KEE BOC, PETITIONER, VS. THE DIRECTOR OF PATENTS AND THE FAR EASTERN SHIRT FACTORY, RESPONDENTS.

This petition for review would assail the validity of a decision of
respondent Director of Patents granting the application of respondent Far
Eastern Shirt Factory to register a trademark and dismissing the opposition of
petitioner Kee Boc.  The grounds relied upon are its lack of
support in the substantial evidence of record and its failure to conform to the
applicable law.  Petitioner in pressing
his opposition before respondent Director of Patents had to surmount the
obstacle posed by a decision of this Court in Asari
Yoko Co. Ltd. v. Kee Boc,^[1]
which rightfully could be not ignored by respondent Director because of its
relevance and pertinence.  Moreover,
petitioner is now faced with the extremely difficult task of showing that there
was no support for the decision reached in the substantial evidence of
record.  He does not quite succeed.  Under the circumstances, he cannot prevail.

An extended reference to the decision assailed would make
apparent the difficulty that faced petitioner in seeking its reversal.  Its opening paragraph reads thus: “An
application to register the trademark RACE, used on men’s undershirts and
shirts, under class 40, was filed on April 16, 1962 by Far Eastern Shirt
Factory, a partnership duly organized under Philippine Laws, with business
address at 513 Nueva St., Manila.  Claim of first use since the year 1949 is
asserted by the applicant.”^[2]
Then came the portion referring to the opposition filed by now petitioner Kee Boc alleging that he would be
damaged by such registration as he has in his favor a certificate of
registration on the trademark SUN RAYS issued by the Philippine Patent Office
on August 3, 1961 covering
the same class of goods, namely, men’s undershirts.  It was moreover “confusingly
similar” to the trademark RACE, the closeness of their identity in
appearance and pronunciation being quite marked.  Mention was then made in the opposition that
his trademark is well-known all over the Philippines and that applicant, now
respondent Far Eastern Shirt Factory, with prior knowledge thereof, deliberately
designed its own mark to bring about the confusion and to take advantage of the
fame, reputation and goodwill theretofore established by it at a tremendous
cost through advertising and by the superior quality of its product.^[3]

After noting that the records of the case, consisting of the application,
the opposition, the pleadings and the respective evidence, had been carefully
considered and that the issue raised for the damage that would be caused oppositor, now petitioner Kee Boc, the appealed decision went on to state: “Upon
careful evaluation of the record, I agree with the opposer
that RACE and SUN RAYS are confusingly similar and I have arrived at a finding
that likelihood of confusion would occur. 
In appearance and sound, the overall commercial impression likely to be
conveyed to the public is that of a speed or running competition, as it has
been found that both parties are claiming to be using in relation to their
respective trademarks male runners in the act of racing.  This circumstance, I believe, is sufficient
to effect likelihood of confusion as to source or origin of the goods.”^[4]
Reference was then made to the antecedents, including our previously cited
decision of Asari Yoko Co., Ltd. v. Kee Boc. Thus: “The facts,
however, show that on January 20, 1961
the Supreme Court promulgated a decision in G. R. No. L-14086 entitled ‘Asari Yoko Co., Ltd. vs. Kee Boc, et al.,’ wherein it was decided that Kee Boc who is the same party to
the present case was adjudged not entitled to the registration of the trademark
RACE and design as used by him on shirts and undershirts which he sought to
register in this Office on August 27, 1953. In that decision the trademark was
found to be owned by Asari Yoko Co., Ltd., a
partnership duly organized in Japan.
* * * The record also shows that Asari Yoko Ltd.
executed a power of attorney in favor of Go Seng Chay, a Chinese citizen residing in Manila, authorizing the
latter to sell, assign, convey, and dispose of all the rights, title and
interest as well as the ownership over the trademark RACE and design (representation
of 3 men running a race) including the right to register the mark in the
Philippines.  The record further shows
that Go Seng Chay executed
in favor of the Far Eastern Shirt Factory a Deed of Assignment of the mark in
March, 1962.  In view of the assignment,
the Respondent-Applicant filed the application for registration now being
opposed.”^[5]

This is the way respondent Director would appraise the matter
before him: “Therefore, as between the two confusingly similar trademarks,
RACE was already in use long before the opposer
adopted his trademark SUN RAYS.  In such
case it is the Respondent-Applicant who would be damaged by the registration of
SUN RAYS as it has acquired, as a successor in interest, proprietary rights
over the mark RACE.  Kee
Boc’s claim that he would be damaged by registration
thereof will not, for the foregoing; reason, prevail.”^[6]
This is the conclusion arrived at: “The result of the foregoing
pronouncements and findings would be that inasmuch as the two trademarks are
confusingly similar and since it is the Respondent-Applicant who would be
damaged, the trademark SUN RAYS becomes unregisterable.  But notwithstanding thereof, the registration
certificate of Kee Boc
cannot ipso facto be ordered cancelled in this opposition proceeding,
and in similar cases the filing of a petition to cancel is still
necessary.  The Respondent-Applicant has
actually filed the said petition (Inter Partes Case
No 364) which is now pending in this Office.”^[7]
It was his decision, therefore, to dismiss the opposition of now petitioner Kee Boc and to grant the
application of now respondent Far Eastern Shirt Factory.

We sustain, as noted at the outset, respondent Director of
Patents.

1.     
In the decision now under review, respondent
Director of Patents made reference to our decision in Asari
Yoko Co., Ltd. v. Kee Boc.^[8]
In that case, now petitioner Kee Boc
asserted that he first used the trademark RACE. 
The Director of Patents agreed with his contention, but this Court
reversed the decision holding that Asari Yoko Co.,
Ltd. “was the first user of the trademark in question in the Philippines,
[and therefore] will be damaged by the registration of the trademark in the
name of [Kee Boc].”
Thereafter, as noted likewise in the decision of respondent Director of Patents,
a power of attorney was executed by Asari Yoko Co.,
Ltd. in favor of one Go Seng Chay,
from whom now respondent Far Eastern Shirt Factory acquired, through a deed of
assignment executed on March 2, 1962, the right to such trademark RACE, after
which the present application for registration was filed.  It is true that in the meanwhile, on August 3, 1961, a registration of the
trademark SUN RAYS was effected by now petitioner Kee
Boc, both trademarks being found to be confusingly
similar.  If it were not for the above
background facts that would indicate the persistent and tenacious efforts on
the part of petitioner Kee Boc
to deprive Asari Yoko Co., Ltd., formerly, and now
respondent Far Eastern Shirt Factory of whatever advantages might inhere in the
use of the trademark raised, then perhaps his stand would have been impressed
with a greater degree of plausibility. 
As it is however, considering that he was a party to a litigation where
this Court had recognized the right of the predecessor-in-interest of
respondent Far Eastern Shirt Factory to the use of such trademark, it would
seem that under an expansive view of the principle of the law of the case,
petitioner is not to be indulged insofar as his opposition would result in
diluting the effectiveness of the aforesaid decision rendered by us where he
himself was a party.^[9]

2.     
The petition for certiorari was premised primarily on the decision of the Director
of Patents lacking support in the substantial evidence of record.  Petitioner Kee Boc did try to make out a case of the appealed decision
being thus marked by such infirmity, but his attempt does not carry enough
persuasion.  It was not because the brief
submitted was lacking in vigor and vehemence. 
The inherent difficulties of the situation, however, were too much to
overcome.  For one thing, as above made
clear, there was this previous decision rendered by us.  Then, too, respondent Director of Patents saw
to it that only the most relevant facts necessary to his decision were duly
considered and set forth.  Moreover,
there was the agreement by the parties that the oral testimony would consist
solely of the transcript of stenographic notes in a case then pending between
the parties before the Court of First Instance of Rizal.^[10]

Of the eleven errors assigned, the first two, which would
predicate an injury to the rights of Kojiro Asari and Asari Yoko Co., Ltd.,
the winning parties in our 1961 decision, ought rather to have been asserted by
them and not by petitioner against respondent Far Eastern Shirt Factory.  In the absence of such complaint on their
part, no further consideration is necessary to dispose of the above assignment
of errors.  The seventh and eighth
assignment of errors which would find fault for respondent Director of Patents,
for not including certain matters in the decision under review, would not
impair the validity of the decision rendered, as the discretion of respondent
Director to seize upon what he considered the determinative facts is not shown
to have been abused.  Clearly, on those facts
as found by him, respondent Far Eastern Shirt Factory was entitled to a
favorable verdict.

There is nothing, likewise, in the decision, as alleged in the
fourth assignment of error, that respondent Far Eastern Shirt Factory was held
as being entitled to sue for past infringement. 
The only thing decided was to give due course to the application for
registration.  Nor was there any
sufficient showing that the other alleged errors were in fact committed;
petitioner could not specify from the evidence, whether oral or documentary,
properly before respondent Director of Patents for appraisal, the asserted
deficiency of the decision under review.

It might be useful to single out the third assignment of error
because of the allegation therein made that no mention was made of the goodwill
in the deed of assignment executed by Go Seng Chay, as attorney-in-fact of Asari
Yoko Co., Ltd. and respondent Far Eastern Shirt Factory.  There is clearly a misapprehension.  This is how such deed of assignment reads:
“Be it known that for and in consideration of the sum of [Twenty thousand
pesos] (P20, 000.00) and other good and valuable consideration to it in hand
paid, the receipt of which is hereby acknowledged, the said Asari
Yoko Co., Ltd., represented by its above-named attorney-in-fact, Mr. Go Seng Chay, by these presents,
does sell, assign and transfer unto the said Far Eastern Shirt Factory, its
entire right, title and interest in and to the said trademark “RACE”
and Design (Representation of 3 men running a race) and the registration
thereof in the Philippines Patent Office, together with the goodwill of the
business in connection with which the said trademark is used.”^[11]
It would be futile, then, to maintain, as is done in the eleventh assignment of
error, that the application for registration of respondent Far Eastern Shirt
Factory ought not to have been given due course.

The legal principle decisive of this controversy is set forth by
us in Lim Kiah v. The Kaynee
Company.^[12]
Thus: “It is well-settled that we are precluded from making such an
inquiry as the finding of facts of the Director of Patents in the absence of
any showing that there was a grave abuse of discretion is binding on us.  As set forth by Justice Makalintal
in Chung Te v. Ng Klan Giab: ‘The rule is that the
findings of fact by the Director of Patents are conclusive on the Supreme Court
provided they are supported by substantial evidence.’”^[13]

It is likewise the view of this Court that respondent Director of
Patents should proceed to act with dispatch and resolve Inter Partes Case No. 364, guided by and in accordance with this
decision.

WHEREFORE, the decision of the Director of Patents of March 11, 1966 is affirmed. With
costs against petitioner Kee Boc.

Concepcion, C.J., Reyes, J.B.L., Dizon, Makalintal, Zaldivar, Ruiz Castro, Teehankee,
Villamor, and Makasiar, JJ., concur.

Barredo, J., did not take part.

^[1] L-14086,
Jan. 20, 1961, 1 SCRA 1.

^[2]
Decision of the Director of Patents, Appendix to Petition, pp. 19-20.

^[3] Ibid.,
pp. 20-21.

^[4] Ibid.,
pp. 21-22.

^[5] Ibid.,
pp. 22-23.

^[6] Ibid.,
p. 23.

^[7] Ibid.

^[8] L-14086,
Jan. 20, 1961, 1 SCRA 1.

^[9] Cf. Sanchez v. The Court of Industrial Relations,
L-26932, March 28, 1969, 27
SCRA 490.

^[10] Kee Boc v. Far Eastern
Shirt Factory, Civil Case No. 7704, 7th Judicial District.

^[11] Assignment
of Registered Trademark, Exhibit 1.

^[12]
L-24802, Oct. 14, 1968, 25
SCRA 485.

^[13] Ibid.,
p 489.  The cases cited are Chung Te v.
Ng Kian Giab, L-23791, Nov.
23, 1966, 18 SCRA 747 and Chua Che v. Philippines
Patent Office, L-18337, Jan. 30, 1965, 13 SCRA 67.