GR L 3952; (December, 1953) (Digest)
G.R. No. L-3952 December 29, 1953
Masso Hermanos, S.A. vs. Director of Patents
FACTS
Masso Hermanos, S.A. is the registered owner of the trademark “Cosmopolite” for canned fish, first registered under Act No. 666 with Certificate of Registration No. 1881 issued on March 16, 1917. A renewal of this certificate was issued on June 6, 1947. On June 14, 1948, the petitioner applied to the Director of Patents for a new certificate of registration under section 41(a) of Republic Act No. 166. A trademark examiner denied the petition, ruling that the word “Cosmopolite” is descriptive of the goods (canned fish) and therefore could not have been legally registered under Act No. 666, making it ineligible for registration under the new law. The petitioner appealed to the Director of Patents, arguing that the examining officer was not authorized to re-examine certificates originally issued under the old law. The Director of Patents affirmed the examiner’s ruling, prompting the petitioner to file this petition for certiorari.
ISSUE
Whether the trademark “Cosmopolite” for canned fish is descriptive and therefore whether its original registration under Act No. 666 was valid and subsisting, entitling the petitioner to a new certificate of registration under section 41(a) of Republic Act No. 166.
RULING
The Supreme Court ruled in favor of the petitioner. The Court held that the word “Cosmopolite” does not give the name, quality, or description of the canned fish upon which it is used. It does not describe the place of origin, kind, or quality of the goods. The Court found the original registration under Act No. 666 to be valid and subsisting. Consequently, the respondent Director of Patents was ordered to set aside his ruling and to issue a new certificate of registration to the petitioner in exchange for the old certificate surrendered. The Court emphasized that the Director of Patents should not reverse the long-standing ruling of the former officer in charge of trademark registration, which had been accepted and in force since 1917.