Menzi and Co., Inc., Opposer, vs. Andres Co, Respondent-Applicant, T. M. Dec. No. 10, s. 1952. [Decision of the Philippine Patent Office]

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Part of The Lawyers Journal

Title: Menzi and Co., Inc., Opposer, vs. Andres Co, Respondent-Applicant, T. M. Dec. No. 10, s. 1952. [Decision of the Philippine Patent Office]
Language: English
Source: The Lawyers Journal XIX (5) May 31, 1954
Year: 1954
Subject: Trademark Act; Patent laws and legislation -- Philippines
Rights
Abstract: [Andres Co, Respondent-Applicant, moves that the Opposition filed by the Menzi and Co., Inc., the Opposer, be dismissed on the ground that upon the facts set forth in said Opposition, Menzi and Co., Inc. is not entitled to oppose the registration in favor of the Respondent-Applicant of the trademark under dispute. Andres Co has applied, under the current Trademark Act (Rep. Act. No. 11)6, as amended), for the registration, of a trademark, Senorita, which he claims to have used on bobby pins since the year 1948. Under Sec. 8 of the Act, the Menzi and Co., Inc. has opposed the registration upon the ground that it would be damaged by the said registration, having used the same trademark, Senorita, on identical articles, since the year 1932.]
Fulltext: DECISION OF THE PHILIPPINE PATENT OFFICE Menzi a.nd Co., Inc., Opposer, 11s. Andres Co, Respondent.Applicant, T. M. Dec. No. 10, s. 1952. TRADEMARK ACT; SOURCE OF OWNERSHIP OF A TRADE. MARK.-The ownership of a trademark sp1inga from its adoption an~ use. Ownership does not arise from its registration. Be who first adopts and uses a trademark ia considered the owner thereof CAct No. 666, secs. 2, 3 i Rep. Act No. 638, sec. 1; Recamier v. Ayer, 59 F <2d> 802, 806; Keystone v. Arena, 2'1 F. · Supp. 290, 293; McLean v. Fleming, 24 L. ed. 828>, IBID; EFFECT m• REGISTRATION OF A TRADEMARK.-Reg.istration produces for the owner of a trademark only proce. dural advantages in court - advantages which spring from the statutory declaration that a certificate of registration is prima facie evidence of the registrant's ownership of the ~rade mark, of his exclusive iight ·to use it on certain products, and of certain other matters <Rep. Act No. 166. see. 20; Act No. 666, sec. 16). IBID; ~'AILURE TO REGISTER ONE'S TRADEMAR\t-A person's failure to register his trademark under the Trademark Act does not a.fleet his rights of ownership over it. <Ansehl v. Williams, 267 F. 9, 14, and cases cited). Such. failure to register does not of itself result in the abandonment-and in· th• i·elinquishment of his proprietaTY rights. thereover. IBID; ABANDONMENT OF A TRADEMARK..-Abandonment Is a matter not only of the non-user of a tradema1·k but of the actual intent to abandon it, as well, both of which factors need be established by evidence by him who asserts it CAnsehl v. Wil .. lia.ms, supra; p. 13; Sexlehner v. Eisner, 45 L ed. 60; Wallace v. Repetti, 266, F. 307>. IBID; CLAIM TO THE EXCLUSIVE USE OF TRADEMARK.The claim to the exclusive use, or ownership, of a trademark is a continuing·right in the owner <Heger v. Polk, 4'1 F (2d) 966, 969 and cases cited>. IBID; MEANING OF THE TERM "MARX" AS USED IN SEC.. TION 8.-The bro&d term ''mark" used in Sec. 8 of the Trademark Act <Rep. Act No. 166, as amended> means a "trademark" or a ••sernce mai'k.'' mID; PERSONS WHO MAY OPPOSE REGISTRATION OF TRADEMARK.-There is nothing in the language of See. 8 of our statute that w~uld justify the interpretation that no person nia:v oppose a registration, unless he owns a trademark and that trademark il:i registered; and, if the same ia not regiatered, that he must ,at least, have uduaiH rights to it. The fact. that the statute di~ th&t copies of foreign certificates of registration should be attached to the opposition, does not necessarily mean that the ownership of a registered trademark or of an u111"egilitued exclusive trademark, is required 1 as a basis for opposition. All that appears necessary is that the opposer allege in the opposition that he is using something or other on his goods by way of a mark; that the trademark soug-ht to be registered by the applicant so closely resembles this mark, that he believes that he would be damaged by the registration of the applicant's trademark. IBID; UNFAIR COMPETITION; JURISDICTION OF THE PATENT OFFICE.-The Principal Register of the trademark statute. on whlch th& Respondent.Applicant seeks registration of his trademark Seli.orita, is not concerned with labels or their ap.. pearanees; it is concerned exclusively with trademarks. The appeara.nce of labels: falls under the law of unfair competiti~ not under the trademark law proper. Over matters of unfair competition, the Patent Office has no jurisdiction <Sec. T. 11. Dec. No. 2, s. 1951>. ORDER The Respondent-Applicant moves that the Opposition filed by thE Oppoaer be dismissed on the ground tha.t, upon the facts set forth in said Opposition, the Opposer is not entitled to oppose the registration in favor of the Respondent-Applicant of the trademark under dispute. The Respondent-Applicant has applied, undet' the current Trademark Act (Rep. Act. No. 11)6, as amended>, for the registration ,of a trademark, Seiwrita., which ha claims to have used on bobby pins since the year 1948. UJJder Sec. 8 of the Act, the Opposer ha.s opposed the registration upon the ground that it would be damaged by the said registration, having used the same trademark, Seiiorita., on identical articles, since the year 1932. The Opposer allege11 that its trademark Seiiorita ·was registel'(.'d in 1934 under the old trademark Act No. 666, which was repealed on June 20, 1947, by the current Trademark Act, Rep. Act No. 166, approved on the same date. It admits that the said trademark has not been re-registered under the current Act either under its Sec. 4Ha.> or as a new, original registration. It is because of this fact that the Opposer's trademark Se. 'liorita. has not been re-registered under the current Act, and because nobody, according to him, .can have exclusive rights to the designation Sefi.oritu., as UE:ed on bobby pins, that the Respondent-Applicant moves that the Opposition be dismissed. The Respondent-Applicant understands tha.t by its failure to re-register its trademark Seiiorita 'under the cui·rent Act, the Opposer should be deemed to have:: aL&J) .. doned and relinquished all its rights to said trademark: and, being deemed to have abandoned and relinquished said rights, it is now not entitled to oppose the registration of the same trademarkSdioriV.Z., for the same goods, to the Respondent-Applicant. The Respondent. Applicant also understands that a person who has no exclusive rights to a mark he is using on certain goods may not be allowed to oppose the registration, in favor of another, of the same mark used on similar articles. Whether or not the positions taken by the Respondent-Applicant a.re correct, is the issue for decision in this Order. The Opposer alleges that it is the owner of the trademark Sefiorita. The ownership of a trademark springs from its adoption and use. Ownership does not arise from its registration. He who first adopts and uses a trademark is considered the owner thereof <Act No. 666, secs. 2, 3; Rep. Act No. 638, sec. 1; Recamier·v. Ayer 69 FC2d' 802, 806; Keystone v. Arena, 2'1 F. Supp. 290, 293; McLean v. Fleming, 24 L. ed. 828). Registration produces for the owner of a trademark only procedural advantages in court - advantages which spring from the statutory declaratic.n that. a certificate of registration is prima. facie evidence of the registra.nt's ownership of the trademark, of his exclusive right Lo use it on certain produ~ts, and of certain other matters <Rep. Act No. 166, sec. 20; Act No. 666, sec. 16>. A person's failure tc. t"figil'ter his trad.?ll1ark under the Trademark Act does not affect his rights of ownership over it. (Ansehl v. Williams. 267 F 9, 14, nnd cases cited>. Such failui·e to register dot=s not of itself result in the abandonment and in the relinquishment of his proprietary· rights thereover. Abandonment is a matter not only of the non-user of a trademark but of the actusl intent to abandon it, as well, both of which factt>rs need be established by evidence by him who asserts it <Ansehl v. Williams, supra, p. 13; Ssxlehner v. Eisner, 45 L. ed. 60; Wallace''· Repetti, 266 F 807>. 'rhe claim t:o the exclusive use, or ownership, of :\ trademark is a continuing right in the owner <Heger v, Polk, 47 F l2d) 966, 969 and cases cited> • The claim, therefore, of the Respondent-Applicant that the Op1>oser has no right to make opposition in this case, because it bas Jost its propriehry rights to the trademark Seiiorita., through its failure to registe1· it under the current Trademark Act, cannot be sustained. The section of the cur1·ent 'l'rademark Act relating to opposition provides as follows: "Sec. 8. Opposition - Any person• who believes that he would be damaged by the registl'ation of a mark or tradename may, upon payment of the required fee and within thirty days after the publication under the first paragraph of section May 81, 1954 LAWYERS JOURNAL seven h.ereof, file with the Director an opposition to the BPpJication, 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 t!;le grounds on which it is baaed and include a. statement of the facts relied upon. Copies of certificates of registration of marks or trade.names registet:ed in other countriel9 or other supporting documents mentioned in the opposition shall lie filed ther('with, 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 a.pplicant of such extension.'' The broad term "mark" used in this Section means a "trademark'• or a ••service mark:" Sec. 6 of the U.S. Trademark Act of Feb. 20, 1905, declares: "Sec. 6. • • • Any person who believes he would be damaged bl' the registratio~ of ·a ma1·k 'may oppose the same by filing notice of opposition, stating the grounds therefor, in the Pa.. tent Office within thirty days after publication of the mark sought to be registel'ed, which said notice of opposition shall be verified by the person filing the same before one of the officers mentioned in section two of this Act. An opposition may be filed by a duly autholized attorney, but such oppo11ition aha.II be null and void unless vr.rified by the opposer within a reasonable time after such filing. If no notice of opposition is filed within said time, the com1nissioner shall issue a certificate of registration 1therefor, as hereinafter provided for.•0 " Sec. ·13 of the current U;S, Trademark of 1946, reads: "Any person who believes that he would hr. damaged l·Y the registration of a mark upon the principal i·egister may, upon payment of the required fee, file a verified notice of op~ position in the Patent Office, stating the grounds therefor, within thirty days after the publication under subsection Ca> of section 12 of this Act of the mark sought to be registered: For good cause shown, the time for filing notice o! opposition may be extended by the Conunissioner, who shall notify the applicant. An unverified opposition may be filed by a duly allthorized attorney, but such opposition shall be null and void unless verified by the opposer within a reasonable time aftl?r such filing to be fixed by the Conunissioner." There is nothing in the language of the above See. 8 of our statute that would justify the interpretation that no person may oppose a registration, uni.es& be owns a trademark and that trademark is registered; e.nd, if the same is not registered, that he must, at least, have ezclusive rights to it. The fact that the statute directs that copies of foreign certificates of registration should be attached to the opposition, does not necessarily mean that the ownership of a registered trademark pr of an unregistered exclusive trademal'k, is required as a basis for opposition. All that appears neces.;;e.ry is that the opposer allege in the opposition that he is using something or other on his goods by way of a mark; that the trademark sought to be registe1-ed by the applicant so closely resembles this mark, that he believes that he would be darna.ged by the registration of the applicant's trademark. Construing the above cited Sec. 6 of the U.S. T1·ademark Act of Feb. 20, 1905, the Court of Appeals of the Dist. of Columbia said in Broderk: v. Mitchell, 289 F 618, 619 U923) : "Section 6 of the Trade-Mark Act <Comp. St. § 9491>, as construed by this court in Arkell Safety Bag Co. v. Safepack Mills, - App. D. C. -, 289 Fed. 616, decided at this sitting, gives the right to any one who believes that the mark of an applicant would damage him the right to oppose its regiBtration. In order that he may maintain his opposition it is not necessary tha.t he should have a registered mark, or one that ia f"egisterable. Atlas Underwear Co. v. B. V. D. Co., 48 App. D. C. 425 Mcllhenny Co. v. Trappey, 51 App. D. C. 216, 277 Fed. 615. If the mark of the applicant is so nearly like his as to be likely to lead intending purchasers to believe that the goods of the applicant were put out by the opposer, and to buy them on that assumption,. thereby damaging the latter, the s~atute a.ffords him a right to object to the applicant's mark being registe1·ed. It may be that the opposer ia not enUtled to the e~clusive use of his mark. None the less he has the right to resist thE> applicant's attempt to appropriate to himself !ts exclusive use where, as here, the use of the two marks would probably deceive" (underscoring supplied> In another case, To1iraine v. WMhburn, 286 F 1021), 1022 <1923)-, the same court said: · "The trademark statute (section 6, 33 Stat. 72&> is our cha.rt. There is nothing in it which says that a person must own a trademark, i-egistered or not, before he can oppose the registration ol the mark of another person. All that the sta.. tute requires of him, according to ou·r interpertation, is to prove facts, which, if true, would tend to show that be would probably be damaged by the registration." To the same effect are the decisions in the following casi:s: California. Cyanide v. American C)l'anamid, 40 F<2d> 1003, 1005 <1930>; Trustees v. Mccreery, 49 FC2d) 1068, 1071 ll93U; Helsherg v. Katz, 73 FC2d> 626, 628 <i934>; Pep Boys v. Fisher, 94 FC2d> 204, 209, 0938); Vi-Jon v. Lentheric, 133 FC2d> 947, 948 C1943>; Weinberg v. Riverside, 76 USPQ 218, 219 0948; Juilla.rd v: American Woolen 77 USPQ 21, 22 (1948>; Raymond v. Duart, 77 USPQ 662, 663 0948); First Industrial v. Pierece 78 USPQ 152 <1948); Gq:ldring v. Adler, 78 USPQ 290 Cl948>; Denny v. Elizabeth Arden, 79 USPQ 214, 215 (1948); Seeck v. M,)ran, 84 USPQ 249, 250 0950); Packwood v. Cofax 86 USPQ 410, 413 (1950); Noma Electric v. On-A-Lite Corp., 92 USPQ 283 C1952l. In the cited Packwood v; Cofe;c case (1950> the U.S. Court of CusWms and Patent Appeals said: "Appellant, as the opposer, to the registration of a trademark is entitled in such proceedings to rely not only upon its previously registered trademark, but also upon tradenames and designs previously used on labels end in adverlising literature in a, 1.1z.anner analogOU8 to a trade'lnark use. <Wood v. Servel,) 77 F<2dJ 946, 25 USPQ 488; Virginia Dare v. Dare, 70 F<20.> 118, 21 USPQ 334)'' <underscoring supplied> The objection, therefore, that the Opposer has no right to make opposition because it has no exclusive rights to the designation Seiiorita, as used on bobby pins, cannot be sustained. · Another ground advanced by the Respondent.Applicant for the dismissal of the Opposition is that the label bes.ring his Seiiorita and the label displaying the OppoS1er's Seif.orita, are so distinctly dissimilar in appearance that the use of both trademarks cannot possibly produce any confusion in the public mind, and cannot, therefore, damage the Opposer. . The Principal Register, of the tradema1·k statute, on which the Respondent-Applicant seeks registration of his h·ademark Sefiorita, is not conc.erned with labels on th~r appearances; it is concerned exclusively with trademarks. The appearance of labels falls under the law of unfair competition, not under the trademark law proper, Ove1· matters of unfair competition, the Patent Office has no jurisdicfion <See T. M. Dec. No. 2 s. 1951). Bec&USe the Patent Office has no jurisdiction over the appcar:!lnce of labels, it does not take the same into accoun_t when considering whether or not a given trademark is registerable. Besides, what assurance is the1-e that the appearance of the label bearing the trademark sought to be registered would not be cha.nged, in the future, by the applicant? In Tungsten. etc, v. S1treline, etc., 79 USPQ 272, 2'73 <1948), the U. S. Conunissionei· of Patents said: .. Applicant emphasizes the fact that in actual use the marks of the parties are applied to packag~s, ¥d that the packages of the respective parties are entirely different in co!br, type· of printing and general appearance. The record clearly discloses that there is no similarity between these packages. The question involved in this proceeding is, however, limited to applicant's right to register the mark shown in its applica.tion. While applicant has used this mark for a considerable pel'iod CCon.finued on page 259> 248 LAWYERS JOURNAL May 31, 1964 Besides, Justice Reyes fail.;i to grasp the method of the mw Civil Code in See. 2 - "Order of Intestate Succession". By Articles 978, 985, 988, 995, 1001, and 1103, the Code names the re. latives who, in the order stated, inherit the whole est<it.. Article 978 assumes that there is no surviving spouse. (To be Continued) A CRITICAL STUDY ... <Continued from page 219) CONCLUSIONS AND RECOMMENDATIONS Much of the possible difficult situations we have endeavored to present which cannot be adequately solved by the present provisions of the Code without absurd results may be remedied by eliminating the conclusive presumption of legitimacy provided for in Article 258 of the present Civil Code in s.ny of the three case9 therein mentioned. This will make the present rigors of the law more flexible to permit its rigidity yield to the realities 9f hfe. The Prima. facie presumption of illegitimacy provided for in Article 257 <C. C.> shoUld be reversed. The presumption of legitimacy should be the rule, but its rebuttal should be allowed under the conditions and circumstances mentioned in Article 257 <C. C.l and adding thereto the case of rape of the wife dul'ing the S•1me period of time. Articles 255 and 259 may remain as they .:ire subject to a modification of Article 259 CC. C.> for clarity only by incorpore.ting to the opening paragraph thereof the foUowing phrase, "notwithstanding the provisions of Article 255". · It is, therefore, recommended that Articles 257, 258 and 259 of the Civil Code be redrafted to read as follows: "Art. 257. In case of the commission of adultery by the wife or rape of the wife at or &bout the time of conception of the child, but there was no physical impossibility of access by the husband to the Wife as set forth in Article 255, the presumption of legitimacy therein provided, may be overcome by proof that it is highly improbable for ethnic reasons that the child is that of the husbaiad. Fo1• purposes of this Article the adultery or the rape as the case may be need not be proved in a criminal case.'' rPattemP.d after House Bill No. 1019; Francisco, I Civil Code of the Philippines 683). "Art. 258. A child born within one hundred eighty days following the celebration of the marriage is prima. facie presumed to be legitimate.'' "Art. 259. If the marriage is dissolved by the dee.th of the husband, and the mother contracted another marriage within tliTeO hundred days following such death, the&e rules shall govem, notwithstanding the provisions of article 255: (ll A child bom before one hundred eighty days after the sol~niYtion of the subsequent marriage is disputably presumed to have been conceived during the former marria.ge, provided it be born within three hundred days after the death of the former husband; (2) A child bom after one hundred eighty days following the celebration of the subSequent marriage i.s primer. faoi.e presumed b have been conceived during such marriage, even though it be bol'D within the three hundred days after the death of the former husband.'' DECISION OF THE. . . <ConUnu•d r- page 248l of time on a particular style of packages any registration which might issue upon its application would not be limited to use upon such packages, and the p&ckages used could be changed by either party at any time. Ambrosia Chocolate Co. v. Myron Foster, 603 0. G. 545, 74 USPQ 307. U1ide-r well settled tW.thority <General Food Corporation v. Casein Company of America, Inc .• 27 C.C.P.A. 797, 108 F.2d 261 144 USPQ 33); Barton Mfg. Co. v. Hercules Powder Co., 24 C.C.P.A. 982, 88 F.2d 708 (33 USPQ 105); Sharp & Dohme, Incorporated v. Abbott Laboratories, 571 0. G. 519, 64 USPQ 247>, the difftn-ences in packaging ca• not affect the right to .. e. gistra.tion." (underscoring supp1ied} In view of the well-settled principle that an opposer need not own a trademark; a registered trademark; or have exclusive rights FOR lHE SAKE OF TRUlH BY POR~'IRIO C. DAVID I wish to make a vigorous exception to Mr. Federico B. Moreno's article ROLL OF HONOR (of judges of First Instance) as published in the Sunday Times Magazine of May 9, 1954. I do not question Mr. Moreno's right to praise a particular judge or group of judges. For the consumption of the public, he can even raise them to the level of an· Arellano, a Cardozo or Holmes. But, he has no right to do so at the expense of other judges whom he had degraded and ridiculed by publishing his conclusions about their efficiency on the basis of half-truths and mis-truths. The proficiency of a judge cannot be co:irrectly Jl)easured by the precise action of the Supreme Court on his appealed decisions and orders for only one year (last year) and on the applications for writs of certiorari, prohibition and mandamus decided in the preceding three years and on the basis of important cases settled by the Court of Appeals in 1952 and 1953 as published in the Official . Gazette. One who is familiar with the machinery of justice, like Mr. Moreno, who is a lawyer, should know that not all decisions are published in the Official Gazette. Hence, to rate a judge en what might have been published of his appealed decisions in the Official Gazette alone would be the height of irresponsibility. Take, for instance, the particular cases of Judges Barot, Moscoso and Ocampo, who are represented to have had Jlo affirmed · decisions of any sort during the period given. This is unbelievable. I regret that I do not have offhand the records CJf Judge Moscoso, wbo is in the Visayas, and of Judge Barot, who is in Pampanga. But from the records alone of Judge Ocampo as available in the Office of the Clerk of Court of the Court of First Instance of Manila, where said judge has been presiding since 1951, I can say that the conclusions of Mr. Moreno about these judges are at once preposterous and gratuitous, if not libelous. In this connection, I am supporting my stand with .the facts and figures appearing on the correct copies of Reports of Cases decided by Judge Ocampo and brought to the Appellate Courts, duly , certified by the clerks in charge, which are self-explanatory. Summarizing, I find: Criminal cases appealed •..•.............. , 34 Affirmed ... . ... . .•. . .... ....... ..... .. 8 Modified , • . • . • • • . . . • . . . . . . . . . . . . . . • . . • 3 Appeal abandoned ......... , . . . • . . • • . . . . 8 Reversed . . . . . . .. . . . . . . . .. • • • . .. . . . . . . . 2 Pending .............•......... ; . . . . . . . . 13 Civil cases appealed to Supreme Court . . . . . . 4 Pending . . . . . . . • . . . . . . . . . . . . . . . . . . . . . . . . 2 Affirmed .... , .• ,. . . . . . . . • • • . . • . . . .. . . 2 Reversed . . . . . . . . . . . . . . . . . . . . . . . . . . . . . None Civil cases appealed to the Court of Appeals . . 19 Pending . . . . . . . . . . . .. . • . . . . . . . . . . . . . . • 13 AJ;lpeal dismissed or abandoned .... , . . . . 4 Affirmed . . •. . . . . .. . • . . • . . • . . . . . .. . . . . . 2 Reversed . . .. • . . . . . . . . . . . • . . . . . . . . . . . . . Non~ If only to set tlle record straight and to oorrect any wrong impression which Mr. Moreno's article may have produced on the readers' minds, I have taken pains to dig up the above facts and figores. to a trademark, registered or unregistered; all he needs being something which is analogous to a trademark, and e. showing that he would probably be damaged by the registration sought; and in view of the egually well-settled principle that the appearance fJf the labels bearing the rival trademarks cannot affect the right to registration of one of them, the motion to dismiss the Opposition ia rejected, and the Respondent-Applicant is' directed to answer the same within fifteen (15) days of his receipt of a copy hereof. SO ORDERED. Manila, Philippines, October 31, 1952. <SGD.) CE1$DONIO AGRA VA Director of Patents May 31, 1954 LAWYERS JOURNAL 2159
pages: 247-248, 259