G.R. No. L-3952. December 29, 1953

Masso
Hermanos, S. A., is the registered owner under Act No. 666 of the
trademark composed of the word “Cosmopolite” used on canned fish. Said
trademark was first registered and the certificate of registration No.
1881 issued therefor on March 16, 1917, by the Director of the
Philippine Library and Mureum for a period of thirty years, under the
provisions of Act No. 666. A renewal of the certificate of registration
was applied for and issued on June 6, 1947 by the Director of the
Bureau of Commerce also under the provisions of said Act.

On
June 14, 1948, the petitioner, Masso Hermanos, applied to the Director
of Patents for a new certificate of registration of said trademark
under the provisions of section 41(a) of Republic Act No. 166.

A trademark examiner of the Patents Office denied the petition on the
ground that the word “Cosmopolite”, as a trademark for canned fish is
descriptive of said goods and, therefore, could not have been legally
registered as a trademark under the provisions of Act No. 666, and,
consequently, is not entitled to registration under section 41(a)
of Republic Act No. 166. The petitioner appealed from said ruling to
the Director of Patents on the ground that the examining officer was
not authorized to re-examine certificates which were originally issued
under Act No. 666 and surrendered for re-registration under section 41(a)
of Republic Act No. 166. The Director of Patents affirmed the ruling of
the trademark examiner; hence, the present petition for certiorari was
filed in this court.

Section 41 of Republic Act No. 166 reads as follows:

“Reservation
in favor of prior registration—Owners of marks or trade-names
registered under the provisions of the laws in force prior hereto, the
registrations of which are still subsisting under the said laws, are
hereby granted the right;

(a) Within one year
after the taking effect of this Act to surrender their certificates of
registration and procure the issuance of new certificates in which
event they shall be entitled to the benefits and subject to the
provisions of this act; or

(b) Within one year
before the expiration of the period for which the certificate of
registration was issued or renewed the registrant may renew the
registration upon filing an application therefore, as provided in
section fifteen, Chapter III hereof. If said application is granted, a
renewal certificate shall be issued by the Director in accordance with
the provisions of this Act.”

It is clear that the
renewal of the registration under section 41 of Republic Act No. 166 is
subject to the following requirements:

(1) The trademark must have been registered under the old laws:

(2) The registration must be subsisting under said laws; and

(3)
The certificate issued under the old laws must have been surrendered to
the Patents Office within one year from the time Republic Act No. 166
went into effect, which was on June 20, 1947.

There is no question that the above requirements Nos. (1) and (3) have been complied with by the petitioner.

The question is whether the condition required under No. (2) exists in favor of the petitioner.

The respondent Director of Patents contends that the original
registration of the trademark under Act No. 666 was “null and void ab initio” because the word “Cosmopolite” is descriptive and, therefore, the registration thereunder is not subsisting.

Is the word “Cosmopolite” descriptive? Section 13 of Act No. 666
provides that—”* * * But no alleged trademark * * * shall be registered
which is merely the name, quality or description of the merchandise
upon which it is to be used * * *. In an application for registration,
the Director of the Bureau of Commerce shall decide the presumptive
lawfulness of claim to the alleged trademark.”

The word
“Cosmopolite” does not give the name, quality, or description of the
canned fish for which it is used. It does not even describe the place
of origin, for it does not indicate the country or place where the
canned fish was manufactured. It is a very general term which does not
give the kind or quality of the goods. For example, a dealer in shoes
cannot register a trademark “Leather Shoes” because that would be
descriptive and it would be unjust to deprive other dealers in leather
shoes of the right to use the same words with reference to their
merchandise.

The court is, therefore, of the opinion that
the registration of the trademark “Cosmopolite” under Act No. 666 was
valid and is subsisting. The Director of Patents should not for light
and unsubstantial reasons reverse the ruling of the former officer in
charge of trademark registrations, which has been accepted and in force
since 1917 up to the present.

In view of the foregoing, the
ruling of the respondent Director of Patents is set aside and he is
ordered to issue to the petitioner a new certificate of registration of
the trademark in exchange for the old one No. 1881 surrendered to him
on June 18, 1948. Without pronouncement as to costs. So ordered.

Paras, C. J., Pablo, Bengzon, Padilla, Tuason, Reyes, Bautista Angelo and Labrador, JJ., concur.