ANDRES ROMERO, PETITIONER, VS. MAIDEN FORM BRASSIERS CO. INC. AND THE DIRECTOR OF PATENTS, RESPONDENTS.

From the decision of the Director of Patents (of January 17, 1961)
dismissing his petition for cancellation of the registration of the
trademark “Adagio” for brassieres manufactured by respondent Maiden
Form Brassiere Co., Inc., petitioner Andres Romero, interposed this
appeal.

On February 12, 1957, respondent company, a foreign corporation,
filed with respondent Director of Patents an application for
registration (pursuant to Republic Act No. 166) or the trademark
“Adagio” for the Brassieres manufactured by it. In its application,
respondent company alleged that said trademark was first used by it in
the United States on October 26, 1937, and in the Philippines on August
31, 1946; that it had been continuously used by it in trade in, or with
the Philippines for over 10 years; that said trademark “is on the date
of this application, actually used by respondent company on the
following goods, classified according to the official classification of
goods (Rule 82)– Brassieres, Class 40”; and that said trademark is
applied or affixed by respondent to the goods by placing thereon a
woven label on which the trademark is shown.

Acting on said application, respondent Director, on August 13, 1957,
approved for publication in the Official Gazette said trademark of
respondent company, in accordance with Section 7 of Republic Act No.
166 (Trademark Law), having found, inter alia, that said
trademark is “a fanciful and arbitrary use of a foreign word adopted by
applicant as a trademark for its product: that it is neither a surname
nor a geographical term, nor any that conies within the purview of
Section 4 of Republic Act No. 166; and that the mark as used by
respondent company convincingly shows that it identifies and
distinguishes respondent company’s goods from others.”

On October 17, 1957, respondent Director issued to respondent company a certificate of registration of its trademark “Adagio”.

On February 26, 1958, petitioner filed with respondent Director a
petition for cancellation of said trademark, on the grounds that it is
a common descriptive name of an article or substance on which the
patent has expired; that its registration was obtained fraudulently or
contrary to the provision of Section 4, Chapter II of Republic Act No.
166; and that the application for its registration was not filed in
accordance with the provisions of Section 37, Chapter XI of the same
Act. Petitioner also alleged that said trademark has not become
distinctive of respondent company’s goods or business; that it has been
used by respondent company to classify the goods (the brassieres)
manufactured by it, in the same manner as petitioner uses the same;
that said trademark has been used by petitioner for almost 6 years;
that it has become a common descriptive name; and that it is not
registered in accordance with the requirements of Section 37(a),
Chapter XI of Republic Act No. 166.

Issues having been joined, the case was heard and, after hearing,
respondent Director (on January 17, 1961) rendered the decision above
adverted to.

Petitioner filed a motion for reconsideration of said decision, on
the grounds that (1) it is contrary to the evidence, and (2) it is
contrary to law. Said motion was denied by respondent Director by
resolution of March 7, 1961.

Hence, this appeal.

Appellant claims that the trademark “Adagio” has become a common
descriptive an of a particular style of brassiere and is, therefore,
unregistrable. It is urged that said trademark had been used by local
brassiere manufacturers since 1948, without objection on the part of
respondent company.

This claim is without basis in fact. The evidence shows that the
trademark “Adagio” is a musical term, which means slowly or in an easy
manner, and was used as a trademark by the owners thereof (the
Rosenthals of Maiden Form Co., New York) because they are musically
inclined. Being a musical term, it is used in an arbitrary (fanciful)
sense as a trademark for brassieres manufactured by respondent company.
It also appears that respondent company has, likewise, adopted other
musical terms such as “Etude” (Exh. W-2), “Chansonette” Exh. W-3),
“Prelude” (Exh. W-4), “Olver-ture ” (Exh. W-6), and “Concerto” (Exh.
V), to identify, as a trademark, the different styles or types of its
brassieres. As respondent Director pointed out, “the fact that said
mark is used also to designate a particular style of brassiere, does
not affect its registrability as a trademark” (Kiekhaefer Corp. vs.
Willys Overland Motors, Inc., 111 USPQ 105).

It is not true that respondent company did not object to the use of
said trademark by petitioner and other local brassiere manufacturers.
The records show that respondent company’s agent, Mr. Schwarzt, warned
the Valleson Department Store to desist from the sale of the “Adagio”
Royal Form brassieres manufactured by petitioner (t.s.n., pp. 27-28,
Oct. 7, 1958), and even placed an advertisement (Exhs. 3 & 4) in
the local newspapers (Manila Daily Bulletin, Manila Times, Fookien
Times, and others) warning the public against unlawful use of said
trademark (t.s.n., p. 15 Aug. 17, 1959). The advertisement (Exh. U) in
the Manila Times made by respondent company on February 9, 1958, was
brought to petitioner’s attention (t.s.n., p. 24, Oct. 7, 1958), which
must have prompted him to file this present petition for cancellation,
on February 26, 1958.

On the other hand, respondent company’s long and continuous use of
the trademark” Adagio” has not rendered it merely descriptive of the
product. In Winthrop Chemical Co. v. Blackman (268 NYS 653), it was
held that widespread dissemination does not justify the defendants in
the use of the trademark.

“Veronal has been widely sold in this country by the
plaintiff; over 5,250,000 packages have been sold since 1919. This is a
consequence of the long and continued use by the plaintiff of this
trademark and is the result of its efforts to inform the profession and
the public of its product. This widespread dissemination does not justify the defendants on the use of this trademark.
If this argument were sound, then every time a plaintiff obtained the
result of having the public purchase of its article, that fact of
itself would destroy a trademark. Arbitrary trademarks cannot become
generic in this way. Jacobs vs. Beecham, 221 U.S. 263, 31 S. Ct. 555,
55 h. Ed. 729; Coca-Cola Co. vs. Koke Co. of America, 254 U.S. 143, 41
S. Ct. 113, 65 L. Ed. 189.” (Underscoring supplied.)

Appellant next contends that the trademark “Adagio” at the time it
was registered (in the Philippines) on October 17, 1957, had long been
used by respondent company, only “to designate a particular style or
quality of brassiere and, therefore, is unregistrable as a trademark.”
In support of the contention, he alleges that the sentence “Maidenform
bras are packaged for your quick shopping convenience. For other
popular Maidenform styles write for free style booklet to: Maiden Form
Brassiere Co., Inc., 200 Madison Avenue, New York 16, N.Y.” printed on
the package (Exh. W), shows that the trade “Adagio” is used to
designate a particular style or Quality of brassiere. He also cites
portions of testimonies of his witnesses Bautista and Barro, to the
effect that said if trademark refers to the style of brassieres sold in
the stores of which they are salesmen.

This contention is untenable. Said sentence appearing on the package
(Exh. W), standing alone, does not conclusively indicate that the
trademark “Adagio” is merely fill a style of brassiere. The testimony
of Mr, Schwartz, If witness of respondent company, belies petitioner’s
claim:

“Q. There is a statement at the bottom of Exhibit W
which reads, ‘There is a Maidenform for every type of figure’. As you
stated you are very familiar with these bras manufactured by Maidenform
Brassier Company, what are these types of figures this Exhibit W refer
to?

“A. This is a product sold primarily in the United
States, they have cold climate there, and a style to suit the climate
and we have different here. This kind of bra very seldom comes here.
This type is very expensive and sold primarily in the United States. We
do not sell it here; it is very expensive and import restrictions do
not allow our dollar allocations for such sort.”

As to the testimonies of Bautista and Barro, they are mere
conclusions of said witnesses. Note that when Bautista was asked why he
considered the trademark “Adagio” as a style, he replied that the brand “Adagio” is attached to distinguish the style. He stated as follows:

“Q. You said that those bras mentioned by you such
as Adagio, Prelude, Alloette, are styles, will you please tell us the
reason why you said that those are styles?

“A. You know this
brand like Adagio, Alloette are just attached to the bras just to
distinguish the style. It is not the main brand.”

Barro, on the other hand, said that “Adagio” is a mark. She declared as follows:

“Q. You state that you used to sell brassieres in
the store in which you work; when customers come to your store and ask
for brassieres, what do they usually ask from you?

“A. Well,
I tell you there are so many types and certain types of people asking
for certain brassiere. There are people who ask for Royal Form, Adagio,
and there are others who ask for Duchess Ideal Form, and Bo many kinds
of marks.”

Brassieres are usually of different types or styles, and appellee
has used different trademarks for every type as shown by its labels,
Exhibits W-2 (Etude), W-3 (Chansonette), W-4 (Pre-lude), W-5
(Maidenette), and W-6 (Overture). The mere fact that appellee uses
“Adagio” for one type or style, does not affect the validity of
suCHword as a trademark. In the case of Kiekhaefer Corp.; us.
Willys-Overland Motors, 111 USPQ 105, it was held that the fact that
the work “Hurricane” was used to designate only one model of
automobile, did not affect the validity of that word as a trademark. In
Minnesota Mining Co. vs. Motloid Co., 74 USPQ 235, the applicant sought
to register the letters “MM” in diagonal relationship within a circle.
Applicant admitted that this mark was used only for its medium price
and medium quality denture base materials. The Assistant Commissioner
of Patents held:

“It clearly appears, however, that the mark serves
to indicate origin of applicant’s goods; and the fact that it is used
on only one of several types or grades does not affect its
registrability as a trademark.”

Appellant also claims that respondent Director erred in registering
the trademark in question, despite appellee’s non-compliance with
Section 37, paragraphs 1 and 4 (a) of Republic Act No. 166.

This contention flows from a misconception of the application for
the registration of trademark of respondent company. As we see it,
respondent’s application was filed under the provisions of Section 2 of
Republic Act No. 166 as amended by Section 1 of Republic Act 865 which
reads as follows:

“Sec. 2. What are registrable. Trademarks, x x x
owned by persons, corporations, partnerships or associations domiciled
x x x in any foreign country may be registered in accordance with the
provisions of this Act; Provided, That said trademarks, trade-names, or
service marks are actually in use in commerce and services not less
than two months in the Philippines before the time the applications for
registrations are filed: x x x”

Section 37 of Republic Act No. 166 can be availed of only where the
Philippines is a party to an international convertion or treaty
relating to trademarks, in which case the trademark sought to be
registered need not be in use in the Philippines. The applicability of
Section 37 has been commented on by the Director of Patents, in this
wise:

“Trademark rights in the Philippines, without actual
use of the trademark, in this country can, of course, be created
artificially by means of a treaty or convention with another country or
countries. Section 37 of the present Philippine Trademark Law, Republic
Act No. 166, (incorporated as Rule 82 in the Rules of Practice for
Registration of Trademarks) envisions the eventual entrance of the
Philippines into such convention, or treaty. It is provided in said
section that applications filed thereunder need not allege use in the
Philippines of the trademark sought to be registered. The Philippines
has, however, not yet entered into any such treaty or convention and,
until she does, actual use in the Philippines of the trademark sought
to be registered and alegation in the application of such fact, will be
required in all applications for original or renewal registration
submitted to the Philippine Patent Office”. (Circular Release No. 8.)

Appellant, likewise, contends that the registration of the trademark
in question was fraudulent or contrary to Section 4 of Republic Act No.
166. There is no evidence to show that the registration of the
trademark “Adagio” was obtained fraudulently by appellee. The evidence
on record shows, on the other hand, that the trademark “Adagio” was
first used exclusively in the Philippines by appellee in the year 1932.
There being no evidence of use of the mark by others before 1932, or
that appellee abandoned use thereof, the registration of the mark was
made in accordance with the Trademark Law. Granting that appellant used
the mark when appellee stopped using it during the period of time that
the Government imposed restrictions on importation of respondent’s
brassiere bearing the trademark, such temporary non-use did not affect
the rights of appellee because it was occasioned by government
restrictions and was not permanent, intentional, and voluntary.

“To work an abandonment, the disuse must be
permanent and not ephemeral; it must be intentional and voluntary, and
not involuntary or even compulsory. There must be a thoroughgoing
discontinuance of any trade-mark use of the mark in question” (Callman,
Unfair Competition and Trademark, 2nd Ed., p. 1341).

The use of the trademark by other manufacturers did not indicate an intention on the part of appellee to abandon it.

“The instances of the use by others of the term
‘Budweiser’, cited by the defendant, fail, even when liberally
construed, to indicate an intention upon the part of the complainant to
abandon its rights to that name. ‘To establish the defense of
abandonment, it is necessary to show not only acts indicating a
practical abandonment, but an actual intent to abandon, (Sax-lehner vs.
Eisner & Mendelson Co., 179 U.S. 19, 21 S. Ct. 7 (45 L. Ed. 60).”
(Anheuser-Busch, Inc. v. Budweiser Malt Products Corp., 287 E. 245).

Appellant next argues that respondent Director erred in declaring
illegal the appropriation in the Philippines of the trademark in
question by appellant and, therefore, said appropriation did not affect
appellee’s right thereto and the subsequent registration thereof.
Appellant urges that its appropriation of the trademark in question
cannot be considered illegal under Philippine laws, because of
non-compliance by appellee of Section 37 of Republic Act No. 166. But
we have already shown that Section 37 is not the provision invoked by
respondent because the Philippines is not as yet a party to any
international convention or treaty relating to trademarks. The case of
United Drug Co. vs. Rectanus, 248, U.S. 90, 39 S. Ct. 48, 63 L. Ed.
141, cited by appellant, is not applicable to the present case, as the
records show that appellee was the first user of the trademark in the
Philippines, whereas appellant was the later user. Granting that
appellant used the trademark at the time appellee stopped using it due
to government restrictions on certain importations, such fact did not
as heretofore stated, constitute abandonment of the trademark as to
entitle anyone to its free use.

“Non-use because of legal restrictions is not
evidence of an intent to abandon. Non-use of their ancient trademark
and the adoption of new marks by the Carthusian Monks after they had
been compelled to leave France was consistent with an intention to
retain their right to use their old mark. Abandonment will not be
inferred from a disuse over a period of years occasioned by statutory
restrictions on the same of liquor.” (Nims, Unfair Competition and
Trade-Marks, p. 1269).

IN VIEW OF ALL THE FOREGOING, we are of the opinion and so hold,
that respondent Director of Patents did not err in dismissing the
present petition for cancellation of the registered trademark of
appellee company, and the decision appealed from is therefore hereby
affirmed, with costs against the appellant.

SO ORDERED.

Bengzon, C. J., Padilla, Bautista Angelo, Labrador, Reyes J.B.L., Paredes, Dizon, Regala, and Makalintal, JJ., concur.
Concepcion, J., took no part.