THE CUDAHY PACKING COMPANY, PETITIONER, VS. THE DIRECTOR OF PATENTS AND VEGETABLE OIL INDUSTRIES CORPORATION, RESPONDENTS.

Cudahy Packing versus Director of Patents

The Case

This is a petition for review brought by the Cudahy Packing Company, a foreign corporation organized under the laws of the State of Maine, against the Director of Patents and the Vegetable Oil Industries Corporation. The petitioner asks the Supreme Court to reverse the Director of Patents, who had dismissed its notices of opposition to two trademark applications filed by the private respondent. The case matters because it fixes the character of the power-of-attorney requirement in trademark practice before the Patent Office: the Court tells us whether that requirement is jurisdictional and rigid, or directory and capable of substantial compliance, especially where the attorney acts first and the formal authority arrives shortly after.

Procedural History

The dispute began in the Philippine Patent Office as two inter partes cases, numbers 226 and 227. The private respondent, Vegetable Oil Industries Corporation, applied to register the trademarks El Rey and VOIC El Rey with a crown device. The petitioner's local counsel filed a motion for extension of time to oppose, then an unverified notice of opposition, then a verified notice of opposition, and finally a formal power of attorney. The private respondent moved to dismiss the opposition on the ground that no written authority existed when the extension was sought. The Director of Patents agreed and dismissed the opposition by resolution dated November 29, 1962. The petitioner's motion for reconsideration was denied by order dated February 28, 1964. The petitioner then came to the Supreme Court on a petition for review.

Facts

On September 21, 1960, the Vegetable Oil Industries Corporation filed two applications with the Philippine Patent Office for separate registration of the trademarks El Rey, words only, and VOIC El Rey with a crown device, which it claimed to have used since June 1, 1960 on vegetable oil products for cooking, frying and baking. The applications were published in the June 5, 1961 issue of the Official Gazette, officially released on June 29, 1961.

On July 28, 1961, the law firm of Lichauco, Picazo and Agcaoili received a cablegram from the international trademark agents of the Cudahy Packing Company in Chicago, instructing it to oppose the two applications before July 31 on the basis of the client's prior registration of El Rey. Pressed for time, the law firm filed a petition on July 31, 1961 asking for a thirty-day extension within which to file a notice of opposition, explaining that it would take time to prepare the opposition papers in the United States and to have them authenticated by the Philippine Consul. The Director of Patents found the petition meritorious and gave the firm until August 29, 1961.

On August 25, 1961, the firm filed an unverified notice of opposition. The formal power of attorney from Cudahy was executed on August 7, 1961, and was submitted to the Patent Office on August 28, 1961, within the extension period. On September 25, 1961, within sixty days of the unverified notice, the duly verified notice of opposition was filed. The private respondent nevertheless insisted that the extension and everything that followed were void, because no written authority existed when the motion for extension was filed on July 31.

Issues

• Whether or not the requirement of a written power of attorney or authorization under Rule 19 of the Revised Rules of Practice before the Philippine Patent Office is jurisdictional, such that a motion for extension of time filed without it is null and void.
• Whether or not the cabled authorization sent by the petitioner's foreign agents substantially complied with Rule 19, although it did not come directly from the petitioner itself.
• Whether or not the term opposer in Rule 187(b) includes counsel acting for the opposer, so that counsel may validly request an extension of time to file a notice of opposition.

Applicable Provisions

Rule 19 of the Revised Rules of Practice before the Philippine Patent Office provides:

19. Power of attorney or authorization. Before any attorney-at-law or other recognized person will be allowed to take action in any case or proceeding, ex parte or inter partes, a written power of attorney or authorization must be filed in the particular case or proceeding.

This is the rule the private respondent invoked, and the Court construes it as directory rather than jurisdictional in the matter of a mere motion for extension.

Rule 187(b) of the same Rules provides:

Rule 187(b). Extension of time. For good cause shown, and upon payment of the required fee, the time for filing a notice of opposition may be extended by the Director for an additional thirty days, upon written request of the opposer.

The Court reads the word opposer to include counsel who acts for the opposer, which is the basis for upholding the extension.

Ruling

On the first issue, the Court held that the requirement of Rule 19 is not jurisdictional in nature, especially in regard to a mere motion for extension. There is nothing so important or so decisive in such a motion, insofar as the merits are concerned, as to render it valueless unless accompanied by a power of attorney. The Court noted that the extension may be sought precisely because the written authority has not yet arrived, and that to bar counsel from even filing the motion would pose a dilemma beyond solution. Since the Director of Patents in fact allowed the motion and granted it, his action cannot be considered necessarily null and void for non-compliance with Rule 19.

On the second issue, the Court held that the cabled authorization substantially conformed to the rule. The suggestion that it was insufficient because it did not come directly from the petitioner, the Court said, gives greater importance to form than to substance. Rule 19 does not provide that the authorization must be given by the party himself. The foreign agents had been duly instructed by the petitioner in a letter dated July 25, 1961 to oppose the applications, and the cablegram was sent pursuant to that instruction.

On the third issue, the Court refused a literal reading of the term opposer that would rule out a request filed by counsel. Such a reading, the Court said, is not borne out by the realities of law practice, whether before the courts or before administrative tribunals, where litigants are invariably represented by lawyers who sign the pleadings, provided they are duly authorized. The Court found sufficient authorization at least as far as the filing of the petition for extension was concerned.

Doctrine

The power-of-attorney requirement under Rule 19 of the Revised Rules of Practice before the Philippine Patent Office is not jurisdictional, particularly as to a mere motion for extension of time. Non-compliance does not automatically nullify the action taken, and the Director of Patents may grant the extension where the request is meritorious and the authority follows within the period granted. Substantial compliance suffices: an authorization by cablegram from the client's duly instructed foreign agents, followed by a formal power of attorney submitted within the extension period, satisfies the rule. And the term opposer in Rule 187(b) includes counsel acting for the opposer, consistent with the realities of law practice.

Disposition

The Supreme Court set aside the resolution of November 29, 1962 and the order of February 28, 1964 of the Director of Patents, and ordered him to give due course to the petitioner's notices of opposition, with costs against the private respondent.

Remember This

Memorize the line: the requirement of Rule 19 is not jurisdictional, especially in regard to a mere motion for extension. Examiners use this case to test the distinction between directory and jurisdictional rules, and the principle that procedural rules yield to substance where no prejudice is shown.