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THE EAST PACIFIC MERCHANDISING CORP. vs. THE DIR.

OF ISSUE:
PATENTS and LUIS P. PELLICER
WON Director of Patents erred in denying
DOCTRINE: petitioners trademark registration.

The provisions of law (Rep. Act No. 166, sec. 4)


require that the trademark applied for must have "become
distinctive of the applicant's goods", and that a prima RULING:
facie proof of this fact exists when the applicant has been in
The result would not change even if the Director
the "substantially exclusive and continuous use thereof as a
erred in ruling that the figure of a lady, as previously
mark or trade-name for five years next preceding the date of
described, is likewise is not registerable as a trademark. The
the filing of the application for its registration".
figure, it may be granted, was drawn on arbitrary on
whimsical lines and styled in a peculiarly distinctive manner;
but the fact will not qualify the word "Verbena" for
FACTS: registration, since the combination of the two marks would
still be inadequate to guard against the misleading effects
Marcelo Pua filed with the Office of the Director of that flow from the use of the term by petitioner.
Commerce an application for the registration of a trademark
that he allegedly has been continuously using in commerce The claim that the petitioner is entitled to
since August 15, 1947 on lotion, face powder, hair pomade, registration because the term "Verbena" has already
brillantine and other products, with the word Verbena on acquired a secondary significance is without merit.
it and a representation of a Spanish lady described as:
The provisions of law (Rep. Act No. 166, sec. 4)
Against a blue background is the bust figure require that the trademark applied for must have "become
of a Spanish Seorita dressed in a typically pink distinctive of the applicant's goods", and that a prima
dancer's attire with her upper arms partly covered facie proof of this fact exists when the applicant has been in
with a Spanish shawl of green and white. The the "substantially exclusive and continuous use thereof as a
figure appears with black well-groomed hair mark or trade-name for five years next preceding the date of
adorned by red roses. The figure also appears to be the filing of the application for its registration". Here it
wearing two green earrings. At the left of this appears not only that applicant and his assignor (Pua) only
figure is shown a balcony decked with plants and began use of the alleged mark in the year 1947, the same
flowers characteristics of Spanish houses. year when the application was filed; but that such
trademarks as "Verbena Povil" and "Lupel Verbena" had long
Pua assigned his rights on the trademark and the been in use by respondent Pellicer on his own cosmetic
pending application thereof to petitioner. Petitioner products, and that, as a matter of fact, he is the holder of the
renewed the application under a new trademark law RA 166. certificate of registration from the Patents Office for the
trademark "Lupel Verbena". Said facts preclude us from
The examiner submitted a report to the Director,
concluding that the trademark in question has become
recommending its approval and the latter approved it for
distinctive of applicant's goods within the meaning of the
publication in the Official Gazette.
law.
Luis Pellicer filed an opposition. That the picture of
Conformably to the foregoing, unless the petitioner
a lady is common in trade and Verbena is generic name of
makes a disclaimer of the word "Verbena", the application
a flower; that he would be damaged by the registration of
should be held as properly denied by the Director of Patents.
the trademark in question seeing as Lupel Verbena was a
The orders reinstating respondent Pellicer's opposition are
trademark registered in his favor which he uses in
affirmed.
commerce to identify his hair pomade.

Petitioner moved to dismiss the opposition. The


Director of Patents denied petitioners registration.