmed by the appellate court. HELD: As a rule, the burden of proof to substantiate a charge of infringement is with the plaintiff. Where, however, the plaintiff introduces the patent in evidence, if it is in due form, it affords a prima facie presumption of its correctness and validity. The decision of the Commissioner of Patents in granting the patent is always presumed to be correct. The burden the shifts to the defendant to overcome by competent evidence this legal presumption.
The patent in the case at bar, having been introduced in evidence, affords a prima facie presumption of its correctness and validity. Hence, this is not a case of a conflict between two different patents. In the recent of T emco Electric Motor Co. vs. Apco Mfg. Co., decided by the Supreme Court of the United States ruled “an improper cannot appropriate the basic patent of another, and if he does so without license is an infringer, and may be used as such. It is well established that an improver cannot appropriate the basic patent of another and that the improver without a license is an infringer and may be sued as such.” III. UTILITY MODELS 1. PRACTICAL UTILITY GERARDO SAMSON, JR vs. FELIPE TARROZA and DIRECTOR OF PATENTS, With the statutory recognition of patentability based on the "practical utility" concept 1 thus rendering clear that a patent is not solely to be earned under the "flash of genius" theory, 2 this petition for the cancellation of a utility model patent for a Side Tilting-Dumping Wheelbarrow granted to respondent Felipe A. Tarroza was correctly denied by respondent Director of Patents. Petitioner Gerardo Samson, Jr., himself the grantee of a utility model patent for a Dumping and Detachable Wheelbarrow, lacked any legal justification for such a plea. So respondent Director ruled. Not satisfied, petitioner elevated the matter to us for review. There is no reason why a different outcome is to be expected. His appeal must fail. Petitioner was, on May 22, 1958, awarded Utility Model Patent No. 27 for the above type of wheelbarrow which, as noted in the decision, "consists of a wheeled carriage base and an upper pivoted and detachable carrying tray. The carriage base is comprised of a wheel and two equal lengths of continuous pipes bent to provide wheel forks at the front and at the rear to support the back portion of the tray, with the ends of the pipes being adopted as the carrying handles for the wheelbarrow. The two pipes thus b ent are joined together by cross braces in the front and at the rear. The t ray is removably pivoted at its front end through hook catches at its bottom corners, to the forward cross brace, and its rear end rests solidly over the rear portion of the legs. To dump the load the user pulls a dumping handle at the back end to cause the tray to pivot upwardly about the front brace to a position of about 45 degrees with the horizontal and with its front end panel being supported by the wheel." 3 Respondent's Side Tilting-Dumping Wheelbarrow, on the other hand, consists "of a wheeled carriage made of tubular frames essentially as in petitioner's. Welded
transversely to the parallel frames are two brackets provided with holes designed to complement similar holes on brackets provided on the tray. The brackets on the tray are so placed that with the provision of a bolt through the openings the tray may be tilted approximately 170 degrees to the left or to the right of the wheelbarrow with its axis running longitudinally through the center of the bottom face of the tray." 4 There is an express recognition under the Patent Law, as already noted, that any new model of implements or tools or of any industrial product even if not possessed of the quality of invention but which is of "practical utility" is entitled to a "patent for a utility model." From the above description of the side tiltingdumping wheelbarrow, the product of respondent's ingenuity and industry, it is quite apparent that it has a place in the market and possesses what the statute refers to as "practical utility." The requirement explicitly set forth in the statute has thus been met. Respondent Tarroza is entitled to its benefits. The grant to him of a patent for a utility model is in accordance with law. There was no reason, therefore, for its cancellation. So it was held by the Director of Patents. That decision as already noted should stand. Moreover, in appeals from a decision of the Director of Patents, only questions of law may be reviewed, findings of facts being conclusive unless unsupported by substantial evidence. So it was decided in Che v. Philippines Patent Office. 5 As was emphasized in Bagano v. Director of Patents: "It is almost trite to state here that in cases of the nature as the one at bar, only questions of law are to be raised in order that this Court could exercise its appellate jurisdiction and review the decision." 6 The above well-settled doctrines suffice to demonstrate that this petition for review, as noted at the outset, is without merit. It was not error then, to reiterate, for the respondent Director of Patents to deny the cancellation of the utility patent granted respondent Tarroza. To borrow from the language of the Che opinion: "Even on the sole issue alone, the petition for review must fail." Another alleged error was imputed to respondent Director of Patents. It would find fault with his failing to hold that respondent Tarroza "was not the true and actual" author of the mechanical contrivance for which he was granted a utility model patent. This is what the appealed decision has to say on this point: "Petitioner's theory with respect to the second ground for cancellation, to wit: that respondent is not the true and actual inventor or designer of the utility model is premised on the fact that because of the proximity of the two, the petitioner and the respondent being brothers-in-law, and living in adjoining residential lots, the latter has had ample time and opportunity to observe and copy the former's wheelbarrow. But the testimonial evidence thus presented is not clear, satisfactory, and free from doubt, in the face of allegations to the contrary by the
respondent." 7 The futility of such an assignment of error is thus apparent. Again, it is factual in character. It is not for us, as noted above, to review or revise the same, there being no showing of a lack of substantial evidence in support thereof. WHEREFORE, the decision of April 13, 1962 of respondent Director of Patents denying the petition for the cancellation of Utility Model Letters Patent No. 62 in favor of respondent Tarroza is hereby affirmed. With costs against petitioner.
January 18, 2017 G.R. No. 186967 DIVINA PALAO, Petitioner vs. FLORENTINO INTERNATIONAL, INC., Respondent
Samson vs. Tarroza 28 SCRA 792 (1969)
DECISION
FACTS:
LEONEN, J.:
This is an appeal from a decision of the Director of Patents denying the petition for the cancellation of Utility Model Letters Patent No. 62 in favor of respondent Felipe Tarroza for his Side Tilting-Dumping Wheelbarrow.
This resolves a Petition for Review on Certiorari 1 filed by petitioner Divina Palao (Palao) praying that the assailed January 8, 2009 Decision2 and the March 2, 2009 Resolution3 of the Court of Appeals in CA-G.R. SP No. 105595 be reversed and set aside.
Petitioner Gerardo Samson, Jr was also a prior grantee of Utility Model Patent No. 27 for a Dumping and Detachable Wheelbarrow, which he claims to have been infringed by the respondent, they being neighbors. ISSUE: Whether or not respondent’s Utility Model Patent deserves cancellation. HELD: No. There is an express recognition under the Patent Law that any new model of implements or tools or of any industrial product even i f not possessed of the quality of invention but which is of “practical utility” is entitled to a “patent for a utility model: From the description of the side of tilting-dumping wheelbarrow, the product of ingenuity and industry, it is quite apparent that it has a place in the market and possesses what the statute refers to as “practical utility.”
In its assailed Decision, the Court of Appeals reversed and set aside the September 22, 2008 Order4 of Intellectual Property Office Director General Adrian S. Cristobal, Jr. and reinstated respondent Florentino III International, Inc.'s (Florentino) appeal from Decision No. 2007-31,5 dated March 5, 2007, of the Bureau of Legal Affairs of the Intellectual Property Office. Decision No. 2007-31 denied Florentino's Petition for Cancellation of Letters Patent No. UM-7789, which the Intellectual Property Office had issued in favor of Palao. 6 Letters Patent No. UM-7789 pertained to "A Ceramic Tile Installation on NonConcrete Substrate Base Surfaces Adapted to Form Part of Furniture, Architectural Components and the Like."7 In its Petition for Ca ncellation, Florentino claimed that the utility model covered by Letters Patent No. UM-7789 was not original, new, or patentable, as it had been publicly known or used in the Philippines and had even been the subject of several publications.8 It added that it, as well as many others, had been using the utility model well before Palao' s application for a patent .9 In its Decision No. 2007-31,10 the Bureau of Legal Affairs of the Intellectual Property Office denied Florentino's Petition for Cancellation. It noted that the testimony and pictures, which Florentino offered in evidence, f ailed to establish that the utility model subject of Letters Patent No. UM-7789 was publicly known or used before Palao' s application for a patent. 11
In its Resolution No. 2008-14 12 dated July 14, 2008, the Bureau of Legal Affairs of the Intellectual Property Office denied Florentino' s Motion for Reconsideration. On July 30, 2008, Florentino appealed to the Office of the Director General of the Intellectual Property Office. 13 This appeal's Verification and Certification of Non-Forum Shopping was signed by Atty. John Labsky P. Maximo (Atty. Maximo) of the firm Balgos and Perez. 14 However, Florentino failed to attach to its appeal a secretary's certificate or board resolution authorizing Balgos and Perez to sign the Verification and Certification of Non-Forum Shopping. 15Thus, on August 14, 2008, the Office of the Director General issued the Order requiring Florentino to submit proof that Atty. Maximo or Balgos and Perez was authorized to sign the Verification and C ertification ofNon-Forum Shopping. 16 On August 19, 2008, Florentino filed a Compliance. 17 It submitted a copy of the Certificate executed on August 15, 2008 by Florentino's Corporate Secretary, Melanie Marie A. C. Zosa-Tan, supposedly showing its counsel's authority to sign. 18 This Certificate stated: [A]t a meeting of the Board of Directors of the said corporation on 14 August 2008, during which a majority of t he Directors were present, the following resolution was unanimously adopted: 'RESOLVED, as it is hereby resolved, that BALGOS & PEREZ, or any of its associates, be, as they are hereby, authorized to sign for and on behalf of the corporation, the Verification and Certification on NonForum Shopping and/or all other documents relevant to the Appeal filed by the Corporation with the Office of the Director General of the Intellectual Property Office entitled "Philippine Chambers of Stonecraft Industries, Inc. and Florentino III International, Inc. vs. Divina Palao".' IN WITNESS WHEREOF, I have hereunto set my hand on these presents, this 15 August 2008 in Cebu City, C ebu. 19 In his Order dated September 22, 2008, Intellectual Property Office Director General Adrian S. Cristobal, Jr. (Director General Cristobal) dismissed Florentino's appeal.20 He noted that the Secretary's Certificate pertained to an August 14, 2008 Resolution issued by Florentino' s Board of Directors, and reasoned that the same Certificate failed to establish the authority of Florentino's counsel to sign the Verification and Certification of Non-Forum Shopping as of the date of the filing of Florentino's appeal (i.e., on July 30, 2008).21
Florentino then filed before the Court of Appeals a Petition for Review under Rule 43 of the 1997 Rules of Civil Procedure. In its assailed January 8, 2009 Decision,22 the Court of Appeals faulted Director General Cristobal for an overly strict application of procedural rules. Thus, it reversed Director General Cristobal's September 22, 2008 Order and reinstated Florentino' s appeal. 23 In its assailed March 2, 2009 Resolution,24 the Court of Appeals denied Palao's Motion for Reconsideration. Hence, this Petition was filed. For resolution is the sole issue of whether the Court of Appeals erred in reversing the September 22, 2008 Order of Intellectual Property Office Director General Adrian S. Cristobal, Jr., and in reinstating respondent Florentino III International, Inc.' s appeal. We deny the Petition and sustain the ruling of the Court of Appeals. The need for a certification of non-forum shopping to be attached to respondent's appeal before the Office of the Director General of the Intellectual Property Office is established. Section 3 of the Intellectual Property Office's Uniform Rules on Appeai25 specifies the form through which appeals may be taken to the Director General: Section 3. Appeal Memorandum. - The appeal shall be perfected by filing an appeal memorandum in three (3) legible copies with proof of service to the Bureau Director and the adverse party, if any, and upon payment of the applicable fee, Reference Code 127 or 128, provided in the IPO Fee Structure. Section 4(e) specifies the need f or a certification of non-forum shopping. Section 4 reads in full: Section 4. Contents of the Appeal Memorandum. - The appeal memorandum shall: a) State the full name or names, capacity and address or addresses of the appellant or appellants; b) Indicate the material dates showing that it was filed on time;
c) Set forth concisely a statement of the matters involved, the issues raised, the specification of errors of fact or law, or both, allegedly committed by the Bureau Director and the reasons or arguments relied upon for the allowance of the appeal; d) Be accompanied by legible copies of the decision or final order of the Bureau Director and of the material portions of the record as would support the allegations of the appeal; and
are not strictly applied and administrative due process cannot be fully equated with due process in its strict judicial sense.27 In conformity with this liberality, Section 5(b) of the Intellectual Property Office's Uniform Rules on Appeal expressly enables appellants, who failed to comply with Section 4' s formal requirements, to subsequently complete their compliance: Section 5. Action on the Appeal Memorandum - The Director General shall:
e) Contain a certification of non-forum-shopping. (Emphasis supplied) These requirements notwithstanding, the Intellectual Property Office's own Regulations on Inter Partes Proceedings (which governs petitions for cancellations of a mark, patent, utility model, industrial design, opposition to registration of a mark and c ompulsory licensing, and which were in effect when respondent filed its appeal) specify that the Intellectual Property Office "shall not be bound by the strict technical rules of procedure and evidence. "26 Rule 2, Section 6 of these Regulations provides: Section 6 Rules of Procedure to be Followed in the Conduct of Hearing of Inter Partes Cases In the conduct of hearing of inter partes cases, the rules of procedure herein contained shall be primarily applied. The Rules of Court, unless inconsistent with these rules, may be applied in suppletory character, provided, however, that the Director or Hearing Officer shall not be bound by the strict technical rules of procedure and evidence therein contained but may adopt, in the absence of any applicable rule herein, such mode of proceedings which is consistent with the requirements of fair play and conducive to the just, speedy and inexpensive disposition of cases, and which will give t he Bureau the greatest possibility to focus on the t echnical grounds or issues before it. (Emphasis supplied) This rule is in keeping with the general principle that administrative bodies are not strictly bound by technical rules of procedure: [A]dministrative bodies are not bound by the technical niceties of law and procedure and the rules obtaining in courts of law. Administrative tribunals exercising quasi-judicial powers are unfettered by the rigidity of certain procedural requirements, subject to the observance of fundamental and essential requirements of due process in justiciable cases presented before them. In administrative proceedings, technical rules of procedure and evidence
a) Order the adverse party if any, to file comment to the a ppeal memorandum within thirty (30) days from notice and/or order the Bureau Director to file comment and/or transmit the records within thirty (30) days from notice; or b) Order the appellant/appellants to complete the formal requirements mentioned in Section 4 hereof; c) Dismiss the appeal for being patently without merit, Provided, that the dismissal shall be outright if the appeal is not filed within the prescribed period or for failure of the appellant to pay the required fee within the period of appeal. (Emphasis supplied) Given these premises, it was an error for the Director General of the Intellectual Property Office to have been so rigid in applying a procedural rule and dismissing respondent's appeal. Petitioner-in her pleadings before this Court-and Director General Cristobal-in his September 2, 2008 Order-cite Decisions of this Court (namely: Philippine Public School Teachers Association v. Heirs of lligan 28 and Philippine Airlines, Inc. v. Flight Attendants & Stewards Association of the Philippines29) to emphasize the need for precise compliance with the rule on appending a certification of non-forum shopping. Philippine Public School Teachers Association states: Under Section 3 of the same Rule, failure to comply shall be sufficient ground for the dismissal of the petition. The rule on certification against forum shopping is intended to prevent the ac tual filing of multiple petitions/complaints involving identical causes of action, subject matter and issues in other tribunals or agencies as a form of forum shopping. This is rooted in the principle that a party-litigant should not be allowed to pursue simultaneous remedies in different forums, as this practice is detrimental to orderly judicial procedure. Although not jurisdictional, the requirement of a certification of non-forum shopping is mandatory. The rule requires that a certification against forum
shopping J should be appended to or incorporated in the initiatory pleading filed before the court. The rule also requires that the party, not counsel, must certify under oath that he has not commenced any other action involving the same issue in the court or any other tribunal or agency. The requirement that the certification of non-forum shopping should be executed and signed by the plaintiff or principal means that counsel cannot sign said certification unless clothed with special authority to do so. The reason for this is that the plaintiff or principal knows better than anyone else whether a petition has previously been filed involving the same case or substantially the same issues. Hence, a certification signed by c ounsel alone is defective and constitutes a valid cause for dismissal of the petition. In the case of natural persons, the Rule requires the parties themselves to sign the certificate of nonforum shopping. However, in the case of the corporations, the physical act of signing may be performed, on behalf of t he corporate entity, only by specifically authorized individuals for the simple reason that corporations, as artificial persons, cannot personally do the task themselves. It cannot be gainsaid that obedience to the requirements of procedural rules is needed if we are to expect fair results therefrom. Utter disregard of the rules cannot justly be rationalized by harking on the policy of liberal construction.30 Philippine Airlines, for its part, states that: The required certification of non-forum shopping must be valid at the time of filing of the petition .. An invalid certificate cannot be remedied by the subsequent submission of a Secretary's Certificate that vests authority only after the petition had been filed. 31 As pointed out by the Court of Appeals, 32 however, the strict posturing of these Decisions are not entirely suitable for this case. B oth Philippine Public School Teachers Association and Philippine Airlines involved petitions filed before the Court of Appeals, that is, petitions in judicial proceedings. What is involved here is a quasi-judicial proceeding that is "unfettered by the strict application of the technical rules of procedure imposed in judicial proceedings."33 In any case, even in judicial proceedings, this Court has rebuked an overly strict application of the rules pertaining to c ertifications of non-forum shopping.1âwphi1 In Pacquing v. Coca-Cola Philippines, Inc.:34 [T]he rules on forum shopping, which were designed to promote and facilitate the orderly administration of justice, should not be interpreted with such absolute literalness as to subvert its own ultimate and legitimate objective.
Strict compliance with the provision regarding the c ertificate of non-forum shopping underscores its mandatory nature in that the certification cannot be altogether dispensed with or its requirements completely disregarded. It does not, however, prohibit substantial compliance therewith under justifiable circumstances, considering especially that although it is obligatory, it is notjurisdictional.35 Thus, in Pacquing, this Court held that while, as a rule, "the certificate of nonforum shopping must be signed by all the plaintiffs in a case and the signature of only one of them is insufficient,"36 still, "when all the petitioners share a common interest and invoke a c ommon cause of action or defense, the signature of only one of t hem in the certification against forum shopping substantially complies with the rules."37 Likewise, in Peak Ventures Corp. v. Heirs of Villareal , 38 we did not consider as fatally defective the fact that a petition for review on certiorari's verification and certification of non-forum shopping was dated November 6, 2008, while the petition itself was dated November 10, 2008.39 We state: With respect to the requirement of a certification of non-forum shopping, "[t]he fact that the [Rules] require strict compliance merely underscores its mandatory nature that it can not be dispensed with or its requirements altogether disregarded, but it does not thereby interdict substantial compliance with its provisions under j ustifiable circumstances. "40 Even petitioner's own cited case, Philippine Public School Teachers Association v. Heirs of lligan,41 repudiates her position. The case involved a petition for review filed before the Court of Appeals by the Philippine Public School Teachers Association.42 The verification and certification of nonforum shopping of the petition was signed by a certain Ramon G. Asuncion, Jr. without an accompanying board resolution or secretary's certificate attesting to his authority to sign. The petition for review was dismissed by the Court of Appeals "for being 'defective in substance,' there being no proof that Asuncion had been duly authorized by [the Philippine Public School Teachers Association] to execute and file a certification of nonforum shopping in its behalf."43 This Court acknowledged that, in the strict sense, the Court of Appeals was correct: "The ruling of the [Court of Appeals] that [the Philippine Public School Teachers Association] was negligent when it failed to append in its petition a board resolution authorizing petitioner Asuncion to sign the certification of non-forum shopping in its behalf is correct. '44 However, this Court did not end at that. It went on to state that "a strict application of [the rule] is not called for": 45
We have reviewed the records, however, and find that a strict application of Rule 42, in relation to Section 5, Rule 7 of the Revised Rules of Court is not called for. As we held in Huntington Steel Products, Inc. v. National Labor Relations Commission, while the requirement of strict compliance underscores the mandatory nature of the rule, it does not necessarily interdict substantial compliance with its provisions under justifiable circumstances. The rule should not be interpreted with such absolute literalness as to subvert its own ultimate and legitimate objective which is the goal of all rules of procedure, that is, to achieve justice as expeditiously as possible. A liberal application of the rule may be justified where special circumstances or compelling reasons are present. Admittedly, the authorization of petitioner PPSTA's corporate secretary was submitted to the appellate court only after petitioners received the comment of respondents. However, in view of the peculiar circumstances of the present case and in the interest of substantial justice, and considering further that petitioners submitted such authorization before the [Court of Appeals] resolved to dismiss the petition on the technical ground, we hold that, the procedural defect may be set aside pro hac vice. Technical rules of procedure should be rules enjoined to facilitate the orderly administration of j ustice. The liberality in the application of rules of procedure may not be invoked if it will result in the wanton disregard of the rules or cause needless delay in the administration of justice. Indeed, it cannot be gainsaid that obedience to the requirements of procedural rule is needed if we are to expect fair results therefrom.46 (Emphasis supplied) The "peculiar circumstances"47 in Philippine Public School Teachers Association pertained to a finding that the signatory of the verification and certification of non-forum shopping, Ramon G. Asuncion, Jr., was "the former Acting General Manager"48 of the Philippine Public School Teachers Association and was, thus, previously "authorized to sign a verification and certification of non- forum shopping"49 on behalf of the Association. By the time the Association actually filed its petition before the C ourt of Appeals, however, his authority as the Acting General Manager had ceased, and t he Association's Board of Directors needed to give him specific authority to sign a certification of non-forum shopping: We agree with respondents' contention that when they filed their complaint in the MTC, they impleaded petitioner Asuncion as party defendant in his capacity as the Acting General Manager of petitioner PPST A. As such officer, he was authorized to sign a verification and certification of non-forum shopping. However, he was no longer the Acting G eneral Manager when petitioners filed their petition in the CA, where he was in fact referred to as "the former Acting General Manager." Thus, at the time the petition was filed before the CA, petitioner Asuncion's authority to sign the verification and certification of nonforum shopping for and in behalf of petitioner PPSTA ceased to exist. There was
a need for the board of directors of petitioner PPS TA to authorize him to sign the requisite certification of non-forum shopping, and to append the same to their petition as Annex thereof. 50 We find this case to be attended by analogous circumstances. As pointed out by the Court of Appeals, respondent's counsel, Balgos and Perez, has been representing respondent (and signing documents for it) "since the [original] Petition for Cancellation of Letter Patent No. UM-7789 was filed." 51 Thus, its act of signing for respondent, on appeal before the Director General of the Intellectual Property Office, was not an aberration. It was a mere continuation of what it had previously done. It is reasonable, therefore-consistent with the precept of l iberally applying procedural rules in administrative proceedings, and with the room allowed by jurisprudence for substantial compliance with respect to the rule on certifications of non-forum shopping-to construe the error committed by respondent as a venial lapse that should not be fatal to its cause. We see here no "wanton disregard of the rules or [the risk of] caus[ing] needless delay in the administration of justice."52 On the contrary, construing it as such will enable a full ventilation of the parties' competing claims. As with Philippine Public School Teachers Association, we consider it permissible to set aside, pro hac vice, the procedural defect. 53 Thus, we sustain the ruling of the Court of Appeals. WHEREFORE, the Petition is DENIED. The assailed January 8, 2009 Decision and the March 2, 2009 Resolution of the Court of Appeals in CA-G.R. SP No. 105595 are AFFIRMED. SO ORDERED. 2. INFRINGEMENT Roberto Del Rosario vs Court of Appeals Roberto Roberto Del Rosario was granted a patent for his innovation called the “Minus One” karaoke. The patent was issued in June 1988 for five years and was renewed in November 1991 for another five years as there were improvement introduced to his “minus one” karaoke. In 1993, while the patent was still effective, Del Rosario sued Janito Corporation, a Japanese company owned by Janito Cua, for allegedly infringing upon the patent of Del Rosario. Del Rosario alleged that Janito was manufacturing a sing-along system under the brand “miyata karaoke” which is substantially, if not identical, the same to his “minus one” karaoke. The lower court ruled in favor of Del Rosario but the Court of Appeals ruled that there was no infringement because the karaoke system was a
universal product manufactured, advertised, and marketed all over the world long before Del Rosario was issued his patents.
Whether or not respondent’s prior use of the mark is a requirement for its registration.
ISSUE: Whether or not the Court of Appeals erred in its ruling.
Ruling: YES.
HELD: Yes. The Patent Law expressly acknowledges that any new model of implements or tools of any industrial product even if not possessed of the quality of invention but which is of practical utility is entitled to a patent for utility model. Here, there is no dispute that the letters patent issued to Del Rosario are for utility models of audio equipment. It is elementary that a patent may be infringed where the essential or substantial features of the patented invention are taken or appropriated, or the device, machine or other subject matter alleged to infringe is substantially identical with the patented invention. In order to infringe a patent, a machine or device must perform the same function, or accomplish the same result by identical or substantially identical means and the principle or mode of operation must be substantially the same. In the case at bar, miyata karaoke was proven to have substantial if not identical functionality as that of the minus one karaoke which was covered by the second patent issued to Del Rosario. Further, Janito failed to present competent evidence that will show that Del Rosario’s innovation is not new.
While the present law on trademarks has dispensed with the requirement of prior actual use at the time of registration, the law in force at the time of registration must be applied. Under the provisions of the former trademark law, R.A. No. 166, as amended, hence, the law in force at the time of respondent’s application for registration of trademark, the root of ownership of a trademark is actual use in commerce. Section 2 of said law requires that before a trademark can be registered, it must have been actually used in commerce and service for not less than two months in the Philippines prior to the filing of an application for its registration. Trademark is a creation of use and therefore actual use is a pre-requisite to exclusive ownership and its registration with the Philippine Patent Office is a mere administrative confirmation of the existence of such right.
IV. TRADEMARKS 1. REQUIREMENT OF PRIOR USE SHANGRI-LA INTERNATIONAL HOTEL MANAGEMENT V. DEVELOPERS GROUP OF COMPANIES (G.R. NO. 159938) Facts: Respondent DGCI applied for and was granted registration of the ‘Shangri -La’ mark and ‘S’ logo in its restaurant business. Petitioner Shangri -La, chain of hotels and establishments owned by the Kuok family worldwide, moved to cancel the registration of the mark on the ground that it was illegally and fraudulently obtained and appropriated by respondents. Petitioner also moved to register the mark and logo in its own name. Later, respondent DGCI filed before the trial court a complaint for infringement against petitioner alleging that DGCI had been the prior exclusive user and the registered owner in the Philippines of said mark and logo. Petitioner Shangri-La argued that respondent had no right to apply for the registration because it did not have prior actual commercial use thereof. The trial court found for respondent. CA affirmed.
While the petitioners may not have qualified under Section 2 of R.A. No. 166 as a registrant, neither did respondent DGCI, since the latter also failed to fulfill the 2 month actual use requirement. What is worse, DGCI was not even the owner of the mark. For it to have been the owner, the mark must not have been already appropriated (i.e., used) by someone else. At the time of respondent DGCI’s registration of the mark, the same was already being used by the petitioners, albeit abroad, of which DGCI’s president was fully aware. BERRIS AGRICULTURAL CO., INC. vs. NORVY ABYADANG. G.R. No. 183404. October 13, 2010 FACTS: Abyadang filed a trademark application with the IPO for the mark "NS D-10 PLUS" for use in connection with Fungicide. Berris Agricultural Co., Inc. filed an opposition against the trademark citing that it is confusingly similar with their trademark, "D-10 80 WP" which is also used for Fungicide also with the same active ingredient. The IPO ruled in favor of Berries but on appeal with the CA, the CA ruled in favor of Abyadang. ISSUE: Whether there is confusing similarity between the trademarks. RULING:
Issue:
Yes. The SC found that both products have the component D-10 as their ingredient and that it is the dominant feature in both their marks. Applying the Dominancy Test, Abyadang's product is similar to Berris' and that confusion may likely to occur especially that both in the same type of goods. Also using the Holistic Test, it was more obvious that there is likelihood of confusion in their packaging and color schemes of the marks. The SC stat es that buyers would think that Abyadang's product is an upgrade of Berris' EY Industrial Sales vs. Shen Dar Electricity and Machinery Company Facts:
EY Industrial Sales is a domestic corporation engaged in the production, distribution and sale of air compressors. Shen Dar is a Taiwan-based foreign corporation engaged in the manufacture of compressors. From 1997-2004, EY Industrial imported air compressors from Shen Dar. In 1997, Shen Dar filed a Trademark Application with the Intellectual Property Office (IPO) for the mark “Vespa” for the use of air compressors. It was approved in 2007. In 1999, EY Industrial filed a Trademark Application also for the mark “VESPA” for the use of air compressors. It was approved in 2004. Shen Dar filed a Petition for Cancellation of the Industrial’s EYES COR with the Bureau of Legal Affairs contending that: a. there was a violation of Section 123.1 (D) of the Intellectual Property Code which provides that: A mark cannot be registered if it is identical to a mark with an earlier filing or priority date. b. EY Industrial is only a distributor of the air compressors On the other hand, EY Industrial alleged that it is the sole assembler and fabricator of VESPA air compressors since the early 1990s and that Shen Dar supplied them air compressors with the mark “SD” and not “VESPA”
Held: 1st: EY INDUSTRIAL has the right to the trademark. Based on the evidence, EYIS owns the “VESPA” trademark; it has prior use, as shown by various sales invoices. Ownership of a mark or trade name may be acquired not necessarily by registration but by adoption and use in trade or commerce. As between actual use of a mark without registration, and registration of the mark without actual use thereof, the former prevails over the latter. For a rule widely accepted and firmly entrenched, because it has come down through the years, is that act ual use in commerce or business is a pre-requisite to the acquisition of the right of ownership. It is non sequitur to hold that porque EYIS is a distributor, it is no longer the owner. FIRST-TO-FILE RULE Under Section 123.1 of IPO provision, the registration of a mark is prevented with the filing of an earlier application for registration. This must not, however, be interpreted to mean that ownership should be based upon an earlier filing date. While RA 8293 (IPC) removed the previous requirement of proof of actual use prior to the filing of an application for registration of a mark, proof of prior and continuous use is necessary to establish ownership of a mark. Such ownership constitutes sufficient evidence to oppose the registration of a mark. When we talk about trademark, we are just talking about the mark. It does not include the product. Shen Dar is the manufacturer of the product, but they did not name the product as VESPA. It was EY that named the VESPA, and used the VESPA, even though they were only the distributors.
It was EY that actually
used the trademark through the use of receipts, and other documents. Issues: 1. Who between EY Industrial and Shen Dar is entitled to the trademark “VESPA”. EY INDUSTRIAL SALES 2. WON the Bureau of Legal Affairs has the power to cancel the application of Shen Dar even if it is Shen Dar who filed the case? YES
The first to file rule – According to the SC that Shen Dar filed under the old IPC where prior use is the one applied. 2nd: BLA has the power to cancel the application.
Shen Dar challenges the propriety of such cancellation on the ground that there was no petition for cancellation as required under Sec. 151 of RA 8293.
Issue:
The IPO Director General stated that, despite the fact that the instant case was for the cancellation of the COR issued in favor of EYIS, the interests of justice dictate, and in view of its findings, that the COR of Shen Dar must be cancelled.
Whether or not petitioner’s mark has acquired secondary meaning in its favor.
The above rule reflects the oft-repeated legal principle that quasi-judicial and administrative bodies are not bound by technical rules of procedure. Such principle, however, is tempered by fundamental evidentiary rules, including due process.
The word ‘SELECTA’, it is true, may be an ordinary or common word in the sense that may be used or employed by any one in promoting his business or enterprise, but once adopted or coined in co nnection with one’s business as an emblem, sign or device to characterize its products, or as a badge of authenticity, it may acquire a secondary meaning as to be exclusively associated with its products and business. In this sense, its use by another may lead to confusion in trade and cause damage to its business. And this is the situation of petitioner when it used the word ‘SELECTA’ as a trade -mark. In this sense, the law gives its protection and guarantees its use to the exclusion of all others.
The fact that no petition for cancellation was filed against the COR issued to Shen Dar does not preclude the cancellation of Shen Dar’s COR. It must be emphasized that, during the hearing for the cancellation of EYIS’ COR before the BLA, Shen Dar tried to est ablish that it, not EYIS, was the true owner of the mark “VESPA” and, thus, entitled to have it registered. Shen Dar had more than sufficient opportunity to present its evidence and argue its case, and it did. It was given its day in court and its right to due process was respected. The IPO Director General’s disregard of the procedure for the cancellation of a registered mark was a valid exercise of his discretion.
Ruling: YES.
The term ‘SELECTA’ may be placed at par with the words “Ang Tibay” which this Court has considered not merely as a descriptive term within the meaning of the Trade-mark Law but as a fanc iful or coined phrase, or a trade-mark. And holding that respondent was entitled to protection in the use of that trade-mark, this Court made the following comment:
Remember, EY’s application was the one granted, and it is Shen Dar’s application that was cancelled.
It does not mean that even you were the one who filed, it
your application cannot be cancelled. The BLA, who has jurisdiction over the case, were able to determine that it is Shen Dar’s trademark that should not have been issued with registration, even it is the plaintiff. 2. REGISTRABLE TRADEMARKS ARCE SONS AND COMPANY V. SELECTA BISCUIT COMPANY (G.R. NO. L14761) Facts: Respondent Selecta Biscuit Company applied for the registration of the word ‘SELECTA’ to be used in its bakery products. Petitioner Arce Sons opposed on the ground it had continuously used the mark ‘SELECTA’ and that it has already become identified with petitioner’s name and business. Petitioner further contends that the marks are confusingly similar. Petitioner then filed before the court a complaint of unfair competition against respondent which ruled in its favor. On the other hand, the Director of Pate nts dismissed petitioner’s opposition.
Even if ‘Ang Tibay’, therefore, were not capable of exclusive appropriation as a trade-mark, the application of the doctrine of secondary meaning could nevertheless be fully sustained because, in any event, by respondent’s long and exclusive appropriation with reference to an article on the market, because geographically or otherwise descriptive, might nevertheless have been used so long and exclusively by one producer with reference to his article that, in that trade and to that branch of the purchasing public, the word or phrase has come to mean that article was his product.” (Ang v. Teodoro , supra.) The rationale in the Ang Tibay case applies on all fours to the case of petitioner. ANDRES ROMERO vs. MAIDEN FORM BRASSIERRE CO., INC. and THE DIRECTOR OF PATENTS, FACTS: Respondent company, a foreign corporation, filed with respondent Director of Patents an application for registration (pursuant to Republic Act No. 166) of the trademark "Adagio" for the brassieres manufactured by it. The respondent
company alleged that said trademark was first used by it in the United States on October 26, 1937, and in the Philippines on August 31, 1946 and that it had been continuously used by it in trade in, or with the Philippines for over 30 years; that said trademark. Acting on said application, respondent Director, issued to respondent company a certificate of registration of its trademark "Adagio". petitioner filed with respondent Director a petition for cancellation of said trademark, on the grounds that it is a common descriptive name of an article or substance on which the patent has expired; that its registration was obtained fraudulently and that the application for its registration was not filed in accordance with the provisions of Section 37, Chapter XI of the same Act. Petitioner also alleged that said trademark has not become distinctive of respondent company's goods or business; that it has been used by respondent company to classify the goods (the brassieres) manufactured by it, in the same manner as petitioner uses the same; that said trademark has been used by petitioner for almost 6 years; that it has become a common descriptive name; and that it is not registered in accordance with the requirements of Section 37 (a), Chapter XI of Republic Act No. 166.
1.
This claim is without basis in fact. The evidence shows that the trademark "Adagio" is a musical term, which means slowly or in an easy manner, and was used as a trademark by the owners thereof because they are musically inclined. Being a musical term, it is used in an arbitrary (fanciful) sense as a trademark for brassieres manufactured by respondent company. It also appears that respondent company has, likewise, adopted other musical terms such as "Etude", "Chansonette", "Pre-lude", "Overture" (Exh. W-6), and "Concerto", to identify, as a trademark, the different styles or types of its brassieres. As respondent Director pointed out, "the fact that said mark is used also to designate a particular style of brassiere, does not affect its registrability as a trademark."
2.
This contention is untenable. Said sentence appearing on the package, standing alone, does not conclusively indicate that the trademark "Adagio" is merely a style of brassiere. Brassieres are usually of different types or styles, and appellee has used different trademarks for every type as shown by its labels, Etude, Chansonette, Prelude, Maidenette, and Overture. The mere fact that appellee uses "Adagio" for one type or style, does not affect the validity of such word as a trademark. In the case of Kiekhaefer Corp. v. Willys-Overland Motors, 111 USPQ 105, it was held that the fact that the word "Hurricane" was used to designate only one model of automobile, did not affect the validity of that word as a trademark.
3.
This contention flows from a misconception of the application for registration of trademark of respondent. As we see it, respondent's application was filed under the provisions of Section 2 of Republic Act No. 166 as amended by Section 1 of Republic Act 865 which reads as follows:
Issues having been joined, the case was heard and, after hearing, respondent Director (on January 17, 1961) rendered the decision dismissing his petition for cancellation of the registration of the trademark "Adagio" for brassieres manufactured by respondent Maiden Form Brassiere Co., Inc. Hence, this appeal. ISSUES: 1.
Whether the trademark “ADAGIO” has become a common descriptive name of a particular style of brassiere and is, therefore, unregistrable;
2.
Whether the trademark “ADAGIO” at the time it was registered had long been used by the respondent company, only to "to designate a particular style or quality of brassiere and, therefore, is unregistrable as a trademark";
3.
Whether the respondent Director erred in registering the trademark in question, despite appellee's non-compliance with Section 37, paragraphs 1 and 4 (a) of Republic Act No. 166; and
4.
Whether the registration of the trademark in question was fraudulent or contrary to Section 4 of Republic Act No. 166.
HELD:
"SEC. 2. What are registrable. — Trademarks, x x x owned by persons, corporations, partnerships or associations domiciled x x x in any foreign country may be registered in accordance with the provisions of this Act: Provided, that said trademarks, trade-names, or service marks are actually in use in commerce and services not less than two months in the Philippines before the time the applications for registration are filed: x x x" Section 37 of Republic Act No. 166 can be availed of only where the Philippines is a party to an international convention or treaty relating to trademarks, in which case the trade-mark sought to be registered need not be in use in the Philippines.
4.
"Adagio" was first used exclusively in the Philippines by appellee in the year 1932. There being no evidence of use of the mark by others before 1932, or that appellee abandoned use thereof, the registration of the mark was made in accordance with the Trademark Law. The temporary non-use did not affect the rights of appellee because it was occasioned by government restrictions and was not permanent, intentional, and voluntary. "To work an abandonment, the disuse must be permanent and not ephemeral; it must be intentional and voluntary, and not involuntary or even compulsory. There must be a thoroughgoing discontinuance of any trade-mark use of the mark in question." The use of the trademark by other manufacturers did not indicate an intention on the part of appellee to abandon it. Further, temporary non-use of a trademark occasioned by government restrictions. not being permanent, intentional and voluntary, does not affect the right to a trademark.
