Unno Commercial Enterprises, Inc. v. General Milling Corporation
REITERATIONFacts
The Antecedents: Respondent General Milling Corporation (GMC) filed an application for the registration of the trademark "All Montana" for wheat flour on December 11, 1962. This application interfered with the existing registration of the same trademark in favor of petitioner Unno Commercial Enterprises, Inc. (Unno). GMC alleged prior use of the trademark since August 31, 1955, and a subsequent license through a deed of assignment from Centennial Mills, Inc. on September 20, 1962. Unno, on the other hand, claimed use of the trademark since June 30, 1956, as an indentor or broker for S.H. Huang Bros. & Co., and asserted its registration on March 8, 1962. Procedural History: The Director of Patents, after hearing, ruled in favor of GMC, adjudging it as the prior user but remanding the application for determination of distinctiveness due to the trademark being geographically descriptive. The Director also ordered the cancellation of Unno's certificate of registration. Unno's motion for reconsideration was denied. The Petition: Unno filed the instant petition seeking reversal of the decision, praying to be declared the owner and prior user of the trademark "All Montana" on wheat flour. Unno argued that as an indentor or broker, it acquired ownership through actual use, citing Section 2-A of Republic Act No. 166.
Issue(s)
Whether Unno Commercial Enterprises, Inc., as an indentor or broker, acquired ownership of the trademark "All Montana" through actual use. Whether the Director of Patents erred in ordering the cancellation of Unno's certificate of registration in an interference proceeding. Whether the Director of Patents correctly determined that General Milling Corporation was the prior user of the trademark "All Montana".
Ruling
The Supreme Court affirmed the decision of the Director of Patents. It held that Unno Commercial Enterprises, Inc. did not acquire ownership of the trademark "All Montana" by merely acting as an importer, broker, or indentor. The Court upheld the Director's finding that General Milling Corporation was the prior user and ordered the cancellation of Unno's registration. The Court also affirmed the Director's authority to order cancellation within an interference proceeding.
Ratio Decidendi
On the issue of Unno's ownership as an indentor/broker: The Court reiterated the principle that the right to register a trademark is based on ownership. It clarified that an importer, broker, indentor, or distributor acquires no rights to the trademark of the goods they deal with in the absence of a valid transfer or assignment from the owner. The Court found that Unno's claim of ownership through actual use as an indentor or broker was unsubstantiated and contrary to established jurisprudence. The evidence showed that Centennial Mills, Inc. was the original owner and had assigned the trademark to General Milling Corporation. Therefore, Unno's argument that Section 2-A of Republic Act No. 166 allowed appropriation by anyone who lawfully deals in merchandise was rejected in this context, as the mark was already appropriated by the manufacturer. On the Director of Patents' authority to order cancellation: The Court found no merit in Unno's contention that the Director of Patents could not order cancellation in an interference proceeding. Citing Rule 178 of the Rules of the Patent Office in Trademark Cases, the Court held that the Director is expressly authorized to cancel a registered mark in an inter partes case, which includes interference proceedings. The Court noted that interference proceedings are a form of inter partes cases, which also encompass cancellation proceedings under Rule 166. On General Milling Corporation's status as prior user: The Court affirmed the Director of Patents' finding that General Milling Corporation was the prior user. Ample evidence, including a deed of assignment from Centennial Mills, Inc., established Centennial Mills' ownership and prior use in the Philippines. The Court found that the use of the trademark by Unno, as a mere importer and distributor, inured to the benefit of the foreign manufacturer, Centennial Mills, Inc. The Director of Patents' factual findings, supported by substantial evidence and made without grave abuse of discretion, were deemed conclusive on the Supreme Court. The deed of assignment, along with supporting certifications, sufficiently proved the chain of title and prior adoption and use by GMC through its assignor.
Main Doctrine
An importer, broker, indentor, or distributor acquires no rights to a trademark of the goods they deal with in the absence of a valid transfer or assignment of the trademark from the owner. Only the owner of a trademark may apply for its registration.