Digest Romero vs Maiden

ANDRES ROMERO vs. MAIDEN FORM BRASSIERE CO., INC., and THE DIRECTOR OF PATENTS FACTS

Respondent company, a foreign corporation, filed with Director of Patents an application for registration of the trademark "Adagio" for the brassieres brassieres manufactured by it. In its application, respondent company alleged that said trademark trademark was first used by it in ! in #$%, and in the Philippines on #&'( that it had been continuously used by it in Philippines for over ) years. Director issued certificate of registration. registration. Petitioner filed a petition for cancellation of said trademark. Director dismissed petition. *ence, this appeal. DECISION

Appellant claims that the trademark "Adagio" has become a common descriptive name of a particular style of brassiere and is, therefore, unregistrable. It is urged that said trademark had been used by local brassiere manufacturers since #&+, without obection on the part of respondent company. -his claim is without basis in fact. -he evidence shows that the trademark "Adagio" is a musical term, which means slowly or in an easy manner, manner, and was used as a trademark by the owners thereof the Rosenthals of /aiden 0orm 1o., 2ew 3ork4 3ork4 because they are musically inclined. 5eing a musical term, it is used in an arbitrary fanciful4 sense as a trademark for brassieres brassieres manufactured by respondent company. company. It also appears that respondent company has, likewise, adopted other musical terms to identify, as a trademark, the different styles or types of its brassieres. brassieres. It is not true that respondent company did not obect to the use of said trademark by petitioner and other local brassiere manufacturers. manufacturers. -he records show that respondent company6s agent, /r. !chwart7, warned the 8alleson Department !tore to desist from the sale of the "Adagio" Royal 0orm brassieres manufactured by petitioner, and even placed an advertisement in the local newspapers warning the public against unlawful use of said trademark. trademark. -he advertisement prompted prompted petitioner to file this present petition for cancellation. 9n the other hand, respondent company6s long and continuous use of the trademark "Adagio" has not rendered it merely descriptive of the product. If this argument were sound, then every time a plaintiff obtained the result of having the public purchase its article, that fact of itself would destroy a trademark. Arbitrary trademarks cannot become generic in this way. Appellant ne:t contends that the trademark "Adagio at the time it was registered in the Philippines4 on #;%, had long been used by respondent company, only to designate a particular style or aw as amended by !ection  of Republic Act +';. !ection $% can be availed of only where the Philippines is a party to an international convention or treaty relating to trademarks, trademarks, in which the trade=mark sought to be registered need not be use in the Philippines. Appellant, likewise, contends that the registration the trademark in aw. -here is no evidence to show that the registration of the trademark "Adagio" was obtained fraudulently by appellee. -he evidence record shows, on the other hand, that the trademark "Adagio" was first e:clusively e:clusively in the Philippines by appellee in the year #$?. -here being no evidence of use of the mark by others before #$?, or that appellee abandoned use thereof, the registration of the mark was made in accordance with the -rademark -rademark >aw. @ranting that appellant used the mark when appellee stopped using it during the period of time that the @overnment imposed restrictions on importation of respondent6s brassiere bearing the trademark, such temporary non=use did not affect the rights of appellee because it was occasioned by government government restrictions and was not permanent, intentional, and voluntary. Appellant ne:t argues that respondent Director erred in declaring illegal the appropriation in the Philippines of the trademark trademark in