G.R. No. L-11818; July 31, 1959
LA ESTRELLA DISTILLERY, INC., petitioner, vs. THE DIRECTOR OF PATENTS, CHENG CHIONG, and FOO U. CHING and CO., respondents.

FACTS

Petitioner La Estrella Distillery, Inc. and respondent Cheng Chiong & Foo U. Ching Company are both holders of Supplemental Registration label trademarks. Cheng Chiong filed a petition before the Patent Office for the cancellation of La Estrella’s label trademark (Registration No. SR-13) under Section 19-A of Republic Act No. 166 . After trial, the Director of Patents dismissed the petition, finding that the two label trademarks were distinctly different in appearance and possessed different identifying marks, each capable of distinguishing the goods upon which it was used, and thus no damage to Cheng Chiong could result from La Estrella’s registration and use. Despite this favorable decision, La Estrella moved for reconsideration, seeking to eliminate the finding of dissimilarity and to have a pronouncement made that the labels were similar, arguing that the issue of similarity had not been raised and was impliedly admitted by the parties. The Director of Patents denied the motion. La Estrella appealed, contending that the Director erred in making a pronouncement on the dissimilarity of the labels contrary to the pleadings and evidence.

ISSUE

Whether the Director of Patents committed error in making a pronouncement that the two label trademarks were not similar, allegedly contrary to the pleadings and evidence presented by the parties.

RULING

The Supreme Court dismissed the petition, finding no error in the Director of Patents’ decision. The Court held that the issue of similarity or dissimilarity of the labels was central to the case from its inception. The pleadings and trial proceedings revealed that the parties’ contentions inherently involved this issue: Cheng Chiong alleged La Estrella’s label was common to the trade and incapable of distinguishing goods, while La Estrella asserted its label was original, exclusive, and capable of distinguishing its products. Evidence, including multiple labels, was presented by both sides on this point. The Director of Patents correctly ruled that, under Section 19-A of Republic Act No. 166 , even if a mark were found invalid or obtained through misrepresentation, cancellation required a showing that its continuance on the register would damage the petitioner, which in turn depended on a finding of similarity between the marks. Therefore, a finding on similarity or dissimilarity was necessary and proper. The appeal was without merit.