Ong Ang Gui v. Director of the Philippine Patent Office (G.R. No. L-6235)

Facts:

Ong Ai Gui applied for the registration of the trade name ‘20th Century Nylon Shirts Factory’ to be used in his general merchandising business dealing principally with textiles. Respondent E.I. De Pont de Nemours and Company opposed on the ground that the word ‘nylon’ is a generic term for a fabric material and it is descriptive and misdescriptive of petitioner’s goods. The Director ruled that the application must be disapproved unless the word ‘nylon’ is disclaimed.

Issue:

Whether or not the word ‘nylon’ being generic or descriptive can acquire a secondary meaning to be registrable.

Ruling: NO.

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.”

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 (f) 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 trade-name 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 of fraud.

*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.

Advertisements

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out / Change )

Twitter picture

You are commenting using your Twitter account. Log Out / Change )

Facebook photo

You are commenting using your Facebook account. Log Out / Change )

Google+ photo

You are commenting using your Google+ account. Log Out / Change )

Connecting to %s