FIRST DIVISION

[G.R. No. L-28554. February 28, 1983.]

UNNO COMMERCIAL ENTERPRISES, INCORPORATED,Petitioner, v. GENERAL MILLING CORPORATION and TIBURCIO S. EVALLE, in his capacity as Director of Patents,Respondents.

Salem & Dionisio Law Office forPetitioner.

Siquion Reyna, Montecillo, Bello & Ongsiako forPrivate Respondent.

SYLLABUS

1. MERCANTILE LAW; TRADEMARK; RIGHT TO REGISTER IT, BASED ON OWNERSHIP. When the applicant is not the owner of the trademark being applied for, he has no right to apply for the registration of the same. Under the Trademark Law only the owner of the trademark, trade name or service mark used to distinguish his goods, business or service from the goods, business or service of others is entitled to register the same. A local importer, however, may make application for the registration of a foreign trademark, trade name or other mark of ownership.

2. ID.; ID.; OWNER; SCOPE UNDER THE TRADEMARK LAW. The term owner does not include the importer of the goods bearing the trademark, trade name, service mark, or other mark of ownership, unless such importer is actually the owner thereof in the country from which the goods are imported. Thus this Court, has on several occasions ruled that where the applicants alleged ownership is not shown in any notarial document and the applicant appears to be merely an importer or distributor of the merchandise covered by said trademark, its application cannot be granted.

3. ID.; ID.; DEED OF ASSIGNMENT; PROOF OF OWNERSHIP. The Director of Patents correctly found that ample evidence was presented that Centennial Mills, Inc. was the owner and prior user in the Philippines of the trademark "All Montana" through a local importer and broker. The Deed of Assignment itself constitutes sufficient proof of its ownership of the trademark "All Montana, "showing that Centennial Mills was a corporation duly organized and existing under and by virtue of the laws of the State of Oregon, U.S.A. with principal place and business at Portland, Oregon, U.S.A. and the absolute and registered owner of several trademarks for wheat flour, i.e. (Imperial, White Lily, Duck, General, Swan, White Horse, Vinta, El Paro, Bakers Joy, Choice, Red Bowl, All Montana and Dollar) all of which were assigned by it to respondent General Milling Corporation.

4. ID.; ID.; OWNERSHIP NOT ACQUIRED BY REGISTRATION ALONE. Petitioners contention that it is the owner of the mark "All Montana because of its certificate of registration issued by the Director of Patents, must fail, since ownership of a trademark is not acquired by the mere fact of registration alone. Registration merely creates a prima facie presumption of the validity of the registration, of the registrants ownership of the trademark and of the exclusive right to the use thereof. Registration does not perfect a trademark right. As conceded itself by petitioner, evidence may be presented to overcome the presumption. Prior use by one will controvert a claim of legal appropriation by subsequent users.

5. REMEDIAL LAW; EVIDENCE; FINDINGS OF FACT BY THE DIRECTOR OF PATENTS; CONCLUSIVE IF SUPPORTED BY SUBSTANTIAL EVIDENCE. It is well-settled that we are precluded from making further inquiry, since the findings of fact of the Director of Patents in the absence of any showing that there was grave abuse of discretion is binding on us and the findings of facts by the Director of Patents are deemed conclusive in the Supreme Court provided that they are supported by substantial evidence. Petitioner has failed to show that the findings of fact of the Director of Patents are not substantially supported by evidence nor that any grave abuse of discretion was committed.

6. MERCANTILE LAW; DIRECTOR OF PATENTS; AUTHORITY TO ORDER CANCELLATION OF A REGISTERED MARK OR TRADENAME IN AN INTER PARTES CASE. Finally, the Court finds without merit petitioners argument that the Director of Patents could not order the cancellation of its certificate of registration in an interference proceeding and that the question of whether or not a certificate of registration is to be cancelled should have been brought in cancellation proceedings. Under Rule 178 of the Rules of the Patent Office in Trademark Cases, the Director of Patents is expressly authorized to order the cancellation of a registered mark or trade name or name or other mark of ownership in an inter partes case, such as the interference proceeding at bar.

D E C I S I O N

TEEHANKEE,J.:

The Court affirms respondent Director of Patents decision declaring respondent General Milling Corporation as the prior user of the trademark "All Montana" on wheat flour in the Philippines and ordering the cancellation of the certificate of registration for the same trademark previously issued in favor of petitioner Unno Commercial Enterprises, Incorporated, it appearing that Unno Commercial Enterprises, Inc. merely acted as exclusive distributor of All Montana wheat flour in the Philippines. Only the owner of a trademark, trade name or service mark may apply for its registration and an importer, broker, indentor or distributor acquires no rights to the trademark of the goods he is dealing with in the absence of a valid transfer or assignment of the trade mark.

On December 11, 1962, respondent General Milling Corporation filed an application for the registration of the trademark "All Montana" to be used in the sale of wheat flour. In view of the fact, that the same trademark was previously registered in favor of petitioner Unno Commercial Enterprises, Inc., the Chief Trademark Examiner of the Philippines Patent Office declared an interference proceeding 1 between respondent corporations application (Serial No. 9732), as Junior/Party-Applicant, and petitioner companys registration (Registration No. 9589), as Senior Party-Applicant, docketed in the Philippines Patent Office as Inter Partes Case No. 313, to determine which party has previously adopted and used the trademark "All Montana."

Respondent General Milling Corporation, in its application for registration, alleged that it started using the trademark "All Montana" on August 31, 1955 and subsequently was licensed to use the same by Centennial Mills, Inc. by virtue of a deed of assignment executed on September 20, 1962. On the other hand, petitioner Unno Commercial Enterprises, Inc. argued that the same trademark had been registered in its favor on March 8, 1962 asserting that it started using the trademark on June 30, 1956, as indentor or broker for S.H. Huang Bros. & Co., a local firm.chanrobles law library : red

The Director of Patents, after hearing, ruled in favor of respondent General Milling Corporation and rendered its decision as follows:jgc:chanrobles.com.ph

"However, there is testimony in the record (t.s.n., pp. 11-12, Jan. 17, 1967, testimony of Jose Uy) to the effect that, indispensable, "ALL MONTANA" wheat flour is a premium flour produced from premium wheat coming from the State of Montana, U.S.A. It is apparent that the trademark is primarily geographically descriptive of the goods. It is therefore a matter overlooked by the Trademark Examiner, and it is incumbent upon him to determine if the applicant should claim and is qualified to claim distinctiveness under Section 4(f) of the Trademark Statute. Otherwise, it is registrable on the Supplemental Register and should thus be registered therein.

"WHEREFORE, the Junior Party-Applicant is adjudged prior user of the trademark ALL MONTANA, but because it is primarily geographically descriptive, the application is herein remanded to the Chief Trademark Examiner for proper proceeding before issuance of the certificate of registration.

"The certificate of registration issued to the Senior Party is ordered cancelled.

"IT IS SO ORDERED."cralaw virtua1aw library

After its motion for reconsideration was denied, petitioner brought the instant petition seeking the reversal of the decision and praying that it be declared the owner and prior user of the trademark "All Montana" on wheat flour.

Petitioner based its claim of ownership over the trademark in question by the fact that it acted as an indentor or broker for S. H. Huang Bros. & Co., a local importer of wheat flour, offering as evidence the various shipments, documents, invoices and other correspondence of Centennial Mills, Inc., shipping thousand of bags of wheat flour bearing the trademark "All Montana" to the Philippines. Petitioner argued that these documents, invoices and correspondence proved the fact that it has been using the trademark "All Montana" as early as 1955 in the concept of an owner and maintained that anyone, whether he is only an importer, broker or indentor can appropriate, use and own a particular mark of its own choice although he is not the manufacturer of the goods he deals with. Relying on the provisions of Section 2-A of the Trademarks Law 2 (Republic Act 166), petitioner insists that "the appropriation and ownership of a particular trademark is not merely confined to producers or manufacturers but likewise to anyone who lawfully deals in merchandise who renders any lawful service in commerce, like petitioner in the case at bar." 3

The right to register trademark is based on ownership. 4 When the applicant is not the owner of the trademark being applied for, he has no right to apply for the registration of the same. 5 Under the Trademark Law only the owner of the trademark, trade name or service mark used to distinguish his goods, business or service from the goods, business or service of others is entitled to register the same. 6

The term owner does not include the importer of the goods bearing the trademark, trade name, service mark, or other mark of ownership, unless such importer is actually the owner thereof in the country from which the goods are imported. A local importer, however, may make application for the registration of a foreign trademark, trade name or service mark if he is duly authorized by the actual owner of the name or other mark of ownership. 7

Thus, this Court, has on several occasions ruled that where the applicants alleged ownership is not shown in any notarial document and the applicant appears to be merely an importer or distributor of the merchandise covered by said trademark, its application cannot be granted. 8

Moreover, the provision relied upon by petitioner (Sec. 2-A, Rep. Act No. 166) allows one "who lawfully produces or deals in merchandise . . . or who engages in any lawful business or who renders any lawful service in commerce, by actual use thereof . . . (to) appropriate to his exclusive use a trademark, or a service mark not so appropriated by another." In the case at bar, the evidence showed that the trademark "All Montana" was owned and registered in the name of Centennial Mills, Inc. which later transferred it to respondent General Milling Corporation by way of a deed of assignment. It is undisputed that way back in March, 1955, Centennial Mills, Inc. under the tradename Wenatchee Milling Co., exported flour to the Philippines, through its distributor, herein petitioner Unno Commercial Enterprises, Inc. which acted as indentor or broker for the firm S. H. Huang Bros. & Co. However, because of increased taxes and subsidies, Centennial Mills discontinued shipments of flour in the Philippines and eventually sold its brands for wheat flour, including "All Montana" brand to respondent General Milling Corporation in consideration of 1,000 shares of stock of respondent corporation with a par value of P100.00 per share or a total of P100,000.00. Respondent General Milling Corporation, since the start of the operation in 1961 of its flour mills located in Lapu-lapu City, Cebu has been manufacturing and selling "All Montana" flour in the Philippines.chanrobles law library : red

As against petitioners argument that respondent failed to establish convincingly the ownership of the trademark "All Montana" by its assignor Centennial Mills, Inc., the Director of Patents correctly found that ample evidence was presented that Centennial Mills, Inc. was the owner and prior user in the Philippines of the trademark "All Montana" through a local importer and broker. The Deed of Assignment itself constitutes sufficient proof of its ownership of the trademark "All Montana," showing that Centennial Mills was a corporation duly organized and existing under and by virtue of the laws of the State of Oregon, U.S.A. with principal place and business at Portland, Oregon, U.S.A. and the absolute and registered owner of several trademarks for wheat flour, i.e. (Imperial, White Lily, Duck, General, Swan, White Horse, Vinta, El Paro, Bakers Joy, Choice, Red Bowl, All Montana and Dollar) all of which were assigned by it to respondent General Milling Corporation. The deed of assignment was signed by its president, Dugald MacGregor, duly acknowledged before James Hunt, a notary public for the State of Oregon, accompanied by a certification issued by the Secretary of State of the State of Oregon stating that the said James Hunt is a duly qualified Notary Public with full power and authority to take acknowledgments of all oaths and that full faith and credit should be given to his official acts as notary public.

The Director of Patents likewise correctly rejected petitioners contention that in a 1954 conference in Manila the ownership and use by petitioner of the brand "All Montana" was agreed upon, on the contrary finding that "Details of that meeting were, however, explained by Mr. Dugald MacGregor, President of Centennial Mills, Inc., as the Junior Partys rebuttal witness. Mr. MacGregor confirmed holding such conference in a restaurant in Manila with representatives of the Senior Party, namely; Messrs. Jose Uy, Francisco Gonzales and S.H. Huang, although he could not remember the name of the restaurant. He further explained that his company owned the trademark; that it had been using the mark in the United States; and that ownership of the mark had never been conferred upon any other company, much less the Senior Party" ; and "Inasmuch as it was not the owner of the trademark, the Senior Party could not be regarded as having used and adopted it, and had no right to apply for its registration. It acknowledged that it was a mere importer of flour, and a mere importer and distributor acquires no rights in the mark used on the imported goods by the foreign exporter in the absence of an assignment of any kind . . ., Trademarks used and adopted on goods manufactured or packed in a foreign country in behalf of a domestic importer, broker, or indentor and distributor are presumed to be owned by the manufacturer or packer, unless there is a written agreement clearly showing that ownership vests in the importer, broker, indentor or distributor."cralaw virtua1aw library

Thus, petitioners contention that it is the owner of the mark "All Montana" because of its certificate of registration issued by the Director of Patents, must fail, since ownership of a trademark is not acquired by the mere fact of registration alone. 9 Registration merely creates a prima facie presumption of the validity of the registration, of the registrants ownership of the trademark and of the exclusive right to the use thereof. 10 Registration does not perfect a trademark right. 11 As conceded itself by petitioner, evidence may be presented to overcome the presumption. Prior use by one will controvert a claim of legal appropriation by subsequent users. In the case at bar, the Director of Patents found that "ample evidence was presented in the record that Centennial Mills, Inc. was the owner and prior user in the Philippines of the trademark All Montana through a local importer and broker. Use of a trademark by a mere importer, indentor or exporter (the Senior Party herein) inures to the benefit of the foreign manufacturer whose goods are identified by the trademark. The Junior Party has hereby established a continuous chain of title and, consequently, prior adoption and use" and ruled that "based on the facts established, it is safe to conclude that the Junior Party has satisfactorily discharged the burden of proving priority of adoption and use and is entitled to registration." It is well-settled that we are precluded from making further inquiry, since the findings of fact of the Director of Patents in the absence of any showing that there was grave abuse of discretion is binding on us 12 and the findings of facts by the Director of Patents are deemed conclusive in the Supreme Court provided that they are supported by substantial evidence. 13 Petitioner has failed to show that the findings of fact of the Director of Patents are not substantially supported by evidence nor that any grave abuse of discretion was committed.cralawnad

Finally, the Court finds without merit petitioners argument that the Director of Patents could not order the cancellation of its certificate of registration in an interference proceeding and that the question of whether or not a certificate of registration is to be cancelled should have been brought in cancellation proceedings. Under Rule 178 of the Rules of the Patent Office in Trademark Cases, 14 the Director of Patents is expressly authorized to order the cancellation of a registered mark or trade name or name or other mark of ownership in an inter partes case, such as the interference proceeding at bar. 15

WHEREFORE, the appealed decision is hereby affirmed. No costs.

Melencio-Herrera, Plana, Vazquez, Relova and Gutierrez, Jr.,JJ., concur.

SECOND DIVISION

[G.R. No. 75420. November 15, 1991.]

KABUSHI KAISHA ISETAN, also known and trading as ISETAN CO., LTD.,Petitioner, v. THE INTERMEDIATE APPELLATE COURT, THE DIRECTOR OF PATENTS, and ISETANN DEPARTMENT STORE, INC. respondents.

Agcaoili & Associates forPetitioner.

Cruz, Durian, Agabin, Atienza, Alday & Tuason forPrivate Respondent.

SYLLABUS

1. REMEDIAL LAW; ACTIONS; APPEALS; STRINGENT APPLICATION OF PERIOD OF APPEAL APPLIED IN THE ABSENCE OF COMPELLING EQUITABLE CONSIDERATIONS FOR RELAXATION OF RULE; CASE AT BAR. The Court dismissed the petition in a resolution dated July 8, 1987, on the ground that it was filed fourteen (14) days later. However, on motion for reconsideration, whereby the petitioner appealed to this Court on equitable grounds stating that it has a strong and meritorious case, the petition was given due course in a resolution dated May 19, 1988 to enable us to examine more fully any possible denial of substantive justice. The parties were then required to submit their memoranda. After carefully considering the records of this case, we reiterate our July 8, 1987 resolution dismissing the petition. There are no compelling equitable considerations which call for the application of the rule enunciated in Serrano v. Court of Appeals (139 SCRA 179 [1985]) and Orata v. Intermediate Appellate Court, Et. Al. (185 SCRA 148 [1990]) that considerations of substantial justice manifest in the petition may relax the stringent application of technical rules so as not to defeat an exceptionally meritorious petition.

2. ID.; EVIDENCE; FINDINGS OF FACT OF THE PATENT OFFICE, UPHELD ON APPEAL. Regarding the petitioners claims of substantial justice which led us to give due course, we decline to disturb the rulings of the Patent Office and the Court of Appeals. The rule is that the findings of facts of the Director of patents are conclusive on the Supreme Court, provided they are supported by substantial evidence.

3. MERCANTILE LAW; TRADEMARKS; ACTUAL USE, PREREQUISITE TO ACQUISITION OF OWNERSHIP. A fundamental principle of Philippine Trademarks Law is that actual use in commerce in the Philippines is a pre-requisite to the acquisition of ownership over a trademark or a tradename.

4. ID.; ID.; ID.; PRIOR REGISTRANT CANNOT CLAIM EXCLUSIVE USE OF TRADENAME. A prior registrant cannot claim exclusive use of the trademark unless it uses it in commerce.

5. ID.; ID.; ID.; MERE ADOPTION OF A PARTICULAR TRADENAME WITHOUT ACTUAL USE THEREOF, INSUFFICIENT; CASE AT BAR. The records show that the petitioner has never conducted any business in the Philippines. It has never promoted its tradename or trademark in the Philippines. It has absolutely no business goodwill in the Philippines. It is unknown to Filipinos except the very few who may have noticed it while travelling abroad. It has never paid a single centavo of tax to the Philippine government. Under the law, it has no right to the remedy it seeks. There can be no question from the records that the petitioner has never used its tradename or trademark in the Philippines. The mere origination or adoption of a particular tradename without actual use thereof in the market is insufficient to give any exclusive right to its use (Johnson Mfg, Co. v. Leader Filling Stations Corp. 196 N.E. 852, 291 Mass. 394), even though such adoption is publicly declared, such as by use of the name in advertisements, circulars, price lists, and on signs and stationery. (Consumers Petroleum Co. v. Consumers Co. of Ill. 169 F 2d 153).

6. ID.; PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY; DOES NOT AUTOMATICALLY EXCLUDE OTHER COUNTRIES FROM USING A TRADENAME USED IN ONE COUNTRY. The Paris Convention for the Protection of Industrial Property does not automatically exclude all countries of the world have signed it from using a tradename which happens to be used in one country.

D E C I S I O N

GUTIERREZ, JR.,J.:

This is a petition for review oncertiorariwhich seeks to set aside (1) the decision of the Court of Appeals dated June 2, 1986 in AC-G.R. SP No. 008873 entitled "Kabushi Kaisha Isetan, also known and trading as Isetan Company Limited v. Isetann Department Store, Inc." dismissing the petitioners appeal from the decision of the Director of Patents; and (2) the Resolution dated July 11, 1986 denying the petitioners motion for reconsideration.

As gathered from the records, the facts are as follows:chanrob1es virtual 1aw library

Petitioner Kabushi Kaisha Isetan is a foreign corporation organized and existing under the laws of Japan with business address at 14-1 Shinjuku, 3-Chrome, Shinjuku, Tokyo, Japan. It is the owner of the trademark "Isetan" and the "Young Leaves Design."

The petitioner alleges that it first used the trademark Isetan on November 5, 1936. It states that the trademark is a combination of "Ise" taken from "Iseya" the first name of the rice dealer in Kondo, Tokyo in which the establishment was first located and "Tan" which was taken from "Tanji Kosuge the First." The petitioner claims to have expanded its line of business internationally from 1936 to 1974. The trademark "Isetan" and "Young Leaves Design" were registered in Japan covering more than 34 classes of goods. On October 3, 1983, the petitioner applied for the registration of "Isetan" and "Young Leaves Design" with the Philippine Patent Office under Permanent Serial Nos. 52422 and 52423 respectively, (Rollo, p. 43)

Private respondent, Isetann Department Store, on the other hand, is a domestic corporation organized and existing under the laws of the Philippines with business address at 423-430 Rizal Avenue, Sta. Cruz, Manila, Philippines.chanrobles virtualawlibrary chanrobles.com:chanrobles.com.ph

It claims that it used the word "Isetann" as part of its corporated name and on its products particularly on shirts in Joymart Department Store sometime in January 1979. The suffix "Tann" means an alter, the place of offering in Chinese and this was adopted to harmonize the corporate name and the corporate logo of two hands in cup that symbolizes the act of offering to the Supreme Being for business blessing.

On May 30, 1980 and May 20, 1980, the private respondent registered "Isetann Department Store, Inc." and Isetann and Flower Design in the Philippine Patent Office under SR. Reg. Nos. 4701 and 4714, respectively, as well as with the Bureau of Domestic Trade under Certificate of Registration No. 32020. (Rollo, pp. 43-44)

On November 28, 1980, the petitioner filed with the Phil. Patent Office two (2) petitions for the cancellation of Certificates of Supplemental Registration Nos. SR-4717 and SR-4701 stating among others that:jgc:chanrobles.com.ph

". . . except for the additional letter N in the word "Isetan", the mark registered by the registrant is exactly the same as the trademark ISETAN owned by the petitioner and that the young leaves registered by the registrant is exactly the same as the young leaves design owned by the petitioner."cralaw virtua1aw library

The petitioner further alleged that private respondents act of registering a trademark which is exactly the same as its trade mark and adopting a corporate name similar to that of the petitioner were with the illegal and immoral intention of cashing in on the long established goodwill and popularity of the petitioners reputation, thereby causing great and irreparable injury and damage to it (Rollo, p. 521). It argued that both the petitioners and respondents goods move in the same channels of trade, and ordinary people will be misled to believe that the products of the private respondent originated or emanated from, are associated with, or are manufactured or sold, or sponsored by the petitioner by reason of the use of the challenged trademark.

The petitioner also invoked the Convention of Paris of March 20, 1883 for the Protection of Industrial Property of which the Philippines and Japan are both members, The petitioner stressed that the Philippines adherence to the Paris Convention committed the government to the protection of trademarks belonging not only to Filipino citizens but also to those belonging to nationals of other member countries who may seek protection in the Philippines. (Rollo, p. 522)

The petition was docketed as Inter Partes Cases Nos. 1460 and 1461 (Rollo, p. 514).

Meanwhile, the petitioner also filed with the Securities and Exchange Commission (SEC) a petition to cancel the mark "ISETAN" as part of the registered corporate name of Isetann Department Store, Inc. which petition was docketed as SEC Case No. 2051 (Rollo, p. 524). On May 17, 1985, this petition was denied in a decision rendered by SECs Hearing Officer, Atty. Joaquin C. Garaygay.chanrobles.com : virtual law library

On appeal, the Commission reversed the decision of the Hearing Officer on February 25, 1986. It directed the private respondent to amend its Articles of Incorporation within 30 days from finality of the decision.

On April 15, 1986, however, respondent Isetann Department Store filed a motion for reconsideration. (Rollo, pp. 325-353). And on September 10, 1987, the Commission reversed its earlier decision dated February 25, 1986 thereby affirming the decision rendered by the Hearing Officer on May 17, 1985. The Commission stated that since the petitioners trademark and tradename have never been used in commerce on the petitioners products marketed in the Philippines, the trademark or tradename have not acquired a reputation and goodwill deserving of protection from usurpation by local competitors. (Rollo, p. 392)

This SEC decision which denied and dismissed the petition to cancel was submitted to the Director of Patents as part of the evidence for the privateRespondent.

On January 24, 1986, the Director of Patents after notice and hearing rendered a joint decision in Inter Partes Cases Nos. 1460 and 1461, the dispositive portion of which reads:jgc:chanrobles.com.ph

"WHEREFORE, all the foregoing considered, this Office is constrained to hold that the herein Petitioner has not successfully made out a case of cancellation. Accordingly, Inter Partes Cases Nos. 1460 and 1461 are, as they are hereby, DISMISSED. Hence, Respondents Certificate of Supplemental Registration No. 4717 issued on May 20, 1980 covering the tradename ISETANN DEPT. STORE, INC. & FLOWER DESIGN are, as they are hereby ordered to remain in full force and effect for the duration of their term unless sooner or later terminated by law.

The corresponding application for registration in the Principal Register of the Trademark and of the tradename aforesaid are hereby given due course.

Let the records of these cases be transmitted to the Trademark Examining Division for appropriate action in accordance with this Decision."cralaw virtua1aw library

On February 21, 1986, Isetan Company Limited moved for the reconsideration of said decision but the motion was denied on April 2, 1986 (Rollo, pp. 355-359).

From this adverse decision of the Director of Patents, the petitioner appealed to the Intermediate Appellate Court (now Court of Appeals).

On June 2, 1986, the IAC dismissed the appeal on the ground that it was filed out of time.

The petitioners motion for reconsideration was likewise denied in a resolution dated July 11, 1986.

Hence, this petition.

Initially, the Court dismissed the petition in a resolution dated July 8, 1987, on the ground that it was filed fourteen (14) days later. However, on motion for reconsideration, whereby the petitioner appealed to this Court on equitable grounds stating that it has a strong and meritorious case, the petition was given due course in a resolution dated May 19, 1988 to enable us to examine more fully any possible denial of substantive justice. The parties were then required to submit their memoranda. (Rollo, pp. 2-28; Resolution, pp. 271; 453).

After carefully considering the records of this case, we reiterate our July 8, 1987 resolution dismissing the petition. There are no compelling equitable considerations which call for the application of the rule enunciated in Serrano v. Court of Appeals (139 SCRA 179 [1985]) and Orata v. Intermediate Appellate Court, Et. Al. (185 SCRA 148 [1990]) that considerations of substantial justice manifest in the petition may relax the stringent application of technical rules so as not to defeat an exceptionally meritorious petition.chanrobles lawlibrary : rednad

There is no dispute and the petitioner does not question the fact that the appeal was filed out of time.

Not only was the appeal filed late in the Court of Appeals, the petition for review was also filed late with us. In common parlance, the petitioners case is "twice dead" and may no longer be reviewed.

The Court of Appeals correctly rejected the appeal on the sole ground of late filing when it ruled:jgc:chanrobles.com.ph

"Perfection of an appeal within the time provided by law is jurisdictional, and failure to observe the period is fatal.

The decision sought to be appealed is one rendered by the Philippine Patent Office, a quasi-judicial body. Consequently, under Section 23(c) of the Interim Rules of Court, the appeal shall be governed by the provisions of Republic Act No. 5434, which provides in its Section 2;

SECTION 2. Appeals to Court of Appeals. Appeals to the Court of Appeals shall be filed within fifteen (15) days from notice of the ruling, award, order, decision or judgment or from the date of its last publication, if publication is required by law for its effectivity; or in case a motion for reconsideration is filed within that period of fifteen (15) days, then within ten (10) days from notice or publication, when required by law, of the resolution denying the motion for reconsideration. No more than one motion for reconsideration shall be allowed any party. If no appeal is filed within the periods here fixed, the ruling, award, order, decision or judgment shall become final and may be executed as provided by existing law.

Attention is invited to that portion of Section 2 which states that in case a motion for reconsideration is filed, an appeal should be filed within ten (10) days from notice of the resolution denying the motion for reconsideration."cralaw virtua1aw library

The petitioner received a copy of the Court of Appeals resolution denying its motion for reconsideration on July 17, 1986. It had only up to August 1, 1986 to file a petition for review with us. The present petition was posted on August 2, 1986 and received by us on August 8, 1986. There is no question that it was again, filed late because the petitioner filed an ex-parte motion for admission explaining the delay.

The decision of the Patent Office has long become final and executory. So has the Court of Appeals decision.

Regarding the petitioners claims of substantial justice which led us to give due course, we decline to disturb the rulings of the Patent Office and the Court of Appeals.

A fundamental principle of Philippine Trademarks Law is that actual use in commerce in the Philippines is a pre-requisite to the acquisition of ownership over a trademark or a tradename.chanrobles virtual lawlibrary

The Trademark Law, Republic Act No. 166, as amended, under which this case was heard and decided provides:jgc:chanrobles.com.ph

"SECTION 2. What are registrable. Trademarks, tradenames and service marks owned by persons, corporation, partnerships or associations domiciled in the Philippines and by persons, corporations, partnerships or associations domiciled in any foreign country may be registered in accordance with the provisions of this Act: Provided, That said trademarks, tradenames, or service marks are actually in use in commerce and services not less than two months in the Philippines before the time the applications for registration are filed: And provided, further, That the country of which the applicant for registration is a citizen grants by law substantially similar privileges to citizens of the Philippines, and such fact is officially certified, with a certified true copy of the foreign law translated into the English language, by the government of the foreign country to the Government of the Republic of the Philippines. (As amended by R.A. No. 865).

SECTION 2-A. Ownership of trademarks, tradenames and service marks; how acquired. Anyone who lawfully produces or deals in merchandise of any kind or who engages in any lawful business, or who renders any lawful service in commerce, by actual use thereof in manufacture or trade, in business, and in the service rendered, may appropriate to his exclusive use a trademark, a tradename, or a service mark not so appropriated by another, to distinguish his merchandise, business or service from the merchandise, business or service of others. The ownership or possession of a trademark, tradename, service mark, heretofore or hereafter appropriated, as in this section provided, shall be recognized and protected in the same manner and to the same extent as are other property rights known to this law. (As amended by R.A. No. 638)"

These provisions have been interpreted in Sterling Products International, Inc. v. Farbenfabriken Bayer Actiengesellschaft (27 SCRA 1214 [1969]) in this way:jgc:chanrobles.com.ph

"A rule widely accepted and firmly entrenched because it has come down through the years is that actual use in commerce or business is a prerequisite to the acquisition of the right of ownership over a trademark.xxx

". . . Adoption alone of a trademark would not give exclusive right thereto. Such right grows out of their actual use. Adoption is not use. One may make advertisements, issue circulars, give out price lists on certain goods; but these alone would not give exclusive right of use. For trademark is a creation of use. The underlying reason for all these is that purchasers have come to understand the mark as indicating the origin of the wares. Flowing from this is the traders right to protection in the trade he has built up and the goodwill he has accumulated from use of the trademark. . . . ."cralaw virtua1aw library

In fact, a prior registrant cannot claim exclusive use of the trademark unless it uses it in commerce.

We rule in Pagasa Industrial Corporation v. Court of Appeals (118 SCRA 526 [1982]):jgc:chanrobles.com.ph

"3. The Trademark law is very clear. It requires actual commercial use of the mark prior to its registration. There is no dispute that respondent corporation was the first registrant, yet it failed to fully substantiate its claim that it used in trade or business in the Philippines the subject mark; it did not present proof to invest it with exclusive, continuous adoption of the trademark which should consist among others, of considerable sales since its first use. The invoices (Exhibits 7, 7-a, and 8-b) submitted by respondent which were dated way back in 1957 show that the zippers sent to the Philippines were to be used as samples and of no commercial value. The evidence for respondent must be clear, definite and free from inconsistencies. (Sy Ching v. Gaw Lui, 44 SCRA 148-149) Samples are not for sale and therefore, the fact of exporting them; to the Philippines cannot be considered to be equivalent to the use contemplated by the law. Respondent did not expect income from such samples. There were no receipts to establish sale, and no proof were presented to show that they were subsequently sold in the Philippines." (Pagasa Industrial Corp. v. Court of Appeals, 118 SCRA 526 [1982]; Emphasis Supplied)

The records show that the petitioner has never conducted any business in the Philippines. It has never promoted its tradename or trademark in the Philippines. It has absolutely no business goodwill in the Philippines. It is unknown to Filipinos except the very few who may have noticed it while travelling abroad. It has never paid a single centavo of tax to the Philippine government. Under the law, it has no right to the remedy it seeks.cralawnad

There can be no question from the records that the petitioner has never used its tradename or trademark in the Philippines.

The petitioners witnesses, Mr. Mayumi Takayama and Mr. Hieoya Murakami, admitted that:chanrob1es virtual 1aw library

1) The petitioners company is not licensed to do business in the Philippines;

2) The petitioners trademark is not registered under Philippine law; and

3) The petitioners trademark is not being used on products in trade, manufacture, or business in the Philippines.

It was also established from the testimony of Atty. Villasanta, petitioners witness, that the petitioner has never engaged in promotional activities in the Philippines to popularize its trademark because not being engaged in business in the Philippines, there is no need for advertising. The claim of the petitioner that millions of dollars have been spent in advertising the petitioners products, refers to advertising in Japan or other foreign places. No promotional activities have been undertaken in the Philippines, by the petitioners own admission.

Any goodwill, reputation, or knowledge regarding the name Isetann is purely the work of the privateRespondent. Evidence was introduced on the extensive promotional activities of the privateRespondent.

It might be pertinent at this point to stress that what is involved in this case is not so much a trademark as a tradename. Isetann Department Store, Inc. is the name of a store and not of products sold in various parts of the country. This case must be differentiated from cases involving products bearing such familiar names as "Colgate", "Singer", "Toyota", or "Sony" where the products are marketed widely in the Philippines. There is no product with the name "Isetann" popularized with that brand name in the Philippines. Unless one goes to the store called Isetann in Manila, he would never know what the name means. Similarly, until a Filipino buyer steps inside a store called "Isetan" in Tokyo or Hongkong, that name would be completely alien to him. The records show that among Filipinos, the name cannot claim to be internationally well-known.

The rule is that the findings of facts of the Director of Patents are conclusive on the Supreme Court, provided they are supported by substantial evidence. (Chua Che v. Phil. Patent Office, 13 SCRA 67 [1965]; Chung Te v. Ng Kian Giab, 18 SCRA 747 [1966]; Marvex Commercial Co., Inc. v. Petra Hawpia & Co., 18 SCRA 1178 [1966]; Lim Kiah v. Kaynee, Co. 25 SCRA 485 [1968]; Kee Boc v. Dir. of Patents, 34 SCRA 570 [1970].

The conclusions of the Director of Patents are likewise based on applicable law and jurisprudence:jgc:chanrobles.com.ph

"What is to be secured from unfair competition in a given territory is the trade which one has in that particular territory. There is where his business is carried on where the goodwill symbolized by the trademark has immediate value; where the infringer may profit by infringement.chanrobles law library

There is nothing new in what we now say. Plaintiff itself concedes (Brief for Plaintiff-Appellant, p. 88) that the principle of territoriality of the Trademark law has been recognized in the Philippines, citing Ingenohl v. Walter E. Olsen, 71 L. ed. 762. As Callmann puts it, the law of trademarks rests upon the doctrine of nationality or territoriality." (2 Callmann, Unfair Competition and Trademarks, 1945, ed., p. 1006) (Sterling Products International, Inc. v. Farbenfabriken Bayer Aktiengesellachaft, 27 SCRA 1214 [1969];Emphasis supplied)

The mere origination or adoption of a particular tradename without actual use thereof in the market is insufficient to give any exclusive right to its use (Johnson Mfg, Co. v. Leader Filling Stations Corp. 196 N.E. 852, 291 Mass. 394), even though such adoption is publicly declared, such as by use of the name in advertisements, circulars, price lists, and on signs and stationery. (Consumers Petroleum Co. v. Consumers Co. of Ill. 169 F 2d 153).

The Paris Convention for the Protection of Industrial Property does not automatically exclude all countries of the world have signed it from using a tradename which happens to be used in one country. To illustrate If a taxicab or bus company in a town in the United Kingdom or India happens to use the tradename "Rapid Transportation", it does not necessarily follow that "Rapid" can no longer be registered in Uganda, Fiji, or the Philippines.

As stated by the Director of Patents

"Indeed, the Philippines is a signatory to this Treaty and, hence, we must honor our obligation thereunder on matters concerning internationally known or well known marks. However, this Treaty provision clearly indicated the conditions which must exist before any trademark owner can claim and be afforded rights such as the Petitioner herein seeks and those conditions are that:chanrob1es virtual 1aw library

a) the mark must be internationally known or well known;

b) the subject of the right must be a trademark, not a patent or copyright or anything else;

c) the mark must be for use in the same or similar kinds of goods, and

d) the person claiming must be the owner of the mark (The Parties Convention Commentary on the Paris Convention. Article by Dr. Bogach, Director General of the World Intellectual Property Organization, Geneva, Switzerland, 1985)."

The respondent registered its trademark in 1979. It has continuously used that name in commerce. It has established a goodwill through extensive advertising. The people who buy at Isetann Store do so because of Isetanns efforts. There is no showing that the Japanese firms registration in Japan or Hongkong has any influence whatsoever on the Filipino buying public.chanrobles virtual lawlibrary

WHEREFORE, premises considered, the petition is hereby DISMISSED.

SO ORDERED.

THIRD DIVISION

[G.R. No. 91332. July 16, 1993.]

PHILIP MORRIS, INC., BENSON & HEDGES (CANADA), INC., AND FABRIQUES OF TABAC REUNIES, S.A.,Petitioners, v. THE COURT OF APPEALS AND FORTUNE TOBACCO CORPORATION,Respondents.

Quasha, Asperilla, Ancheta, Pea & Nolasco Law Office, forPetitioners.

Teresita Gandionco-Oledan forPrivate Respondent.

SYLLABUS

1. MERCANTILE LAW; TRADEMARK LAW; FOREIGN CORPORATION NOT ENGAGED IN LOCAL COMMERCE, MAY SUE FOR INFRINGEMENT. To sustain a successful prosecution of their suit for infringement,Petitioners, as foreign corporations not engaged in local commerce, rely on Section 21-A of the Trademark Law to drive home the point that they are not precluded from initiating a cause of action in the Philippines on account of the principal perception that another entity is pirating their symbol without any lawful authority to do so. Judging from a perusal of the aforequoted Section 21-A, the conclusion reached by petitioners is certainly correct for the proposition in support thereof is embedded in Philippine legal jurisprudence.

2. ID.; ID.; ID.; ALLEGATION OF PERSONALITY TO SUE, MANDATORY REQUIREMENT. On May 21, 1984, Section 21-A, the provision under consideration, was qualified by this Court in La Chemise Lacoste S.A. v. Fernandez (129 SCRA 373 [1984]), to the effect that a foreign corporation not doing business in the Philippines may have the right to sue before Philippine Courts, but existing adjective axioms require that qualifying circumstances necessary for the assertion of such right should first be affirmatively pleaded (2 Agbayani, Commercial Laws of the Philippines, 1991 Ed., p. 598; 4 Martin, Philippine Commercial Laws, Rev. Ed., 1986, p. 381). Indeed, it is not sufficient for a foreign corporation suing under Section 21-A to simply allege its alien origin. Rather, it must additionally allege its personality to sue. Relative to this condition precedent, it may be observed that petitioners were not remiss in averring their personality to lodge a complaint for infringement especially so when they asserted that the main action for infringement is anchored on an isolated transaction (Atlantic Mutual Ins. Co. v. Cebu Stevedoring Co., Inc., 17 SCRA 1037 [1966], 1 Regalado, Remedial Law Compendium, Fifth Rev. Ed., 1988, p. 103)

3. ID.; ID.; ID.; ID.; CASE AT BAR. Given these confluence of existing laws amidst the cases involving trademarks, there can be no disagreement to the guiding principle in commercial law that foreign corporations not engaged in business in the Philippines may maintain a cause of action for infringement primarily because of Section 21-A of the Trademark Law when the legal standing to sue is alleged, which petitioners have done in the case at hand.

4. ID.; ID.; ACTUAL COMMERCIAL USE OF TRADEMARK, NECESSARY FOR ACQUISITION OF OWNERSHIP THEREOF. In assailing the justification arrived at by respondent court when it recalled the writ of preliminary injunction, petitioners are of the impression that actual use of their trademarks in Philippine commercial dealings is not an indispensable element under Article 2 of the Paris Convention. Yet petitioners perception along this line is nonetheless resolved by Sections 2 and 2-A of the Trademark Law which speak loudly about the necessity of actual commercial use of the trademark in the local forum.

5. INTERNATIONAL LAW; RULES ON INTERNATIONAL LAW GIVEN AN EQUAL STANDING, NOT SUPERIOR, TO NATIONAL LEGISLATIVE ENACTMENTS; CASE AT BAR. Following universal acquiescene and comity, our municipal law on trademarks regarding the requirement of actual use in the Philippines must subordinate an international agreement inasmuch as the apparent clash is being decided by a municipal tribunal (Mortensen v. Peters, Great Britain, High Court of Judiciary of Scotland, 1906, 8 Sessions 93; Paras, International Law and World Organization, 1971 Ed., p. 20). Withal, the fact that international law has been made part of the law of the land does not by any means imply the primacy of international law over national law in the municipal sphere. Under the doctrine of incorporation as applied in most countries, rules of international law are given a standing equal, not superior, to national legislative enactments (Salonga and Yap, Public International Law, Fourth ed., 1974, p. 6).

6. REMEDIAL LAW; PROVISIONAL REMEDIES; PRELIMINARY INJUNCTION; RELUCTANCE TO ISSUE WRIT, DEFERENCE TO LOWER COURTS OVER ASSAILED INTERLOCUTORY ORDERS. We can not help but notice the manner the ascription was framed which carries with it the implied but unwarranted assumption of the existence of petitioners right to relief. It must be emphasized that this aspect of exclusive dominion to the trademarks, together with the corollary allegation of irreparable injury, has yet to be established by petitioners by the requisite quantum of evidence in civil cases. It cannot be denied that our reluctance to issue a writ of preliminary injunction is due to judicial deference to the lower courts, involved as there is a mere interlocutory order (Villarosa v. Teodoro, Sr., 100 Phil. 25 [1956]). In point of adjective law, the petition has its roots on a remedial measure which is but ancillary to the main action for infringement still pending factual determination before the court of origin.

7. ID.; ID.; ID.; EXISTENCE OF RIGHT TO BE PROTECTED, INDISPENSABLE; NOT MET IN CASE AT BAR. More telling are the allegations of petitioners in their complaint as well as in the very petition filed with this Court indicating that they are not doing business in the Philippines, for these frank representations are inconsistent and incongruent with any pretense of a right which can be breached (Article 1431, New Civil Code; Section 4, Rule 129; Section 3, Rule 58, Revised Rules of Court). Indeed, to be entitled to an injunctive writ, petitioner must show that there exists a right to be protected and that the facts against which injunction is directed are violative of said right (Searth Commodities Corporation v. Court of Appeals, 207 SCRA 622 [1992]). It may be added in this connection that albeit petitioners are holders of certificate of registration in the Philippines of their symbols as admitted by private respondent, the fact of exclusive ownership cannot be made to rest solely on these documents since dominion over trademarks is not acquired by the mere fact of registration alone and does not perfect a trademark right (Unno Commercial Enterprises, Inc. v. General Milling Corporation, 120 SCRA 804 [1983]).

8. ID.; ID.; ID.; PRIOR PROOF OF TRANSGRESSION OF ACTUAL EXISTING RIGHT, INDISPENSABLE REQUIREMENT. What we are simply conveying is another basic tenet in remedial law that before injunctive relief may properly issue, complainants right or title must be undisputed and demonstrated on the strength of ones own title to such a degree as to unquestionably exclude dark clouds of doubt, rather than on the weakness of the adversarys evidence, inasmuch as the possibility of irreparable damages, without prior proof of transgression of an actual existing right, is no ground for injunction being mere damnum absque injuria (Talisay-Silay Milling Co., Inc. v. CFI of Negros Occidental, 42 SCRA 577 [1971]; Francisco, Rules of Court, Second ed., 1985, p. 225; 3 Martin, Rules of Court, 1986 ed., p. 82).

9. ID.; ID.; ID.; GROUNDS FOR DENIAL AND/OR DISSOLUTION OF WRIT. Under Section 6, Rule 58 of the Revised Rules of Court, injunction may be refused, or, if granted, may be dissolved, on the following instances: (1) If there is insufficiency of the complaint as shown by the allegations therein. Refusal or dissolution may be granted in this case with or without notice to the adverse party. (2) If it appears after hearing that although the plaintiff is entitled to the injunction, the issuance or continuance thereof would cause great damage to the defendant, while the plaintiff can be fully compensated for such damages as he may suffer. The defendant, in this case, must file a bond in an amount fixed by the judge conditioned that he will pay all damages which the plaintiff may suffer by the refusal or the dissolution of the injunction. (3) On other grounds upon affidavits on the part of the defendant which may be opposed by the plaintiff also by affidavits. Modification of the injunction may also be ordered by the court if it appears that the extent of the preliminary injunction granted is too great. (3 Martin, Rules of Court, 1986 ed., p. 99; Francisco, supra, at p. 268.)

10. ID.; ID.; ID.; FOREIGN CORPORATION NOT DOING BUSINESS IN THE PHILIPPINES NOT ENTITLED TO ISSUANCE OF WRIT OF PRELIMINARY INJUNCTION IN THE ABSENCE OF THEIR RIGHT TO BE PROTECTED; CASE AT BAR. In view of the explicit representation of petitioners in the complaint that they are not engaged in business in the Philippines, it inevitably follows that no conceivable damage can be suffered by them not to mention the foremost consideration heretofore discussed on the absence of their "right" to be protected. WHEREFORE, the petition is hereby DISMISSED and the Resolutions of the Court of Appeals dated September 14, 1989 and November 29, 1989 are hereby AFFIRMED.

11. ID.; ID.; ID.; ERRONEOUS LIFTING OF WRIT MAY BE CURED BY APPEAL AND NOT BY PETITION FOR CERTIORARI. Assuming in gratia argumenti that respondent court erroneously lifted the writ it previously issued, the same may be cured by appeal and not in the form of a petition forcertiorari(Clark v. Philippine Ready Mix Concrete Co., 88 Phil. 460 [1951]).

12. ID.; ID.; ID.; WRIT MAY BE DISSOLVED WITHOUT PREVIOUS NOTICE TO ADVERSE PARTY AND WITHOUT HEARING. Verily, and mindful of the rule that a writ of preliminary injunction is an interlocutory order which is always under the control of the court before final judgment petitioners criticism must fall flat on the ground, so to speak, more so when extinction of the previously issued writ can even be made without previous notice to the adverse party and without a hearing (Caluya v. Ramos, 79 Phil. 640 [1947]; 3 Moran, Rules of Court, 1970 ed., p. 81).

D E C I S I O N

MELO,J.:

In the petition before us, petitioners Philip Morris, Inc., Benson and Hedges (Canada), Inc., and Fabriques of Tabac Reunies, S.A., are ascribing whimsical exercise of the faculty conferred upon magistrates by Section 6, Rule 58 of the Revised Rules of Court when respondent Court of Appeals lifted the writ of preliminary injunction it earlier had issued against Fortune Tobacco Corporation, herein private respondent, from manufacturing and selling "MARK" cigarettes in the local market.chanrobles lawlibrary : rednad

Banking on the thesis that petitioners respective symbols "MARK VII", "MARK TEN", and "LARK", also for cigarettes, must be protected against unauthorized appropriation, petitioners twice solicited the ancillary writ in the course of the main suit for infringement but the court of origin was unpersuaded.

Before we proceed to the generative facts of the case at bar, it must be emphasized that resolution of the issue on the propriety of lifting the writ of preliminary injunction should not be construed as a prejudgment of the suit below. Aware of the fact that the discussion we are about to enter into involves a mere interlocutory order, a discourse on the aspect of infringement must thus be avoided. With these caveat, we shall now shift our attention to the events which spawned the controversy.

As averred in the initial pleading, Philip Morris, Incorporated is a corporation organized under the laws of the State of Virginia, United States of America, and does business at 100 Park Avenue, New York, New York, United States of America. The two other plaintiff foreign corporations, which are wholly-owned subsidiaries of Philip Morris, Inc., are similarly not doing business in the Philippines but are suing on an isolated transaction. As registered owners of "MARK VII", "MARK TEN", and "LARK" per certificates of registration issued by the Philippine Patent Office on April 26, 1973, May 28, 1964, and March 25, 1964, plaintiffs-petitioners asserted that defendant Fortune Tobacco Corporation has no right to manufacture and sell cigarettes bearing the allegedly identical or confusingly similar trademark "MARK" in contravention of Section 22 of the Trademark Law, and should, therefore, be precluded during the pendency of the case from performing the acts complained of via a preliminary injunction (p. 75, Court of Appeals Rollo in AC-G.R. SP No. 13132).

For its part, Fortune Tobacco Corporation admitted petitioners certificates of registration with the Philippine Patent Office subject to the affirmative and special defense on misjoinder of party plaintiffs. Private respondent alleged further that it has been authorized by the Bureau of Internal Revenue to manufacture and sell cigarettes bearing the trademark "MARK", and that "MARK" is a common word which cannot be exclusively appropriated (p. 158, Court of Appeals Rollo in AC-G.R. SP No. 13132).

On March 28, 1983, petitioners prayer for preliminary injunction was denied by the Presiding Judge of Branch 166 of the Regional Trial Court of the National Capital Judicial Region stationed at Pasig, premised upon the following propositions:chanrob1es virtual 1aw library

Plaintiffs admit in paragraph 2 of the complaint that." . . they are not doing business in the Philippines and are suing on an isolated transaction . . ." This simply means that they are not engaged in the sale, manufacture, importation, expor[t]ation and advertisement of their cigarette products in the Philippines. With this admission, defendant asks: ". . . how could defendants "MARK" cigarettes cause the former "irreparable damage" within the territorial limits of the Philippines?" Plaintiffs maintain that since their trademarks are entitled to protection by treaty obligation under Article 2 of the Paris Convention of which the Philippines is a member and ratified by Resolution No. 69 of the Senate of the Philippines and as such, have the force and effect of law under Section 12, Article XVII of our Constitution and since this is an action for a violation or infringement of a trademark or trade name by defendant, such mere allegation is sufficient even in the absence of proof to support it. To the mind of the Court, precisely, this is the issue in the main case to determine whether or not there has been an invasion of plaintiffs right of property to such trademark or trade name. This claim of plaintiffs is disputed by defendant in paragraphs 6 and 7 of the Answer; hence, this cannot be made a basis for the issuance of a writ of preliminary injunction.

There is no dispute that the First Plaintiff is the registered owner of trademar[k] "MARK VII" with Certificate of Registration No. 18723, dated April 26, 1973 while the Second Plaintiff is likewise the registered owner of trademark "MARK TEN" under Certificate of Registration No. 11147, dated May 28, 1963 and the Third Plaintiff is a registrant of trademark "LARK" as shown by Certificate of Registration No. 10953 dated March 23, 1964, in addition to a pending application for registration of trademark "MARK VII" filed on November 21, 1980 under Application Serial No. 43243, all in the Philippine Patent Office. In the same manner, defendant has a pending application for registration of the trademark "LARK" cigarettes with the Philippine Patent Office under Application Serial No. 44008. Defendant contends that since plaintiffs are "not doing business in the Philippines" coupled by the fact that the Director of Patents has not denied their pending application for registration of its trademark "MARK", the grant of a writ of preliminary injunction is premature. Plaintiffs contend that this act(s) of defendant is but a subterfuge to give semblance of good faith intended to deceive the public and patronizers into buying the products and create the impression that defendants goods are identical with or come from the same source as plaintiffs products or that the defendant is a licensee of plaintiffs when in truth and in fact the former is not. But the fact remains that with its pending application, defendant has embarked in the manufacturing, selling, distributing and advertising of "MARK" cigarettes. The question of good faith or bad faith on the part of defendant are matters which are evidentiary in character which have to be proven during the hearing on the merits; hence, until and unless the Director of Patents has denied defendants application, the Court is of the opinion and so holds that issuance of a writ of preliminary injunction would not lie.

There is no question that defendant has been authorized by the Bureau of Internal Revenue to manufacture cigarettes bearing the trademark "MARK" (Letter of Ruben B. Ancheta, Acting Commissioner addressed to Fortune Tobacco Corporation dated April 3, 1981, marked as Annex "A", defendants "OPPOSITION, etc." dated September 24, 1982). However, this authority is qualified." . . that the said brands have been accepted and registered by the Patent Office not later than six (6) months after you have been manufacturing the cigarettes and placed the same in the market." However, this grant." . . does not give you protection against any person or entity whose rights may be prejudiced by infringement or unfair competition in relation to your indicated trademarks/brands." As aforestated, the registration of defendants application is still pending in the Philippine Patent Office.

It has been repeatedly held in this jurisdiction as well as in the United States that the right or title of the applicant for injunction remedy must be clear and free from doubt. Because of the disastrous and painful effects of an injunction, Courts should be extremely careful, cautious and conscionable in the exercise of its discretion consistent with justice, equity and fair play.

"There is no power the exercise of which is more delicate which requires greater caution, deliberation, and sound discretion, or (which is) more dangerous in a doubtful case than the issuing of an injunction; it is the strong arm of equity that never ought to be extended unless to cases of great injury, where courts of law cannot afford an adequate or commensurate remedy in damages. The right must be clear, the injury impending or threatened, so as to be averted only by the protecting preventive process of injunction." (Bonaparte v. Camden, etc. N. Co., 3 F. Cas. No. 1, 617, Baldw. 205, 217.)

"Courts of equity constantly decline to lay down any rule which injunction shall be granted or withheld. There is wisdom in this course, for it is impossible to foresee all exigencies of society which may require their aid to protect rights and restrain wrongs." (Merced M. Go v. Freemont, 7 Gal. 317, 321; 68 Am. Dec. 262.)

"It is the strong arm of the court; and to render its operation benign and useful, it must be exercised with great discretion, and when necessary requires it." (Attorney-General v. Utica Inc. Co., P. John Ch. (N.Y.) 371.)

Having taken a panoramic view of the position[s] of both parties as viewed from their pleadings, the picture reduced to its minimum size would be this: At the crossroads are the two (2) contending parties, plaintiffs vigorously asserting the rights granted by law, treaty and jurisprudence to restrain defendant in its activities of manufacturing, selling, distributing and advertising its "MARK" cigarettes and now comes defendant who countered and refused to be restrained claiming that it has been authorized temporarily by the Bureau of Internal Revenue under certain conditions to do so as aforestated coupled by its pending application for registration of trademark "MARK" in the Philippine Patent Office. This circumstance in itself has created a dispute between the parties which to the mind of the Court does not warrant the issuance of a writ of preliminary injunction.

"It is well-settled principle that courts of equity will refuse an application for the injunctive remedy where the principle of law on which the right to preliminary injunction rests is disputed and will admit of doubt, without a decision of the court of law establishing such principle although satisfied as to what is a correct conclusion of law upon the facts. The fact, however, that there is no such dispute or conflict does not in itself constitute a justifiable ground for the court to refuse an application for the injunctive relief." (Hackensack Impr. Commn. v. New Jersey Midland P. Co., 22 N.J. Eg. 94.)chanrobles virtual lawlibrary

Hence, the status quo existing between the parties prior to the filing of this case should be maintained. For after all, an injunction, without reference to the parties, should not be violent, vicious nor even vindictive. (pp. 338-341, Rollo in G.R. No. 91332.)

In the process of denying petitioners subsequent motion for reconsideration of the order denying issuance of the requested writ, the court of origin took cognizance of the certification executed on January 30, 1984 by the Philippine Patent Office attesting to the fact that private respondents application for registration is still pending appropriate action. Apart from this communication, what prompted the trial court judge to entertain the idea of prematurity and untimeliness of petitioners application for a writ of preliminary injunction was the letter from the Bureau of Internal Revenue dated February 2, 1984 which reads:chanrob1es virtual 1aw library

MRS. TERESITA GANDIONGCO OLEDAN

Legal Counsel

Fortune Tobacco Corporation

Madam:chanrob1es virtual 1aw library

In connection with your letter dated January 25, 1984, reiterating your query as to whether your label approval automatically expires or becomes null and void after six (6) months if the brand is not accepted and by the patent office, please be informed that no provision in the Tax Code or revenue regulation that requires an applicant to comply with the aforementioned condition in order that his label approved will remain valid and existing.

Based on the document you presented, it shows that registration of this particular label is still pending resolution by the Patent Office. These being so, you may therefore continue with the production of said brand of cigarette until this Office is officially notified that the question of ownership of "MARK" brand is finally resolved.

Very truly yours,

TEODORO D. PAREO

Chief, Manufactured Tobacco

Tax Division

TAN-P6531-D 2830-A-6

(p. 348, Rollo.)

It appears from the testimony of Atty. Enrique Madarang, Chief of the Trademark Division of the then Philippine Patent Office that Fortunes application for its trademark is still pending before said office (p. 311, Rollo).

Petitioners thereafter cited supervening events which supposedly transpired since March 28, 1983, when the trial court first declined issuing a writ of preliminary injunction, that could alter the results of the case in that Fortunes application had been rejected, nay, barred by the Philippine Patent Office, and that the application had been forfeited by abandonment, but the trial court nonetheless denied the second motion for issuance of the injunctive writ on April 22, 1987, thus:chanrob1es virtual 1aw library

For all the prolixity of their pleadings and testimonial evidence, the plaintiffs-movants have fallen far short of the legal requisites that would justify the grant of the writ of preliminary injunction prayed for. For one, they did not even bother to establish by competent evidence that the products supposedly affected adversely by defendants trademark now subject of an application for registration with the Philippine Patents Office, are in actual use in the Philippines. For another, they concentrated their fire on the alleged abandonment and forfeiture by defendant of said application for registration.

The Court cannot help but take note of the fact that in their complaint plaintiffs included a prayer for issuance of a writ of preliminary injunction. The petition was duly heard, and thereafter the matter was assiduously discussed lengthily and resolved against plaintiffs in a 15-page Order issued by the undersigneds predecessor on March 28, 1983. Plaintiffs motion for reconsideration was denied in another well-argued 8 page Order issued on April 5, 1984, and the matter was made to rest.

However, on the strength of supposed changes in the material facts of this case, plaintiffs came up with the present motion citing therein the said changes which are: that defendants application had been rejected and barred by the Philippine Patents Office, and that said application has been deemed abandoned and forfeited. But defendant has refiled the same.

Plaintiffs arguments in support of the present motion appear to be a mere rehash of their stand in the first above-mentioned petition which has already been ruled upon adversely against them. Granting that the alleged changes in the material facts are sufficient grounds for a motion seeking a favorable grant of what has already been denied, this motion just the same cannot prosper.

In the first place there is no proof whatsoever that any of plaintiffs products which they seek to protect from any adverse effect of the trademark applied for by defendant, is in actual use and available for commercial purposes anywhere in the Philippines. Secondly, as shown by plaintiffs own evidence furnished by no less than the chief of Trademarks Division of the Philippine Patent Office, Atty. Enrique Madarang, the abandonment of an application is of no moment, for the same can always be refiled. He said there is no specific provision in the rules prohibiting such refiling (TSN, November 21, 1986, pp. 60 & 64, Raviera). In fact, according to Madarang, the refiled application of defendant is now pending before the Patents Office. Hence, it appears that the motion has no leg to stand on. (pp. 350-351, Rollo in G.R. No. 91332.)chanrobles law library : red

Confronted with this rebuff, petitioners filed a previous petition forcertioraribefore the Court, docketed as G.R. No. 78141, but the petition was referred to the Court of Appeals.

The Court of Appeals initially issued a resolution which set aside the court of origins order dated April 22, 1987, and granted the issuance of a writ of preliminary injunction enjoining Fortune, its agents, employees, and representatives, from manufacturing, selling, and advertising "MARK" cigarettes. The late Justice Cacdac, speaking for the First Division of the Court of Appeals in CA-G.R. SP No. 13132, remarked:chanrob1es virtual 1aw library

There is no dispute that petitioners are the registered owners of the trademarks for cigarettes "MARK VII", "MARK TEN", and "LARK." (Annexes B, C and D, petition). As found and reiterated by the Philippine Patent Office in two (2) official communications dated April 6, 1983 and January 24, 1984, the trademark "MARK" is "confusingly similar" to the trademarks of petitioners, hence, registration was barred under Sec. 4(d) of Rep. Act No. 166, as amended (pp. 106, 139, SCA rollo). In a third official communication dated April 8, 1986, the trademark application of private respondent for the mark "MARK" under Serial No. 44008 filed on February 13, 1981 which was declared abandoned as of February 16, 1986, is now deemed forfeited, there being no revival made pursuant to Rule 98 of the Revised Rules of Practitioners in Trademark Cases." (p. 107, CA rollo). The foregoing documents or communications mentioned by petitioners as "the changes in material facts which occurred after March 28, 1983", are not also questioned by respondents.

Pitted against the petitioners documentary evidence, respondents pointed to (1) the letter dated January 30, 1979 (p. 137, CA rollo) of Conrado P. Diaz, then Acting Commissioner of Internal Revenue, temporarily granting the request of private respondent for a permit to manufacture two (2) new brands of cigarettes one of which is brand "MARK" filter-type blend, and (2) the certification dated September 26, 1986 of Cesar G. Sandico, Director of Patents (p. 138, CA rollo) issued upon the written request of private respondents counsel dated September 17, 1986 attesting that the records of his office would show that the "trademark MARK" for cigarettes is now the subject of a pending application under Serial No. 59872 filed on September 16, 1986.

Private respondents documentary evidence provides the reasons neutralizing or weakening their probative values. The penultimate paragraph of Commissioner Diaz letter of authority reads:jgc:chanrobles.com.ph

"Please be informed further that the authority herein granted does not give you protection against any person or entity whose rights may be prejudiced by infringement or unfair competition in relation to your above-named brands/trademarks."cralaw virtua1aw library

while Director Sandicos certification contained similar conditions as follows:jgc:chanrobles.com.ph

"This Certification, however, does not give protection as against any person or entity whose right may be prejudiced by infringement or unfair competition in relation to the aforesaid trademark nor the right to register if contrary to the provisions of the Trademark Law, Rep. Act No. 166 as amended and the Revised Rules of Practice in Trademark Cases."cralaw virtua1aw library

The temporary permit to manufacture under the trademark "MARK" for cigarettes and the acceptance of the second application filed by private respondent in the height of their dispute in the main case were evidently made subject to the outcome of the said main case or Civil Case No. 47374 of the respondent Court. Thus, the Court has not missed to note the absence of a mention in the Sandico letter of September 26, 1986 of any reference to the pendency of the instant action filed on August 18, 1982. We believe and hold that petitioners have shown a prima facie case for the issuance of the writ of prohibitory injunction for the purposes stated in their complaint and subsequent motions for the issuance of the prohibitory writ. (Buayan Cattle Co. v. Quintillan, 125 SCRA 276).

The requisites for the granting of preliminary injunction are the existence of the right protected and the facts against which the injunction is to be directed as violative of said right. (Buayan Cattle Co. v. Quintillan, supra; Ortigas & Co. v. Ruiz, 148 SCRA 326). It is a writ framed according to the circumstances of the case commanding an act which the Court regards as essential to justice and restraining an act it deems contrary to equity and good conscience (Rosauro v. Cuneta, 119 SCRA 570). If it is not issued, the defendant may, before final judgment, do or continue the doing of the act which the plaintiff asks the court to restrain, and thus make ineffectual the final judgment rendered afterwards granting the relief sought by the plaintiff (Calo v. Roldan, 76 Phil. 445). Generally, its grant or denial rests upon the sound discretion of the Court except on a clear case of abuse (Belish Investment & Finance Co. v. State House, 151 SCRA 636). Petitioners right of exclusivity to their registered trademarks being clear and beyond question, the respondent courts denial of the prohibitive writ constituted excess of jurisdiction and grave abuse of discretion. If the lower court does not grant preliminary injunction, the appellate court may grant the same. (Service Specialists, Inc. v. Sheriff of Manila, 145 SCRA 139). (pp. 165-167, Rollo in G.R. No. 91332.)chanrobles lawlibrary : rednad

After private respondent Fortunes motion for reconsideration was rejected, a motion to dissolve the disputed writ of preliminary injunction with offer to post a counterbond was submitted which was favorably acted upon by the Court of Appeals, premised on the filing of a sufficient counterbond to answer for whatever perjuicio petitioners may suffer as a result thereof, to wit:chanrob1es virtual 1aw library

The private respondent seeks to dissolve the preliminary injunction previously granted by this Court with an offer to file a counterbond. It was pointed out in its supplemental motion that lots of workers employed will be laid off as a consequence of the injunction and that the government will stand to lose the amount of specific taxes being paid by the privateRespondent. The specific taxes being paid is the sum total of P120,120,295.98 from January to July 1989.

The petitioners argued in their comment that the damages caused by the infringement of their trademark as well as the goodwill it generates are incapable of pecuniary estimation and monetary evaluation and not even the counterbond could adequately compensate for the damages it will incur as a result of the dissolution of the bond. In addition, the petitioner further argued that doing business in the Philippines is not relevant as the injunction pertains to an infringement of a trademark right.

After a thorough re-examination of the issues involved and the arguments advanced by both parties in the offer to file a counterbond and the opposition thereto, WE believe that there are sound and cogent reasons for Us to grant the dissolution of the writ of preliminary injunction by the offer of the private respondent to put up a counterbond to answer for whatever damages the petitioner may suffer as a consequence of the dissolution of the preliminary injunction.

The petitioner will not be prejudiced nor stand to suffer irreparably as a consequence of the lifting of the preliminary injunction considering that they are not actually engaged in the manufacture of the cigarettes with the trademark in question and the filing of the counterbond will amply answer for such damages.

While the rule is that an offer of a counterbond does not operate to dissolve an injunction previously granted, nevertheless, it is equally true that an injunction could be dissolved only upon good and valid grounds subject to the sound discretion of the court. As WE have maintained the view that there are sound and good reasons to lift the preliminary injunction, the motion to file a counterbond is granted. (pp. 53-54, Rollo in G.R. No. 91332.)

Petitioners, in turn, filed their own motion for re-examination geared towards reimposition of the writ of preliminary injunction but to no avail (p. 55, Rollo in G.R. No. 91332).

Hence, the instant petition casting three aspersions that respondent court gravely abused its discretion tantamount to excess of jurisdiction when:chanrob1es virtual 1aw library

I. . . . it required, contrary to law and jurisprudence, that in order that petitioners may suffer irreparable injury due to the lifting of the injunction, petitioners should be using actually their registered trademarks in commerce in the Philippines;

II. . . . it lifted the injunction in violation of section 6 of Rule 58 of the Rules of Court; and

III. . . . after having found that the trial court had committed grave abuse of discretion and exceeded its jurisdiction for having refused to issue the writ of injunction to restrain private respondents acts that are contrary to equity and good conscience, it made a complete about face for legally insufficient grounds and authorized the private respondent to continue performing the very same acts that it had considered contrary to equity and good conscience, thereby ignoring not only the mandates of the Trademark Law, the international commitments of the Philippines, the judicial admission of private respondent that it will have no more right to use the trademark "MARK" after the Director of Patents shall have rejected the application to register it, and the admonitions of the Supreme Court. (pp. 24-25, Petition; pp. 25-26, Rollo.)

To sustain a successful prosecution of their suit for infringement,Petitioners, as foreign corporations not engaged in local commerce, rely on Section 21-A of the Trademark Law reading as follows:chanrob1es virtual 1aw library

SECTION 21-A. Any foreign corporation or juristic person to which a mark or trade-name has been registered or assigned under this act may bring an action hereunder for infringement, for unfair competition, or false designation of origin and false description, whether or not it has been licensed to do business in the Philippines under Act Numbered Fourteen hundred and fifty-nine, as amended, otherwise known as the Corporation Law, at the time it brings complaint: Provided, That the country of which the said foreign corporation or juristic person is a citizen or in which it is domiciled, by treaty, convention or law, grants a similar privilege to corporate or juristic persons of the Philippines. (As inserted by Sec. 7 of Republic Act No. 638.)

to drive home the point that they are not precluded from initiating a cause of action in the Philippines on account of the principal perception that another entity is pirating their symbol without any lawful authority to do so. Judging from a perusal of the aforequoted Section 21-A, the conclusion reached by petitioners is certainly correct for the proposition in support thereof is embedded in Philippine legal jurisprudence.

Indeed, it was stressed in General Garments Corporation v. Director of Patents (41 SCRA 50 [1971]) by then Justice (later Chief Justice) Makalintal that:chanrob1es virtual 1aw library

Parenthetically, it may be stated that the ruling in the Mentholatum case was subsequently derogated when Congress, purposely to "counteract the effects" of said case, enacted Republic Act No. 638, inserting Section 21-A in the Trademark Law, which allows a foreign corporation or juristic person to bring an action in Philippine courts for infringement of a mark or tradename, for unfair competition, or false designation of origin and false description, "whether or not it has been licensed to do business in the Philippines under Act Numbered Fourteen hundred and fifty-nine, as amended, otherwise known as the Corporation Law, at the time it brings complaint."cralaw virtua1aw library

Petitioner argues that Section 21-A militates against respondents capacity to maintain a suit for cancellation, since it requires, before a foreign corporation may bring an action, that its trademark or tradename has been registered under the Trademark Law. The argument misses the essential point in the said provision, which is that the foreign corporation is allowed thereunder to sue "whether or not it has been licensed to do business in the Philippines" pursuant to the Corporation Law (precisely to counteract the effects of the decision in the Mentholatum case). (at p. 57.)

However, on May 21, 1984, Section 21-A, the provision under consideration, was qualified by this Court in La Chemise Lacoste S.A. v. Fernandez (129 SCRA 373 [1984]), to the effect that a foreign corporation not doing business in the Philippines may have the right to sue before Philippine Courts, but existing adjective axioms require that qualifying circumstances necessary for the assertion of such right should first be affirmatively pleaded (2 Agbayani, Commercial Laws of the Philippines, 1991 Ed., p. 598; 4 Martin, Philippine Commercial Laws, Rev. Ed., 1986, p. 381). Indeed, it is not sufficient for a foreign corporation suing under Section 21-A to simply allege its alien origin. Rather, it must additionally allege its personality to sue. Relative to this condition precedent, it may be observed that petitioners were not remiss in averring their personality to lodge a complaint for infringement (p. 75, Rollo in AC-G.R. SP No. 13132) especially so when they asserted that the main action for infringement is anchored on an isolated transaction (p. 75, Rollo in AC-G.R. SP No. 13132; Atlantic Mutual Ins. Co. v. Cebu Stevedoring Co., Inc., 17 SCRA 1037 (1966), 1 Regalado, Remedial Law Compendium, Fifth Rev. Ed., 1988, p. 103).

Another point which petitioners considered to be of significant interest, and which they desire to impress upon us is the protection they enjoy under the Paris Convention of 1965 to which the Philippines is a signatory. Yet, insofar as this discourse is concerned, there is no necessity to treat the matter with an extensive response because adherence of the Philippines to the 1965 international covenant due to pact sunt servanda had been acknowledged in La Chemise (supra at page 390).

Given these confluence of existing laws amidst the cases involving trademarks, there can be no disagreement to the guiding principle in commercial law that foreign corporations not engaged in business in the Philippines may maintain a cause of action for infringement primarily because of Section 21-A of the Trademark Law when the legal standing to sue is alleged, which petitioners have done in the case at hand.chanrobles.com:cralaw:red

In assailing the justification arrived at by respondent court when it recalled the writ of preliminary injunction, petitioners are of the impression that actual use of their trademarks in Philippine commercial dealings is not an indispensable element under Article 2 of the Paris Convention in that:chanrob1es virtual 1aw library

(2) . . . no condition as to the possession of a domicile or establishment in the country where protection is claimed may be required of persons entitled to the benefits of the Union for the enjoyment of any industrial property rights. (p. 28, Petition; p. 29, Rollo in G.R. No. 91332.)

Yet petitioners perception along this line is nonetheless resolved by Sections 2 and 2-A of the Trademark Law which speak loudly about the necessity of actual commercial use of the trademark in the local forum:chanrob1es virtual 1aw library

SEC. 2. What are registrable. Trademarks, tradenames and service marks owned by persons, corporations, partnerships or associations domiciled in the Philippines and by persons, corporations, partnerships or associations domiciled in any foreign country may be registered in accordance with the provisions of this Act; Provided, That said trademarks, tradenames, or service marks are actually in use in commerce and services not less than two months in the Philippines before the time the applications for registration are filed; And provided, further, That the country of which the applicant for registration is a citizen grants by law substantially similar privileges to citizens of the Philippines, and such fact is officially certified, with a certified true copy of the foreign law translated into the English language, by the government of the foreign country to the Government of the Republic of the Philippines. (As amended by R.A. No. 865).

SEC. 2-A. Ownership of trademarks, tradenames and service marks; how acquired. Anyone who lawfully produces or deals in merchandise of any kind or who engages in any lawful business, or who renders any lawful service in commerce, by actual use thereof in manufacture or trade, in business, and in the service rendered, may appropriate to his exclusive use a trademark, a tradename, or a service mark not so appropriated by another, to distinguish his merchandise, business or service from the merchandise, business or service of others. The ownership or possession of a trademark, tradename, service mark, heretofore or hereafter appropriated, as in this section provided, shall be recognized and protected in the same manner and to the same extent as are other property rights known to the law. (As amended by R.A. No. 638). (Kabushi Kaisha Isetan v. Intermediate Appellate Court, 203 SCRA 583 [1991], at pp. 589-590; italics ours.)

Following universal acquiescence and comity, our municipal law on trademarks regarding the requirement of actual use in the Philippines must subordinate an international agreement inasmuch as the apparent clash is being decided by a municipal tribunal (Mortensen v. Peters, Great Britain, High Court of Judiciary of Scotland, 1906, 8 Sessions 93; Paras, International Law and World Organization, 1971 Ed., p. 20). Withal, the fact that international law has been made part of the law of the land does not by any means imply the primacy of international law over national law in the municipal sphere. Under the doctrine of incorporation as applied in most countries, rules of international law are given a standing equal, not superior, to national legislative enactments (Salonga and Yap, Public International Law, Fourth ed., 1974, p. 16).chanrobles.com.ph : virtual law library

The aforequoted basic provisions of our Trademark Law, according to Justice Gutierrez, Jr., in Kabushi Kaisha Isetan v. Intermediate Appellate Court (203 SCRA 583 [1991]), have been construed in this manner:chanrob1es virtual 1aw library

A fundamental principle of Philippine Trademark Law is that actual use in commerce in the Philippines is a pre-requisite to the acquisition of ownership over a trademark or a tradename.xxx

These provisions have been interpreted in Sterling Products International, Inc. v. Farbenfabriken Bayer Actiengesellschaft (27 SCRA 1214 [1969]) in this way:jgc:chanrobles.com.ph

"A rule widely accepted and firmly entrenched because it has come down through the years is that actual use in commerce or business is a prerequisite to the acquisition of the right of ownership over a trademark.xxx

". . . Adoption alone of a trademark would not give exclusive right thereto. Such right grows out of their actual use. Adoption is not use. One may make advertisements, issue circulars, give out price lists on