CHAMPION PAPER PRODUCTS MFG. CORPORATION, PETITIONER, VS. HON. TIBURCIO S. EVALLE, IN HIS CAPACITY AS DIRECTOR OF PATENTS PHILIPPINES PATENT OFFICE, DEPARTMENT OF COMMERCE & IND…

On December 29, 1955, petitioner Champion Paper Products Manufacturing Corporation, a domestic corporation
with business address at Room 319, Equitable
Bank Building, Juan Luna, Manila, filed with the Philippines Patent
Office petition for the registration of the trademark CHAMPION – with a design shown on the drawing attached
thereto – alleging that it had been exclusively and continuously using said
trademark since January 31, 1955 on the goods (Class 38) specified in the
Statement of its President & General Manager attached to the petition.

After the publication required by law and upon the favorable
recommendation of the Supervising Trademark Examiner, the Director of Patents, on June 22, 1959, issued a certificate of registration (No.
7410) of said trademark in favor of the petitioner.

On August 31, 1959, private respondent Champion Papers, Inc.
(formerly Champion Paper and Fibre Company), a
foreign corporation, filed with the same office en application (No. 7228) for
the registration of the trademark CHAMPION (word only).  This trademark was registered in its name on June 11, 1952 (Certificate No. 3434)
but said registra­tion was cancelled on October 30, 1958 for failure of the registrant to file
the affidavit of use required by Section 12 of the Trademark Law.

Believing that private respondent’s application No. 7228 might
adversely affect petitioner’s registration of trademark No. 7410, the Trademark
Examiner, on August 11, 1960, declared an interference between the two, in
accordance with Section 10-A of Republic Act No. 166, as amended (Inter Partes Case No.
194).

On September 30, 1960, petitioner filed motion to dissolve the interference on the ground that,
although the trademarks were identical and the goods end products of the
interested parties belonged to the same classification (Class 38), the danger
of confusion or deception to the buying public was remote because the products
involved were not bought by the same class of purchasers.  Private respondent formally opposed the
motion.

On August 15, 1961,
the Chief Trademark Examiner of the Philippines Patent Office issued a resolution
dissolving the interference, holding that the likelihood of confusion was
remote as the average purchasers and the essential characteristics of the goods
on which the trademarks were used were not the same.  On November 20 of the same year, private
respondent appealed from said resolution to the Director of Patents.

Subsequently, the
interference case (Inter Partes Case No. 194) was set
for hearing on January 25, 1962, apparently for the purpose of receiving
evidence for the determination of the question of “confusing
similarity” of the trademarks mentioned heretofore.  In view of this, on January 10 of the same
year, private respondent filed a
motion praying that it be
allowed to file its appeal brief within 30 days from the date the interference case would have been tried.  On January 19, 1962, petitioner filed an opposition to the
motion praying, in turn, that private respondents appeal be dismissed for its
failure to file its brief within 60 days from the date of the appeal, pursuant
to Rule 203 of the Revised Rules of
Practice.

On the date set for the
hearing of the interference case, petitioner questioned the authority of the Hearing
Officer to hold it, alleging that the interference had already been dissolved
and that the case was already on
appeal to the Director of Patents.  After
the parties had submitted memoranda on the matter, the Director of Patents, on
April 3, 1962, issued a resolution
(No. 4, Series of 1962; Annex T attached to Petition) setting aside the action
of the Chief Trademark Examiner dissolving the interference and setting the
case for hearing on April 30, 1962. 
Petitioner moved for a reconsideration of the same and, on February
13, 1963, the
Director of Patents issued an order of this tenor:

“WHEREFORE, it is hereby ordered as follows:

(1)    
Resolution No. 4 (Series of 1962),
dated April 3, 1962
is hereby set aside;

(2)    
The appeal of the Junior-Party-
Applicant should be accordingly docketed as an ex parte
case;

(3)    
This interference case is hereby
suspended pending determination of the appeal; and

(4)    
The Junior Party-Applicant is re­quired
to file its Brief in the appealed case within thirty (30) days from the date it
was docketed.” (Annex Z attached to the Petition).

The above-quoted order of
the respondent Director of Patents was based on the following considerations:

“…     …        … that when the interference was
dissolved by the Chief Trade­mark Examiner, the Junior Party-Applicant
seasonably appealed.  The appeal
however, was not properly docketed.

“Therefore, Rules 200 and 205 of the Rules of Practice in Trademark Cases should govern the
proceedings, wherein the Senior Party-Applicant is not a party, it being an ex parte case
– a contest between the Chief Trademark Examiner end the Junior
Party-Applicant.

“Meanwhile, the interference case should be suspended, pending
determination of the appeal.  The last
sentence, first paragraph, of Rule 183 of
the Revised Rules of Practice provides that transmitting the motion to dissolve
for determination will act as a stay of the interference proceedings
pending the determination of the motion. 
The issue of whether or not the interference was properly declared and
whether or not the Resolution of the Chief Trademark Examiner dissolving the
interference was proper remains to be
finally resolved upon the institution of the appeal.” (Annex Z,
supra).

Consequently, petitioner filed the present petition for
certiorari, prohibition and mandamus, with a prayer for the issuance of a writ of preliminary injunction, (1) to set
aside the resolution of the Director of Patents of February 13, 1963; (2) to order the dismissal of private
respondent’s appeal; (3) to declare the resolution of the Chief
Trademark Examiner dismissing the interference, final
and unappealable, and finally, (4) to restrain said officer from taking
cognizance of said appeal pending determination of the petition.

Petitioner’s main
argument is that, under Rule 203 of the Revised Rules of Practice in
Trademark Cases specifically providing
that appellant shall file his brief within sixty days from date of
appeal (notice of appeal) and that upon its failure to do so, the appeal shall
stand dismissed, the Director of
Patents has no power to give due course to private respondent’s appeal
mentioned heretofore.

The present action for certiorari etc. arose because of wrong
procedural steps taken in the interference proceeding – (INTER PARTES CASE
No. 194).

According to the record,
on August 11, 1960,
the Chief Trademark Examiner declared an interference
between the trademarks of the petitioner and of the private respondent
herein.  On August 15, 1961, upon motion of petitioner, said
Examiner dissolved the interference. 
From this resolution, private respondent appealed to the Director of
Patents.

It appears, however, that notwithstanding the appeal, the
interference case was set for hearing on January 25, 1962 apparently for the purpose of receiving
evidence bear­ing upon the alleged “confusing similarity” of the
trade­marks used by the parties.  This
hearing, in our opinion, was uncalled for and unjustified, in view of
the fact that the interference had been dissolved and the order of dis­solution
was already the subject of an appeal
timely taken to the Director of Patents.

Because of the hearing set for January 25, 1962, the private
respondent filed a motion praying that it be allowed to file its appeal brief
within 30 days from the date the interference case would have been tried.  Is far as the record discloses, this trial has not
been held to this date, nor has
private respondent’s motion aforesaid been resolved.  As a matter of fact, the resolution attached
to the petition as Annex Z (Record p. 124) issued by the respondent Director of
Patents on February 13, 1963 orders the
suspension of the proceedings in the interference case pending
determination of the appeal, declaring, at the same time, that, as the appeal
“was not properly docketed” the same should be “docketed as an
ex-parte case”. 
The same resolution gives
the private respondent 30 days from the date his appeal is properly docketed within which to file its brief.  In as much as the validity of said resolution is necessarily involved in this
proceedings, and private respondent’s motion for an additional period for the
filing of its brief has not been resolved to this date, We can not
escape the conclusion that, as a matter of fact, the period within which said
respondent was under obligation to file its brief has not yet started to run.

We
also notice that the resolution
issued on April 3, 1962 by
the respondent Director of Patents (attached to the petition as Annex T) sets
aside the action of the Chief Trademark Examiner granting the motion to
dissolve the interference.  This, We
believe, is not only contrary to the orderly procedure provided by law in cases
of this nature, but it is also extremely doubtful, to say the least, whether said respondent had authority to do so under the
“general supervision” granted to him in the third paragraph of Rule
198 of the Revised Rules of Practice before his office.  It being a fact that the
correctness of said order of dissolution of the interference was
precisely the issue involved in the appeal pending before him, it seems clear
that the same could not be resolved except in the aforesaid appeal.

It appearing from the foregoing that (1) the Chief Trademark
Examiner of the Patent Office had jurisdiction to issue the order dissolving
the interference; (2) that his resolution in that connection had been
seasonably appealed to the respondent Director of Patents; and (3) that, as a
consequence, said respondent Director of Patents’ resolution suspending
proceedings in the interference case, ordering the proper docketing of the
appeal interposed by herein private respondent and giving the latter a period
of thirty days from the date the appeal is docketed within which to file its
brief, is in accordance with law
and the procedure followed by his office in similar cases, the writs of
certiorari, prohibition and mandamus prayed for in the petition under
consideration are hereby denied, with costs, but without prejudice to the
appeal mentioned heretofore taking its due course.

THE WRIT OF PRELIMINARY INJUNCTION heretofore issued in
this case is hereby set aside.

Concepcion, C.J., Makalintal,
Sanchez, Castro, Fernando, Capistrano, Teehankee and Barredo, JJ., concur.

Reyes, J.B.L., J., did not take
part.