romero vs maidenform case

7/18/2019 Romero vs Maidenform Case

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Republic of the Philippines

SUPREME COURT

Manila

EN BANC

G.R. No. L-18289 March 31, 1964

ANDRES ROMERO, petitioner,

vs.

MAIDEN ORM !RASSIERE CO., INC., a"# T$E DIRECTOR O PATENTS, respondents.

Alafriz Law Office for petitioner.Ross, Selph & Carrascoso for respondent Maiden Form Brassiere Co., Inc.

Office of the Solicitor eneral and !i"#rcio S. $%alle for respondent irector of 'atents.

!ARRERA, J.:

From the decision of the Director of Patents of !anuar" #$, #%&#' dismissin( his petition for cancellation of the re(istration of the trademar) *Ada(io* for

brassieres manufactured b" respondent Maiden Form Brassiere Co., +nc., petitioner Andres Romero, interposed this appeal.

n Februar" #-, #%$, respondent compan", a forei(n corporation, filed /ith respondent Director of Patents an application for re(istration pursuant to

Republic Act No. #&&' of the trademar) *Ada(io* for the brassieres manufactured b" it. +n its application, respondent compan" alle(ed that said

trademar) /as first used b" it in the 0nited 1tates on ctober -&, #%2$, and in the Philippines on Au(ust 2#, #%3&4 that it had been continuousl" used b"

it in trade in, or /ith the Philippines for over #5 "ears4 that said trademar) *is on the date of this application, actuall" used b" respondent compan" on the

follo/in( (oods, classified accordin( to the official classification of (oods Rule 6-' 7 Brassieres, Class 35*4 and that said trademar) is applied or affi8ed

b" respondent to the (oods b" placin( thereon a /oven label on /hich the trademar) is sho/n.

Actin( on said application, respondent Director, on Au(ust #2, #%$, approved for publication in the fficial 9a:ette said trademar) of respondent

compan", in accordance /ith 1ection $ of Republic Act No. #&& ;rademar) <a/', havin( found, inter alia, that said trademar) is *a fanciful and arbitrar"

use of a forei(n /ord adopted b" applicant as a trademar) for i ts product4 that it is neither a surname nor a (eo(raphical term, nor an" that comes /ithin

the purvie/ of 1ection 3 of Republic Act No. #&&4 and that the mar) as used b" respondent compan" convincin(l" sho/s that it identifies and

distin(uishes respondent compan"=s (oods from others.*

n ctober #$, #%$, respondent Director issued to respondent compan" a certificate of re(istration of /ith, trademar) *Ada(io*.

n Februar" -&, #%6, petitioner filed /ith respondent Director a petition for cancellation of said trademar), on the (rounds that it is a common

descriptive name of an article or substance on /hich the patent has e8pired4 that its re(istration /as obtained fraudulentl" or contrar" to the provisions o

1ection 3, Chapter ++ of Republic Act No. #&&4 and that the application for its re(istration /as not filed in accordance /ith the provisions of 1ection 2$,

Chapter >+ of the same Act. Petitioner also alle(ed that said trademar) has not become distinctive of respondent compan"=s (oods or business4 that it

has been used b" respondent compan" to classif" the (oods the brassieres' manufactured b" it, in the same manner as petitioner uses the same4 that

said trademar) has been used b" petitioner for almost & "ears4 that it has become a common descriptive name4 and that it is not re(istered in

accordance /ith the re?uirements of 1ection 2$a', Chapter >+ of Republic Act No. #&&.

+ssues havin( been @oined, the case /as heard and, after hearin(, respondent Director on !anuar" #$, #%&#' rendered the decision above adverted to.

Petitioner filed a motion for reconsideration of said decision, on the (rounds that #' it is contrar" to the evidence, and -' it is contrar" to la/. 1aid

motion /as denied b" respondent Director b" resolution of March $, #%&#.

ence, this appeal.

Appellant claims that the trademar) *Ada(io* has become a common descriptive name of a particular st"le of brassiere and is, therefore, unre(istrable. +

is ur(ed that said trademar) had been used b" local brassiere manufacturers since #%36, /ithout ob@ection on the part of respondent compan".

;his claim is /ithout basis in fact. ;he evidence sho/s that the trademar) *Ada(io* is a musical term, /hich means slo/l" or in an eas" manner, and

/as used as a trademar) b" the o/ners thereof the Rosenthals of Maiden Form Co., Ne/ or)' because the" are musicall" inclined. Bein( a musical

term, it is used in an arbitrar" fanciful' sense as a trademar) for brassieres manufactured b" respondent compan". +t also appears that respondent

compan" has, li)e/ise, adopted other musical terms such as *Etude* E8h. 7-', *Chansonette* E8h. 72', *Prelude* E8h. 73', *ver7ture* E8h. 7

&', and *Concerto* E8h. ', to identif", as a trademar), the different st"les or t"pes of its brassieres. As respondent Director pointed out, *the fact that

said mar) is used also to desi(nate a particular st"le of brassiere, does not affect its re(istrabilit" as a trademar)* ie)haefer Corp. v. ill"s7verland

Motors, +nc., ### 01P #5'.()wph*(.+t

+t is not true that respondent compan" did not ob@ect to the use of said trademar) b" petitioner and other local brassiere manufacturers. ;he records

sho/ that respondent compan"=s a(ent, Mr. 1ch/art:, /arned the alleson Department 1tore to desist from the sale of the *Ada(io* Ro"al Form

brassieres manufactured b" petitioner t.s.n., pp. -$7-6, ct. $, #%6', and even placed an advertisement E8hs. 2 G 3' in the local ne/spapers Manila

Dail" Bulletin, Manila ;imes, Foo)ien ;imes, and others' /arnin( the public a(ainst unla/ful use of said trademar) t.s.n., p. #, Au(. #$, #%%'. ;he

advertisement E8h. 0' in the Manila ;imes made b" respondent compan" on Februar" %, #%6, /as brou(ht to petitioner=s attention t.s.n., p. -3, ct.

$, #%6', /hich must have prompted him to file this present petition for cancellation, on Februar" -&, #%6.

n the other hand, respondent compan"=s lon( and continuous use of the trademar) *Ada(io* has not rendered it merel" descriptive of the product. +n

inthrop Chemical Co. v. Blac)man -&6 N1 &2', i t /as held that /idespread dissemination does not @ustif" the defendants in the use of the

trademar).

eronal has been /idel" sold in this countr" b" the plaintiff4 over ,-5,555 pac)a(es have been sold since #%#%. ;his is a conse?uence of the lon( and

continued use b" the plaintiff of this trademar) and is the result of i ts efforts to inform the profession and the public of its product. ;his /idespread

dissemination does not @ustif" the defendants in the use of this trademar). +f this ar(ument /ere sound, then ever" time a plaintiff obtained the result of



havin( the public purchase its article, that fact of itself /ould destro" a trademar). Arbitrar" trademar)s cannot become (eneric in this /a". !acobs v.

Beecham, --# 0.1. -&2, 2# 1. Ct. , <. Ed. $-%4 Coca7Cola Co. v. o)e Co. of American, -3 0.1. #32, 3# 1. Ct. ##2, & <. Ed. #6%. emphasis

supplied.'

Appellant ne8t contends that the trademar) *Ada(io at the time it /as re(istered in the Philippines' on ctober #$, #%$, had lon( been used b"

respondent compan", onl" *to desi(nate a particular st"le or ?ualit" of brassiere and, therefore, is unre(istrable as a trademar). +n support of the

contention, he alle(es that the sentence *Maidenform bras are pac)a(ed for "our ?uic) shoppin( convenience. For other popular Maidenform st"les /rit

for free st"le boo)let toH Maiden Form Brassiere Co., +nc -55 Madison Avenue, Ne/ or) #&, N..* printed on the pac)a(e E8h. ', sho/s that the

trademar) *Ada(io* is used to desi(nate a particular st"le or ?ualit" of brassiere. e also cites portions of the testimonies of his /itnesses Bautista and

Barro, to the effect that said trademar) refers to the st"le of brassieres sold in the stores of /hich the" are salesmen.

;his contention is untenable. 1aid sentence appearin( on the pac)a(e E8h. ', standin( alone, does not conclusivel" indicate that the trademar)

*Ada(io* is merel" a st"le of brassiere. ;he testimon" of Mr. 1ch/art:, /itness of respondent compan", belies petitioner=s claimH

. ;here is a statement at the bottom of E8hibit /hich reads, =;here is a Maidenform for ever" t"pe of fi(ure=. As "ou stated "ou are ver" familiar /ith

these bras manufacture b" Maidenform Brassiere Compan", /hat are these t"pes of fi(ures this E8hibit refer toI

A. ;his is a product sold primaril" in the 0nited 1tates the" have cold climate there, and a st"le to suit the climate and /e have different here. ;his )ind

of bra ver" seldom comes here. ;his t"pe is ver" e8pensive and sold primaril" in the 0nited 1tates. e do not sell it here4 it is ver" e8pensive an import

restrictions do not allo/ our dollar allocations for such sort.

As to the testimonies of Bautista and Barro, the" are me conclusions of said /itnesses. Note that /hen Bautista /as as)ed /h" he considered the

trademar) *Ada(io* as a st"le, he replied that the brand *Ada(io* is attached distin(uish the st"le. e stated as follo/sH

. ou said that those bras mentioned b" "ou such as Ada(io, Prelude, Alloette, are st"les, /ill "ou please tell us the reason /h" "ou said that those are

st"lesI

A. ou )no/ his brand li)e Ada(io, Alloette are @ust attached to the bras @ust to distin(uish the st"leH +t is not the main brand.

Barro, on the other hand, said that *Ada(io* is a mar). 1he declared as follo/sH

. ou state that "ou used to sell brassieres in the store in /hich "ou /or)4 /hen customers come to "our store and as) for brassieres, /hat do the"

usuall" as) from "ouI

A. ell, + tell "ou there are so man" t"pes and certain t"pes of people as) for certain brassiere. ;here are people /ho as) for Ro"al Form Ada(io and

there are others /ho as) for Duchess +deal Form, and so man" )inds of mar)s.

Brassieres are usuall" of different t"pes or st"les, and appellee has used different trademar)s for ever" t"pe as sho/n b" its labels, E8hibits 7-

Etude', 72 Chansonette', 73 Prelude', 7 Maidenette', and 7&, verture'. ;he mere fact that appellee uses *Ada(io* for one t"pe or st"le,

does not affect the validit" of such /ord as a trademar). +n. the case of ie)haefer Corp. v. ill"s7verland Motors, ### 01P #5, it /as held that the

fact that the /ord *urricane* /as used to desi(nate onl" one model of automobile, did not affect the validit" of that /ord as a trademar). +n Minnesota

Minin( Co. . Motloid Co., $3 01P -2, the applicant sou(ht to re(ister the letters *MM* in dia(onal relationship /ithin a circle. Applicant admitted that

this mar) /as used onl" for its medium price and medium ?ualit" denture7base materials. ;he Assistant Commissioner of Patents heldH

+t clearl" appears, ho/ever, that the mar) serves to indicate ori(in of applicant=s (oods4 and the fact that it is used on onl" one of several t"pes or (rades

does not affect its re(istrabilit" as a trade mar).

Appellant also claims that respondent Director erred in re(isterin( the trademar) in ?uestion, despite appellee=s non7compliance /ith 1ection 2$,

para(raphs # and 3 a' of Republic Act No. #&&.

;his contention flo/s from a misconception of the application for re(istration of trademar) of respondent. As /e see it, respondent=s application /as filed

under the provisions of 1ection - of Republic Act No. #&& as amended b" 1ection # of Republic Act 6& /hich reads as follo/sH

*1EC. -. hat are re(istrable J ;rademar)s, ... o/n b" persons, corporations, partnerships or associations domiciled ... in an" forei(n countr" ma" be

re(istered in accordance /ith the provisions of this ActH 'ro%ided , ;hat said trademar)s, trade7names, or service mar)s are actuall" in use in commerce

and services not less than t/o months in the Philippines before the time the applications for re(istration are filedH ...*

1ection 2$ of Republic Act No. #&& can be availed of onl" /here the Philippines is a part" to an international convention or treat" relatin( to trademar)s,

in /hich the trade7mar) sou(ht to be re(istered need not be use in the Philippines. ;he applicabilit" of 1ection 2$ has been commented on b" the

Director of Patents, in this /iseH

;rademar) ri(hts in the Philippines, /ithout actual use the trademar) in this countr" can, of course, be created artificiall" b" means of a treat" orconvention /ith another countr" or countries. 1ection 2$ of the present Philippine ;rademar) <a/, Republic Act No. #&& incorporated as Rule 6- in the

Rules of Practice for Re(istration of ;rademar)s' envisions the eventual entrance of the Philippines into such convention treat". +t is provided in said

section that applications filed thereunder need not alle(e use in the Philippines of the trade mar) sou(ht to be re(istered. ;he Philippines has, ho/ever

not "et entered into an" such treat" or convention and, until she does, actual use in the Philippines of the trademar) sou(ht to be re(istered and

alle(ation in the application of such fact, /ill be re?uired in all applications for ori(inal or rene/al re(istration submitted to the Philippine Patent ffice.

Circular Release No. 6.'

Appellant, li)e/ise, contends that the re(istration the trademar) in ?uestion /as fraudulent or contrar" 1ection 3 of Republic Act No. #&&. ;here is no

evidence to sho/ that the re(istration of the trademar) *Ada(io* /as obtained fraudulentl" b" appellee. ;he evidence record sho/s, on the other hand,

that the trademar) *Ada(io* /as first e8clusivel" in the Philippines b" a appellee in the "ear #%2-. ;here bein( no evidence of use of the mar) b" others

before #%2-, or that appellee abandoned use thereof, the re(istration of the mar) /as made in accordance /ith the ;rademar) <a/. 9rantin( that

appellant used the mar) /hen appellee stopped usin( it durin( the period of time that the 9overnment imposed restrictions on importation of

respondent=s brassiere bearin( the trademar), such temporar" non7use did not affect the ri(hts of appellee because it /as occasioned b" (overnment

restrictions and /as not permanent, intentional, and voluntar".



;o /or) an abandonment, the disuse must be permanent and not ephemeral4 it must be intentional and voluntar", and not involuntar" or even

compulsor". ;here must be a thorou(h7(oin( discontinuance of an" trade7mar) use of the mar) in ?uestion Callman, 0nfair Competition and

;rademar), -nd Ed., p. #23#'.

;he use of the trademar) b" other manufacturers did not indicate an intention on the part of appellee to abandon it.

*;he instances of the use b" others of the term =Bud/eiser, cited b" the defendant, fail, even /hen liberall" construed, to indicate an intention upon the

part of the complainant to abandon its ri(hts to that name. =;o establish the defense of abandonment, it is necessar" to sho/ not onl" acts indicatin( a

practical abandonment, but an actual intention to abandon. 1a8lehner v. Eisener G Mendelson Co., #$% 0.1. #%, -# 1. Ct. $ 3 <. Ed. &5'. Anheuser7

Busch, +nc. v. Bud/eiser Malt Products Corp., -6$ F. -3.'

Appellant ne8t ar(ues that respondent Director erred in declarin( ille(al the appropriation in the Philippines of the trademar) in ?uestion b" appellant

and, therefore, said appropriation did not affect appellee=s ri(ht thereto and the subse?uent re(istration thereof. Appellant ur(es that its appropriation ofthe trademar) in ?uestion cannot be considered ille(al under Philippine la/s, because of non7compliance b" appellee of 1ection 2$ of Republic Act No.

#&&. But /e have alread" sho/n that 1ection 2$ is not the provision invo)ed b" respondent because the Philippines is not as "et a part" to an"

international convention or treat" relatin( to trademar)s. ;he case of 0nited Dru( Co. v. Rectanus, -36 0.1. %5, 2% 1. Ct. 36, &2 <. Ed. #3#, cited b"

appellant, is not applicable to the present case, as the records sho/ that appellee /as the first user of the trademar) in the Philippines, /hereas

appellant /as the later user. 9rantin( that appellant used the trade7mar) at the time appellee stopped usin( it due to (overnment restrictions on certain

importations, such fact did not, as heretofore stated, constitute abandonment of the trademar) as to entitle an"one to its free use.

Non7use because of le(al restrictions is not evidence of an intent to abandon. Non7use of their ancient trade7mar) and the adoption of ne/ mar)s b" the

Carthusian Mon)s after the" had been compelled to leave France /as consistent /ith an intention to retain their ri(ht to use their old mar).

Abandonment /ill not be inferred from a disuse over a period of "ears occasioned b" statutor" restrictions on the name of li?uor. Nims 0nfair

Competition and ;rade7Mar) p. #-&%.'

+N +E F A<< ;E FRE9+N9, /e are of the opinion and so hold, that respondent Director of Patents did not err in dismissin( the present petition

for cancellation of the re(istered trademar) of appellee compan", and the decision appealed from is therefore hereb" affirmed, /ith costs a(ainst the

appellant. 1o ordered.

Ben-zon, C.., 'adilla, Ba#tista An-elo, La"rador, Re/es, .B.L., 'aredes, izon, Re-ala and Ma0alintal, ., conc#r.

Concepcion, ., too0 no part.

romero vs maidenform case

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