Case Digest (G.R. No. L-28554)
Facts:
The case of Unno Commercial Enterprises, Incorporated vs. General Milling Corporation and Tiburcio S. Evalle, the Director of Patents, involves a dispute over the ownership of the trademark "All Montana," used for wheat flour in the Philippines. The case was decided by the Supreme Court on February 28, 1983. Respondent General Milling Corporation had filed an application for the registration of the trademark "All Montana" on December 11, 1962, claiming it started using the mark on August 31, 1955. Simultaneously, Unno Commercial Enterprises, Incorporated had registered the trademark previously on March 8, 1962, claiming prior use starting from June 30, 1956 as an indentor or broker for S.H. Huang Bros. & Co. This led to an interference proceeding initiated by the Chief Trademark Examiner of the Philippines Patent Office to determine which party had prior rights to the trademark.
After hearings, the Director of Patents ruled in favor of General Milling C
Case Digest (G.R. No. L-28554)
Facts:
- Parties Involved
- Petitioner:
- Unno Commercial Enterprises, Incorporated, which acted as an exclusive distributor, indentor, or broker for S.H. Huang Bros. & Co., the local importer of wheat flour.
- Respondents:
- General Milling Corporation, which filed an application for the trademark "All Montana."
- Tiburcio S. Evalle, in his capacity as Director of Patents, responsible for the administrative proceedings in the Patent Office.
- Background and Trademark Registration
- Initial Trademark Registration:
- Petitioner had previously secured a certificate of registration for the trademark "All Montana" on wheat flour.
- The registration, however, was challenged on the ground of prior use and proper ownership.
- Filing by Respondent:
- On December 11, 1962, respondent General Milling Corporation filed an application for the registration of the trademark "All Montana" intended for use in the sale of wheat flour.
- Due to the pre-existing registration in favor of petitioner, an interference proceeding was instituted (Inter Partes Case No. 313) to determine the rightful owner and prior user of the trademark.
- Evidentiary Submissions and Claims Presented
- Respondent’s Evidence and Assertions:
- General Milling Corporation asserted that it first used the trademark "All Montana" on August 31, 1955.
- Presented a deed of assignment executed on September 20, 1962, through which Centennial Mills, Inc.—the original owner in the United States and prior user—transferred its rights to General Milling Corporation.
- Testimony (including that of Jose Uy) emphasized that the trademark was primarily geographically descriptive, signifying premium wheat flour that originated in Montana, USA.
- Petitioner’s Evidence and Arguments:
- Claimed use of the trademark "All Montana" beginning as early as 1955 and/or June 30, 1956 while acting as the distributor or broker for S.H. Huang Bros. & Co.
- Submitted documents, invoices, shipment records, and correspondences to support its claim of long-standing use and possession of the trademark.
- Contended that under Section 2-A of the Trademark Law (Republic Act No. 166), trademark ownership is not exclusive to manufacturers or producers, but can extend to any lawful dealer, importer, or distributor, provided that use in commerce is established.
- Administrative Proceedings and Rulings
- Decision by the Director of Patents:
- In the interference proceeding, the Director of Patents reviewed evidence from both parties.
- Determined that the trademark "All Montana" was primarily geographically descriptive and should be registered on the Supplemental Register subject to a proper claim of distinctiveness.
- Ruled in favor of respondent General Milling Corporation as the prior user based on a continuous chain of title established by the assignment from Centennial Mills, Inc.
- Ordered the cancellation of petitioner’s certificate of registration.
- Subsequent Actions:
- After the Director’s decision, petitioner filed a motion for reconsideration, which was denied.
- Petitioner then initiated a petition seeking reversal of the administrative decision and asserting its ownership over the trademark.
- Additional Context on Trademark Ownership and Use
- Assignment and Transfer of Rights:
- Centennial Mills, Inc., originally organized under the laws of Oregon, U.S.A., was the rightful owner and prior user of various wheat flour trademarks, including "All Montana."
- The deed of assignment from Centennial Mills, Inc. to General Milling Corporation was executed properly, notarized, and accompanied by the appropriate certification from the Secretary of State of Oregon.
- Limitations of Petitioner’s Role:
- The evidence established that petitioner functioned only as an importer, broker, or distributor.
- Petitioner did not demonstrate any valid transfer or assignment of trademark rights that would qualify it as the owner under the law.
Issues:
- Whether the petitioner, acting solely as an importer, broker, or distributor, can claim exclusive ownership and the right to register the trademark "All Montana" on wheat flour without evidence of a valid transfer or assignment.
- Whether the deed of assignment from Centennial Mills, Inc. to General Milling Corporation is sufficient to establish legitimate ownership and prior use of the trademark in the Philippines, thereby negating the petitioner’s claim.
- Whether the evidence presented by the petitioner, including shipment documents, invoices, and correspondence, is adequate to establish trademark ownership and priority of use over that of the respondent.
- Whether the Director of Patents properly exercised his authority to cancel the certificate of registration in the interference proceeding under the applicable rules and statutory provisions governing trademark matters.
Ruling:
- (Subscriber-Only)
Ratio:
- (Subscriber-Only)
Doctrine:
- (Subscriber-Only)