Unno Vs Gen Milling Digest

G.R. No.
L-28554 February 28, 1983
UNNO COMMERCIAL ENTERPRISES, INCORPORATED, petitioner, vs. GENERAL

MILLING CORPORATION and TIBURCIO S. EVALLE, in his capacity as Director of Patents,
respondents.
Facts:
On December 11, 1962, respondent General Milling Corporation filed an application for the registration
of the trademark "All Mon-tana" 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 to determine
which party has previ-ously 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.
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.
The Director of Patents, ruled in favor of respondent General Milling Corporation and rendered its
decision as follows:
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.
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.
Issue: Whether or not herein petitioner is the prior-user of the subject mark.
Ruling:
No. The right to register trademark is based on owner-ship. 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 it.
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. Herein petitioner is
only an indentor or broker for S. H. Huang Bros. & Co., a local importer of wheat flour, and is
therefore, no the owner of the trademark.
Thus, this Court, has on several occasions ruled that where the appli-cant's alleged ownership is
not shown in any notarial document and the appli-cant appears to be merely an importer or
distributor of the merchandise cov-ered by said trademark, its application cannot be granted.
Moreover, the provision relied upon by petitioner (Sec. 2-A, Rep. Act No. 166; see footnotes) xxx.
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 distributor Unno Commercial Enterprises, Inc., herein petitioner, 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 who has since been in operation since 1961.
The Deed of Assignment itself constitutes sufficient proof of its ownership of the trademark "All
Montana." The deed of assignment was signed by Centennial Mills, Inc. president Dugald
MacGregor, who 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 au-thority to take
acknowledgments of all oaths and that full faith and credit should be given to his official acts as
notary public.
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.
Registration merely creates a prima facie presumption of the validity of the registration, of the
registrant's 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
over-come the presumption. It is well-settled that we are precluded from making fur-ther 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.

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G.R. No.

L-28554 February 28, 1983

UNNO COMMERCIAL ENTERPRISES, INCORPORATED, petitioner, vs. GENERAL

WHEREFORE, the Junior Party-Applicant is adjudged prior-user of the trademark ALL

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

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