East Pacific Merchandising Corp. v. Director of Patents
REITERATIONFacts
The Antecedents: Marcelo T. Pua filed an application for the registration of a composite trademark consisting of the word "Verbena" and the representation of a Spanish lady for use on lotion, face powder, hair pomade, and brillantine. Pua assigned his rights to the trademark and pending application to East Pacific Merchandising Corporation (petitioner). The application was renewed under Republic Act (R.A.) No. 166. An examiner recommended allowance, and the application was approved for publication. Procedural History: Luis P. Pellicer filed an opposition, arguing that "Verbena" is a generic name and the lady figure is common in trade, thus neither could be exclusively appropriated. Pellicer also claimed the mark was deceiving the public and attached labels of his own registered trademark "Lupel Verbena." Petitioner moved to dismiss the opposition, citing a Court of Appeals decision ordering Pellicer to refrain from using the trademark "Verbena" and asserting its mark had acquired secondary significance. The Director of Patents initially denied registration, opining that "Verbena" was generically descriptive or misdescriptive and the lady figure was deceptively misdescriptive and common. However, upon reconsideration, the Director denied registration but reinstated Pellicer's opposition, stating the prior court decisions did not pass upon the validity of "Verbena" as a registerable trademark. The Petition: Petitioner sought review of the Director's resolution denying registration and the order reinstating Pellicer's opposition.
Issue(s)
Whether the Director of Patents has a ministerial duty to issue a certificate of registration once an application has been approved for publication. Whether the term 'Verbena' and the representation of a Spanish lady are registrable as trademarks for cosmetic products. Whether the trademark 'Verbena' acquired a secondary meaning under Section 4 of Republic Act No. 166.
Ruling
The Supreme Court affirmed the denial of the trademark registration and remanded the case to the Director of Patents for further proceedings. The Court held that the Director of Patents did not err in denying the registration of the trademark "Verbena" and the accompanying figure of a Spanish lady. The Court also affirmed the order reinstating respondent Pellicer's opposition.
Ratio Decidendi
On Issue 1: The Court held that the Director's decision to order publication is merely provisional and does not create a ministerial duty to register the mark. Citing Ong Ai Gui v. Director of Patents, the Court explained that the registration process involves two steps: the first is an internal office study prior to publication, and the second is the post-publication stage where the public may contest the application. If the Director were bound by the first decision, the second step of hearing oppositions would be rendered useless. The final approval or disapproval of the registration only occurs after the public has been given the opportunity to be heard. Thus, publication does not divest the Director of the prerogative to dismiss the application upon further review. On Issue 2: The term 'Verbena' is non-registrable because it is descriptive of a genus of fragrant plants, and its use in cosmetics suggests the product is perfumed with that specific extract. The Court adopted the rule from Caswell v. Davis, stating that words indicative of the character, kind, quality, or composition of a thing are the common property of mankind and cannot be exclusively appropriated. Allowing such appropriation would prevent other traders from truthfully describing the ingredients of their own products. Furthermore, the Director found that the petitioner did not even use verbena essence, making the term 'misdescriptive.' The representation of a Spanish lady was also deemed deceptively misdescriptive of the source, as the goods were produced locally rather than in Spain. On Issue 3: The claim of 'Secondary Meaning' failed because the petitioner did not meet the statutory requirement of five years of substantially exclusive and continuous use. Section 4 of Republic Act No. 166 requires that the mark become distinctive of the applicant's goods, with a prima facie presumption arising from five years of use prior to the application. In this case, the petitioner and its predecessor only began using the mark in 1947, the same year the application was filed. Moreover, the use was not exclusive, as respondent Pellicer had long been using 'Verbena' marks on his own cosmetic products and even held a registration for 'Lupel Verbena.' These facts precluded any finding of distinctiveness through secondary meaning.
Main Doctrine
A trademark that is generically descriptive or deceptively misdescriptive of the products, or where the term is the generic name of a flower and its use in cosmetic products evokes the idea of fragrance, cannot be exclusively appropriated and registered, even if combined with a distinctive figure, unless it has acquired a secondary meaning. The Director of Patents retains the prerogative to inquire into the registerability of a trademark, even after publication and dismissal of opposition, as the public interest in preventing deceptive marks outweighs private claims.