G.R. No. L-47732. April 30, 1941.
CORNELIO BALMACEDA, as Director of Commerce, petitioner, vs. SIXTO DE LA COSTA and JOSE O. VERA, not personally but as Judges of the Court of First Instance of Manila, and TEODORO KALAW NG KHE, respondents.

FACTS

The Director of Commerce filed this petition for certiorari and mandamus to annul two orders issued by the respondent judges and to compel the inclusion of Lever Brothers Company and the Secretary of Agriculture and Commerce as defendants in Civil Case No. 56621. Respondent Teodoro Kalaw Ng Khe initiated that civil case to compel the petitioner, as Director of Commerce, to register the industrial trademark “Tux.” Ng Khe alleged he applied for registration, but the petitioner denied it without legal cause. In his answer, the petitioner defended his denial by citing that the Court of Appeals, in a related case (R.G. No. 44497, Lever Brothers Company vs. Teodoro Kalaw Ng Khe, et al.), had ordered the cancellation of Ng Khe’s registration for the mark “Lux” because it was already used and registered by Lever Brothers Company. The petitioner argued that in denying the registration of “Tux,” which is similar to “Lux,” he merely exercised the discretion granted by law and administrative orders. The petitioner moved to include Lever Brothers Company (the entity for which “Lux” was registered) and the Secretary of Agriculture and Commerce (who had confirmed the petitioner’s decision denying “Tux”) as defendants, claiming they were necessary and indispensable parties. Judge Sixto de la Costa denied the motion for inclusion on June 25, 1940. The petitioner’s motion for reconsideration was subsequently denied by Judge Jose O. Vera on August 30, 1940. The petitioner then filed this special civil action without awaiting the final outcome of the main case. It was noted that the Supreme Court had affirmed the Court of Appeals’ decision in the related “Lux” case, definitively establishing that the “Lux” mark rightfully belongs to Lever Brothers Company.

ISSUE

Did the respondent judges commit a grave abuse of discretion in denying the petitioner’s motion to include Lever Brothers Company and the Secretary of Agriculture and Commerce as defendants in the civil case for the registration of the trademark “Tux”?

RULING

No. The Court held that the respondent judges did not commit a grave abuse of discretion or even an error in denying the motion for inclusion. While Lever Brothers Company and the Secretary of Agriculture and Commerce might be considered necessary parties, they were not indispensable parties. The circumstances that Lever Brothers Company was the registrant of the “Lux” mark and the Secretary had confirmed the denial of “Tux” did not make them indispensable to the extent that the court could not render a final judgment in the case. The civil case solely involved the controversy over Ng Khe’s right to register “Tux” and whether the Director of Commerce had the discretionary power under the law to deny the registration. The court could resolve these points without the intervention of the proposed additional parties. By law, the Director of Commerce is the official tasked with determining the right to register an industrial trademark, and in an action contesting that determination, he is the sole necessary and indispensable defendant. The fact that his decision was reviewed and confirmed by the Secretary of Agriculture and Commerce, as a superior authority, does not convert the Secretary into a necessary and indispensable party defendant. The petition for certiorari and mandamus was denied, without special pronouncement as to costs.