Borden Company v. Doctors Pharmaceuticals Inc.
REITERATIONFacts
1. The Antecedents: The underlying dispute concerns the registration of the trademark "Hemo-Vim" by Doctors Pharmaceuticals Inc. for a drug intended to treat anemias and act as a stomachic. The Borden Company, the petitioner, opposed this registration, asserting prior rights based on its own registered trademark "Hemo" for a vitamin and mineral fortified malted food drink preparation. 2. Procedural History: The Borden Company filed an opposition with the Director of Patents against the registration of "Hemo-Vim." The Director of Patents overruled this opposition in a decision dated August 31, 1950. The Borden Company subsequently sought review of this decision. 3. The Petition: The Borden Company filed a petition for certiorari under Rule 67 of the Rules of Court, seeking to have the decision of the Director of Patents reviewed by the Supreme Court and vacated. The petition was filed on October 12, 1950. A motion to dismiss was filed by Doctors Pharmaceuticals Inc. on the grounds that the petitioner lacked the right to appeal and had failed to follow proper appeal procedures within the statutory period. The Supreme Court ultimately dismissed the petition, with costs against the petitioner, without prejudice to any future action for cancellation of the trademark.
Issue(s)
Whether the respondent Doctors Pharmaceuticals Inc. is entitled to recover attorney's fees upon the withdrawal of the petition. Whether the dismissal of the petition should be with prejudice.
Ruling
The petition is dismissed, with costs against petitioner. The Court denied the claim for attorney's fees and did not rule on whether the dismissal should be with prejudice.
Ratio Decidendi
On Issue 1: The Court held that the respondent Doctors Pharmaceuticals Inc. was not entitled to recover attorney's fees. It reasoned that the filing of the petition for certiorari was not an act contemplated by Article 2208, paragraph 2, of the New Civil Code, which allows recovery of attorney's fees in certain litigations. The Court found that the application for trade-mark registration by Doctors Pharmaceuticals Inc. was not compelled by any act or omission of the petitioner, and the subsequent litigation was an offshoot of the granted application. The Court also invoked paragraph 11 of the same article, stating that the right to litigate should not be penalized, implying that attorney's fees are not to be awarded lightly. On Issue 2: The Court stated that it was not in a position to express an opinion as to whether the dismissal should be with prejudice because it had not reviewed the decision of the Director of Patents. The Court noted that Section 25 of Republic Act No. 166 authorizes actions to cancel registered trade-marks. Therefore, if the petitioner were to bring such an action, the competent court would then be in a position to determine whether the dismissal of the present petition should be with or without prejudice, as it would involve a substantive review of the trade-mark rights.
Main Doctrine
The Supreme Court reiterated that attorney's fees are not recoverable when the litigation arises from a party's own application or action, and not from any act or omission of the opposing party that compels them to litigate with third persons. Furthermore, the Court emphasized that it could not rule on whether a dismissal should be with prejudice without having reviewed the merits of the case, as such determination is typically made in an action that addresses the substantive rights involved.