Case Digest (G.R. No. L-18289)
Facts:
The case of Andres Romero vs. Maiden Form Brassiere Co., Inc. and the Director of Patents (G.R. No. L-18289) was adjudicated by the Philippine Supreme Court, with a decision rendered on March 31, 1964. The conflict arose from a petition filed by Andres Romero, the petitioner, challenging the validity of the registration of the trademark "Adagio," associated with brassieres manufactured by the respondent, Maiden Form Brassiere Co., Inc., a foreign corporation. On February 12, 1957, the respondent filed an application to register the trademark "Adagio" with the Director of Patents, asserting that it had been first utilized in the United States on October 26, 1937, and in the Philippines on August 31, 1946. The application was approved for publication and subsequently granted a certificate of registration on October 17, 1957, after the Director concluded that the trademark was arbitrary and effectively distinguished the respondent's products.
On February 26
Case Digest (G.R. No. L-18289)
Facts:
- Filing and Registration of the Trademark
- Respondent Company Filing
- The respondent, Maiden Form Brassiere Co., Inc., a foreign corporation, filed an application for the registration of the trademark “Adagio” on February 12, 1957, with the Director of Patents under Republic Act No. 166.
- In its application, the respondent alleged that the trademark was first used in the United States on October 26, 1937, and in the Philippines on August 31, 1946, and had been continuously used in trade for over ten years.
- Approval and Certificate of Registration
- On August 13, 1957, the Director of Patents approved the publication of the trademark in the Official Gazette, finding it to be a fanciful and arbitrary use of a foreign word that did not fall within the restricted categories (such as surnames or geographical terms) under Section 4 of the Act.
- On October 17, 1957, a certificate of registration was issued to the respondent for the trademark “Adagio,” which it used on brassieres (classified under Class 40) by affixing a woven label bearing the mark.
- Petition for Cancellation and Subsequent Proceedings
- Petition by the Petitioner
- On February 26, 1958, petitioner Andres Romero filed a petition for the cancellation of the registration on several grounds:
- That “Adagio” had become a common descriptive name for a particular style or quality of brassiere.
- That the registration was obtained fraudulently or in contravention of Section 4 of Republic Act No. 166.
- That the application for registration did not comply with the provisions of Section 37, Chapter XI of the same Act.
- Evidence Presented
- Petitioner alleged that the mark had been used as a descriptive term by local manufacturers for almost six years, arguing that it was not distinctive of the respondent’s goods.
- The petitioner supported his argument with excerpts from the label printed on the brassiere package and testimonies from his witnesses (Bautista and Barro) who claimed that “Adagio” designated a certain style rather than serving as a trademark.
- The respondent, however, presented counter-evidence including:
- The fact that “Adagio” is a musical term meaning “slowly” or “in an easy manner,” used arbitrarily as a trademark.
- Correspondence and advertisements whereby the respondent warned against the unlawful use of the trademark by others, thereby underscoring its distinctiveness and the respondent’s claim of ownership.
- Administrative and Appellate Proceedings
- The Director of Patents rendered a decision on January 17, 1961, dismissing the petition for cancellation.
- Petitioner filed a motion for reconsideration on grounds of error in evidence and legal interpretation, which was denied by the Director’s resolution on March 7, 1961.
- Consequently, the petitioner appealed the decision.
- Additional Context on Use and Legal Requirements
- Use of the Trademark by Respondent
- The respondent had used “Adagio” exclusively and continuously in both the United States and the Philippines.
- The respondent also employed other musical terms, such as “Etude,” “Chansonette,” “Prelude,” “Overture,” and “Concerto,” for its various brassiere product lines, establishing a brand identity based on a musical theme.
- Section 37 and International Treaty Concerns
- The respondent’s application was filed under Section 2 of Republic Act No. 166 as amended by Republic Act 865, which allows registration provided the trademark is actually used in the Philippines.
- The applicability of Section 37 was noted to be contingent upon the Philippines’ participation in an international treaty on trademarks—a condition that had not been met, thus necessitating actual use in the country.
Issues:
- Descriptiveness Versus Distinctiveness
- Whether the trademark “Adagio” had become a mere common descriptive term for a particular style or quality of brassiere rather than serving as a distinctive trademark.
- Whether the evidence of local manufacturers using the term “Adagio” undermined the respondent’s exclusive rights to the mark.
- Allegations of Fraudulent Registration and Non-compliance
- Whether the registration of the trademark was obtained fraudulently or in contravention of Section 4 of Republic Act No. 166.
- Whether the respondent’s application failed to meet the procedural requirements under Section 37 of the Act due to the Philippines’ non-participation in any international trademark treaty.
- Non-Use and Abandonment
- Whether the period of non-use by the respondent, occasioned by government import restrictions, constituted abandonment of the trademark that would justify its free use by the petitioner.
Ruling:
- (Subscriber-Only)
Ratio:
- (Subscriber-Only)
Doctrine:
- (Subscriber-Only)