Nodger Jude D.

Dalman Copyright and Intellectual Property Law

Case Digest Atty. Catherin Hermoso

COMPAIA GENERAL DE TABACOS DE FILIPINAS vs. ALHAMBRA CIGAR AND CIGARETTE

MANUFACTURING CO.

FACTS:

It is admitted that plaintiffs trade name as evidenced by the certificate issued under the Spanish
regime, consists solely of the words La Flor de la Isabela. Plaintiff does not claim that the word
Isabela has been registered by it as a trade name or that it has a title from any source conferring on it
the exclusive right to use that word. Defendant began the manufacture of cigarettes, offering them to
the public in packages on the front side of each of which appeared the words Alhambra Isabelas.
Action is brought to enjoin the defendant from using the word Isabelas.

The exclusive right to use this name, plaintiff claim arises from two causes: First, the contraction
of the phrase La Flor de la Isabela into the word Isabela by popular expression and use; and second,
the use for more than twenty years of the word Isabela.

Judgment was for plaintiff and defendant appealed.

ISSUE:

WON defendants use of the word Alhambra Isabela is an infringement to the use of trade name.

HELD:

The statute prohibits the registration of a trade name when the trade name represents the
geographical place of production or origin of the products or goods to which the trade name refers, or
when it is merely the name, quality or description of the merchandise with respect to which the trade
name is to be used. In such cases, therefore, no trade name can exist.

The two claims of the plaintiff are identical; for, there could have been no contraction brought about
by popular expression except after long lapse of time. The contraction of the phrase in to the word
would create no rights, there being no registration, unless it resulted from long use.

The opinion of the plaintiff must fail. It shows that in not a single instance in the history of the
plaintiff corporation, so far as is disclosed by the record, has a package of its cigarettes gone into the
market, either at wholesale or retail with the word Isabela alone on the package as a separate or
distinct word or name.

Even admitting that the word Isabela may have been appropriable by plaintiff as a trade name
at the time it began to use it, the evidence showing that it had been exclusively appropriated by the
plaintiff would have to be very strong to establish the fact of appropriation and the right to exclusive
use. The law as it stands and has stood since the Royal Decree of 1888 prohibits the use of a
geographical name as a trade name.

The judgment appealed from is reversed.