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[No. L-6235. March 28, 1955]

ONG Ai Gui alias TAN Ai GUI, applicant and petitioner,

vs. the Director of the Philippines Patent Office,
respondent E. I. DU PONT DE NEMOURS AND
COMPANY, intervenor.

1. TRADE-NAMES; DESCRIPTIVE OR GENERIC TERM

CAN NOT BE APPROPRIATED BY SINGLE
INDIVIDUAL.—Although a combination of words may be
registered as a trade-name, it is no justification for not
applying the principle that the use of a descriptive or
generic term in a trade-name is always subject to the
limitation that the registrant can not acquire the exclusive
right to the descriptive or generic term or word.

2. ID.; PROCEDURE FOR REGISTRATION.—There are

'two steps in the proceedings for the approval of an
application for registration; the first is that conducted in
the office of the Director and taking place prior to
publication, and the second, that conducted after
publication, in which the public is given the opportunity to
contest the application. In the first, the application is
referred to an examiner, who, after study and
investigation makes a report and recommendation to the
Director who, upon finding that applicant is entitled to
registration, orders publication of the application. (Sec. 7,
Rep. Act No. 166.) If he finds that applicant is. not entitled
to registration, he may then and there dismiss the
application. In the second, opportunity is offered the
public or any interested party to come in and object to the
petition (Sec. 8, Id.), giving proofs and reasons for the
objection, applicant being given the opportunity also to
submit proofs or arguments in support of the application.
(Sec. 9, Id.) It is the decision of the Director, given after
this hearing, or opportunity to every interested party to be
heard, that finally terminates the proceedings and in
which the registration is finally approved or disapproved.
Thereafter, notice of the

674

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674 PHILIPPINE REPORTS ANNOTATED

Ong Ai Gui vs. Director, Phil. Patent Office

issuance of the certificate of registration is published.

(Sec. 10, Id.)

PETITION for review by certiorari of a decision of the

Director of Patents.
The f acts are stated in the opinion of the Court.
Jose P. Laurel for petitioner.
Solicitor General Juan R. Liwag and Solicitor Pacifico P.
de Castro for respondent.
J. A. Wolfson for intervenor.

LABRADOR, J.:

On November 8, 1948, Ong Ai Gui alias Tan Ai Gui filed an

application (No. 803) with the Director of Patents for the
registration of the following trade-name; "20th Century
Nylon Shirts Factory." It is stated in connection with the
application that the trade-name was used for the first time
by the applicant on September 12, 1941 for his business
described as follows: "General merchandise dealing
principally in textiles, haberdasheries; also operating as
manufacturer of shirts, pants and other men's and women's
wears." Upon the filing of the application, the same was
referred by the Director to an examiner. The latter in a
report dated August 18, 1950 held that the words "shirts
factory" are not registrable; so the applicant made a
disclaimer of said words (shirts factory) inserting a
statement to that effect in his original application. On
August 13, 1951 the Director ordered the publication of the
trade-name in the Official Gazette.
Publication was made but before the expiration of the
period for filing opposition, Atty. J. A. Wolfson, on behalf of
E. I. Du Pont de Nemours and Company, presented on
February 27, 1952, an opposition on the ground that the
word "nylon" was a name coined by E. I. Du Pont de
Nemours and Company as the generic name of a synthetic
fabric material, invented, patented, manufactured and sold
by it and that this word is a generic term;
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that the use of the name "nylon" is descriptive or

deceptively misdescriptive of the goods, business of
manufactures of the applicant; that the use of the name
would produce confusion in trade and would deceive the
public; and that "nylon" is not distinctive of applicant's
goods; business and manufactures and applicant does not
claim that it has so become. This opposition, however, was
dismissed by the Director on the ground that at the time it
was submitted Atty. J. A. Wolfson did not have, nor did he
submit, authority to file it (opposition) in the corporate
name, and that the subsequent authorization from the
corporation to that effect did not cure the general defect in
the opposition,
But while he dismissed the opposition, the Director
ruled that the application must be disapproved unless the
word "nylon" is also disclaimed. The grounds for the
disapproval of the application were as f ollows:

"Nylon" is merely descriptive of the business of shirt-making if

the shirts are made of nylon. It is deceptively misdescriptive of
said business, if the shirts are not made of nylon. In either case,
its registration in the Principal Register as a tradename, or as a
part of a trade-name, is expressly forbidden by subsection (e) of
Section 4 of Republic Act No. 166, as amended by Section 2 of
Republic Act No. 638.

*     *     *     *     *     *     *

"But even if the trade-name here in question were applied for

under the said subsection (/), "Nylon" would still have to be
disclaimed. Used in connection with shirt-making, "Nylon" can
never become distinctive, can never acquire secondary, meaning,
because it is a generic term, like cotton, silk, linen, or ramie. Just
as no length of use and no amount of advertising will make
"cotton," "silk," "linen," or "ramie," distinctive of shirts or of the
business of making them, so no length of use and no amount of
advertising will make "nylon" distinctive of shirts or of the
business of manufacturing them."

Against the above decision applicant has filed an appeal to

this Court. During the pendency of this appeal, E. I. Du
Pont de Nemours and Co. filed a petition to intervene,
which petition was granted. It has also, through
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counsel, filed a brief answering the arguments of the

applicant-appellant and supporting the decision appealed
from.
There are two main questions raised in the appeal, one
legal and the other procedural. The legal question is put up
by the claim of the applicant-appellant that while he
admits that the term "nylon" is by itself alone descriptive
and generic, what he desires to register is not the said word
alone but the whole combination of "20th Century Nylon
Shirts Factory." It is to be noted in answer to this
contention that the Director of Patents has not completely
denied the registration of the whole trade-name. He has
made a conditional denial only, permitting the registration
of the name but with the disclaimer of the terms "shirt
factory" and "nylon." The import of the decision is that the
trade-name may be registered, but applicant-appellant may
not be entitled to the exclusive use of the terms "shirts
factory" and "nylon" as against any other who may
subsequently use the said terms, for the latter are merely
descriptive or general terms, juris publici, incapable of
appropriation by any single individual to the exclusion of
others. This is supported by reason and authority.

"A word or a combination of words which is merely descriptive of

an article of trade, or of its composition, characteristics, or
qualities, cannot be appropriated and protected as a trademark to
the exclusion of its use by others. The reason for this is that
inasmuch as all persons have an equal right to produce and vend
similar articles, they also have the right to describe them properly
and to use any appropriate language or words for that purpose,
and no person can appropriate to himself exclusively any word or
expression, properly descriptive of the article, its qualities,
ingredients,, or characteristics, and thus limit other persons in
the use of language appropriate to the description of their
manufactures, the right to the use of such language being
common to all. This rule excluding descriptive terms has also
been held to apply to trade-names. As to whether words employed
fall within this prohibition, it is said that the true test is not
whether they are exhaustively descriptive of the article
designated, but whether in themselves, and as they are commonly
used by those who understand

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their meaning, they are reasonably indicative and descriptive of

the thing intended. If they are thus descriptive, and not arbitrary,
they cannot be appropriated from general use and become the
exclusive property of anyone." (52 Am, Jur. 542-543.)
"* * * If the trade-name consists of a descriptive word, no
monopoly of the right to use the same can be acquired. This, is but
a corollary of the proposition that a descriptive word cannot be
the subject of a trade mark. G. & C. Merriam Co. vs. Saalfield (C.
C. A.) 198 F. 369. Others may use the same or similar descriptive
word in connection with their own wares, provided they take
proper steps to prevent the public being deceived." * * *.
(Richmond Remedies Co. vs. Dr. Miles Medical Co., 16 E. (2d)
598.)
"* * * The so-called descriptive terms, which may be used to
describe the product adequately, can not be monopolized by a
single user and are available to all. It is only natural that the
trade will prefer those marks which bear some reference to the
article itself. Therefore, even those descriptive marks which are
distinctive by themselves can be appropriated by others with
impunity. A descriptive word may be admittedly distinctive,
especially if the user is the first creator of the article. It will,
however, be denied protection, not because it lacks
distinctiveness, but rather because others are equally entitled to
its use." * * *. (2 Callman. Unfair Competition and Trade Marks,
pp. 869-870.)

The claim that a combination of words may be registered as

a trade-name is no justification for not applying the rules
or principles hereinabove mentioned. . The use of a generic
term in a trade-name is always conditional, i. e., subject to
the limitation that the registrant does not acquire the
exclusive right to the descriptive or generic term or word.

"* * * A combination of marks or words may constitute a valid

trademark or (in the case of words) a tradename even though
some of the constituent portions thereof would not be subject,
separately, to exclusive appropriation as such. Thus, although a
word may be descriptive and not subject to exclusive use as a
trademark, it may properly become the subject of a trademark by
combination with another word or term which is nondescriptive,
although no exclusive right to the descriptive word or term is
created" * * *. (52 Am. Jur. 553.)

The citation of appellant himself supports the decision

thus: "* * * although perhaps not entitled to protection

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Ong Ai Gui vs. Director, Phil. Patent Office

against infringement by the use of the descriptive matter

by another." (Frost vs. Rindskopt, 42 Fed. 408.)
It must also be noted that no claim is made in the
application that the trade-name sought to be registered has
acquired what is known as a secondary meaning within the
provisions of paragraph (/) of section 4 of Republic Act No.
166. All that the applicant declares in his statement
accompanying his application is that the said trade-name
has been continuously used by it in business in the
Philippines for about seven years, without allegation or
proof that the trade-name has become distinctive of the
applicant's business or services. Furthermore, the use of
the term "nylon" in the tradename is both "descriptive" and
"deceptively and misdescriptive" of the applicant-
appellant's business, for apparently he does not use nylon
in the manufacture of the shirts, pants and wears that he
produces and sells. How can a secondary meaning be
acquired if appellant's products are not made of nylon ?
Certainly no exclusive right can be acquired by deception
or fraud.
The procedural question arises from the fact that after
the Director had ordered publication and notwithstanding
dismissal of an opposition, the Director nevertheless
conditionally denied the application after its publication
and failed to give applicant opportunity for a hearing, as
specifically required by section 7 of Republic Act No. 166.
It is argued that after approval of the findings of the
commissioner to whom the application is referred and
giving of the order of publication, it becomes the ministerial
duty of the Director to issue the corresponding certificate of
registration and that his power is confined to this issuance
alone. The answer to this argument is the fact that the law
allows oppositions to be filed after publication, thus:

"Sec. 8. Opposition.—Any person who believes that he would be

damaged by the registration of a mark or trade-name may,

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Ong Ai Gui vs. Director, Phil. Patent Office

upon payment of the required fee and within thirty days after the
publication under the first paragraph of section seven hereof, file
with the Director an opposition to the application. Such opposition
shall be in writing and verified by the oppositor, or by any person

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on his, behalf who knows the facts, and shall specify the grounds
on which it is based and include a statement of the facts relied
upon. Copies of certificates of registration of marks or trade-
names registered in other countries or other supporting
documents mentioned in the opposition shall be filed therewith,
together with the translation thereof into English, if not in the
English language. For good cause shown and upon payment of the
required surcharge, the time for filing an opposition may be
extended for an additional thirty days by the Director, who shall
notify the applicant of such extension." (Republic Act No. 166.)

Of what use is the period given to oppositors to register

their oppositions if such oppositions are not to be given
consideration at all, because the Director has only the
ministerial duty after publication to issue the certificate of
registration? It will be noted that there are two steps in the
proceedings for the approval of an application for
registration; the first is that conducted in the Office of the
Director and taking place prior to publication, and the
second, that conducted after publication, in which the
public is given the opportunity to contest the application.
In the first, the application is referred to an examiner, who,
after study and investigation makes a report and
recommendation to the Director who, upon finding that
applicant is entitled to registration, orders publication of
the application. (Sec. 7, Rep. Act No. 166.) If he finds that
applicant is not entitled to registration, he may then and
there dismiss the application. In the second, opportunity is
offered the public or any interested party to come in and
object to the petition (Sec. 8, Id.), giving proofs and reasons
for the objection, applicant being given opportunity also to
submit proofs or arguments in support of the application.
(See. 9, Id.) It is the decision of the Director, given after
this hearing, or opportunity to every interested party to be
heard, that finally terminates the proceedings and in which
the registration is finally ap-
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Santos, et al., vs. Leaño, et al.

proved or disapproved. Thereafter, notice of the issuance of

the certificate of registration is published. (Sec. 10, Id.)
It is evident that the decision of the Director af ter the
first step, ordering publication, can not have any finality.
Of what use is the second step in the proceedings, if the
Director is bound by his first decision, giving course to the
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publication? His first decision is merely provisional, in the

sense that the application appears to be meritorious and is
entitled to be given course leading to the more formal and
important second step of hearing and trial, where the
public and interested parties are allowed to take part.
The argument that the Director failed to comply with
paragraph 2 of section 7, Republic Act No. 166 cannot be
raised in the case at bar, because the Director did not find
that the applicant is not entitled to registration. He
actually found that he is entitled to registration and that is
why an order for the publication of the application was
issued. How can the Director comply with the provisions of
said paragraph 2 if he did not disapprove the applicant's
petition for registration?
We, therefore, find that the errors assigned in the
appeal have not been committed by respondent Director of
Patents. His decision is hereby affirmed, with costs against
the applicant-appellant.

Parás, C. J., Pablo, Bengzon, Padilla, Reyes, A., Jugo,

Bautista Angelo, Concepcion and Reyes, J. B. L., JJ.,
concur.

Decision of the Director of Patents affirmed.

__________________

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