Romero v. Maiden Form Brassiere Co.
REITERATIONFacts
1. The Antecedents: The underlying dispute concerns the registration and use of the trademark "Adagio" for brassieres. Andres Romero, the petitioner, sought to cancel the trademark registration granted to Maiden Form Brassiere Co., Inc. The core of the disagreement lies in whether "Adagio" is a descriptive term for brassieres, whether its use by others prior to registration invalidates the mark, and whether the registration was obtained fraudulently or in violation of trademark law. 2. Procedural History: Maiden Form Brassiere Co., Inc. applied for the registration of the trademark "Adagio" on February 12, 1957, asserting its use in the Philippines since August 31, 1946. The Director of Patents approved the mark for publication and subsequently issued a certificate of registration on October 17, 1957. On February 26, 1958, Andres Romero filed a petition for cancellation with the Director of Patents, alleging that "Adagio" was a common descriptive name, its registration was fraudulent, and the application was not filed correctly. After hearing the case, the Director of Patents dismissed Romero's petition on January 17, 1961. Romero's motion for reconsideration was denied on March 7, 1961, leading to the present appeal. 3. The Petition: Andres Romero, the petitioner, appeals to the Supreme Court from the decision of the Director of Patents. He argues that the trademark "Adagio" has become a common descriptive name for a style of brassiere and is therefore unregistrable. He also contends that the trademark was used by local manufacturers since 1948 without objection from Maiden Form, and that the registration was obtained fraudulently or contrary to specific provisions of Republic Act No. 166, particularly concerning its application under Section 37. The appeal seeks to overturn the dismissal of his petition for cancellation.
Issue(s)
Whether the trademark "Adagio" has become a common descriptive name for brassieres and is therefore unregistrable. Whether the registration of the trademark "Adagio" was obtained fraudulently or contrary to the provisions of Section 4 of Republic Act No. 166. Whether the application for registration complied with the provisions of Section 37 of Republic Act No. 166.
Ruling
The Supreme Court affirmed the decision of the Director of Patents, dismissing the petition for cancellation of the trademark "Adagio".
Ratio Decidendi
On the issue of "Adagio" being a common descriptive name: The Court held that "Adagio" is a musical term used in an arbitrary and fanciful sense as a trademark for brassieres. The fact that it might also designate a particular style does not affect its registrability as a trademark. The Court noted that respondent company also used other musical terms as trademarks for its products. The argument that widespread dissemination makes a mark descriptive was rejected, citing Winthrop Chemical Co. v. Blackman, which held that such dissemination does not justify the use of a trademark by others and that arbitrary trademarks cannot become generic in this manner. The Court also found that respondent company did object to the use of the trademark by others, contrary to petitioner's claim. On the issue of fraudulent registration or violation of Section 4 of Republic Act No. 166: The Court found no evidence of fraudulent registration. It noted that respondent company had exclusively used the trademark in the Philippines since 1932. The Court also addressed the contention that the trademark was used only to designate a style or quality. It found this untenable, as the sentence on the package did not conclusively indicate this, and the testimony of respondent's witness contradicted the claim. The testimonies of petitioner's witnesses were considered mere conclusions. The Court reiterated that the use of a mark for one type or style does not affect its validity as a trademark, citing Kiekhaefer Corp. v. Willys-Overland Motors and Minnesota Mining Co. v. Motloid Co. On the issue of compliance with Section 37 of Republic Act No. 166: The Court clarified that respondent company's application was filed under Section 2 of Republic Act No. 166, as amended, not Section 37. Section 37 applies when the Philippines is a party to an international convention or treaty relating to trademarks, which was not the case at the time. The Court explained that until the Philippines entered such a convention, actual use in the Philippines and allegation of such use in the application were required. The Court also addressed the claim of abandonment due to non-use. It held that non-use occasioned by government restrictions on importation does not constitute abandonment, as abandonment requires permanent, intentional, and voluntary disuse, not involuntary or compulsory non-use. Citing Callman on Unfair Competition and Trademark, the Court stated that disuse must be thorough-going. The use by other manufacturers did not indicate an intention to abandon. The Court further stated that the appropriation of the trademark by the appellant was not illegal because respondent company was the first user in the Philippines, and temporary non-use due to government restrictions did not constitute abandonment.
Main Doctrine
A musical term used arbitrarily as a trademark for brassieres, even if also used to designate a particular style, is registrable and does not become descriptive merely due to widespread dissemination or use by others, especially if such use is not accompanied by an intention to abandon the mark, and non-use due to government restrictions does not constitute abandonment.