G.R. No. L-4199




Republic of the Philippines SUPREME COURT Manila EN BANC G.R. No. L-4199 November 29, 1951 THE BORDEN COMPANY, petitioner, vs. DOCTORS PHARMACEUTICALS INC., and CELEDINO AGRAVA, Director of Patents, respondents. Ross, Selph, Carrascoso & Janda for petitioner. Arturo Agustines for respondent Doctor's Pharmaceuticals Inc. Assistant Solicitor General Guillermo E. Torres and Solicitor Pacifico P. de Castro for respondent Director of Patents. PADILLA, J.: The petitioner prays the respondent Director of Patents directed — (a) to forward and certify to the clerk of this Court the record of Opposition No. 3, series of 1949 entitled "The Borden Company Opposer-Registrant vs. Doctors Pharmaceuticals, Inc., Respondent-Applicant" so that the decision of said Director of Patents of August 31, 1950 may be reviewed by this Court; and (b) that the decision of the Director of Patents of August 31, 1950, be vacated and set aside. In the decision referred to the respondent Director of Patents overruled the objection of the petitioner to the registration of "Hemo-Vim" as trade-mark for drug in liquid form for the cure of hypocromic, nutritional or secondary anemias, and stomachic prepared by the respondent Doctors Pharmaceuticals Inc. The petitioners's opposition to the registration of the "Hemo-Vim" as trade-mark alleges that on 17 June 1947 it had previously registered the trade-mark "Hemo" for a vitamin and mineral fortified preparation for malted food drinks in powder form under certificate No. 2012 issued under the provision of Act No. 666, which was surrendered to the Patent Office pursuant to section 21(a) of Republic Act No. 166 and in lieu thereof a new certificate No. 658-S was issued on 23 September 1948 by the respondent Director of Patents. In the caption of the petition the following words appear: "CERTIORARI UNDER RULE 67, RULES OF COURT". It was filed on 12 October 1950. On 29 November, a motion to dismiss was filed by the respondent Doctors Pharmaceuticals Inc. on the ground that, under the provisions of Republic Acts Nos. 165 and 166, the petitioner has no right to appeal from the decision of the Director of Patents, and if the petitioner has such right it lost it for failing to file a notice of appeal and to pay the required appeal with the Director of Patents within 30 days from notice of the decision, as provided for in section 63 of Republic Act No. 165. On 4 December, this Court directed the respondents to answer the petition within the days from notice. On 13 December, the respondent Doctors Pharmaceuticals Inc. filed its answer. On 16 December the Director of Patents also filed his answer. On 8 January 1951, the hearing of the case was set for the 15th of the same month, but on 12 January, attorneys for the petitioner filed a motion for withdrawal of the petition pursuant to intsructions of their client. This motion is objected to by the respondent Doctors Pharmaceuticals Inc,. unless the petitioner reimburse the respondent Doctors Pharmaceuticals Inc, for what it had paid and agreed to pay for attorney's fees amounting to P1,500, and the dismissal of the petition be with prejudice. The first question is whether the dismissal asked by the petitioner should be with terms, as prayed for by the respondent Doctors Pharmaceuticals Inc., and the second is whether such dismissal should be with prejudice. Under the facts and circumstances of the case we do not believe that the respondent Doctors Pharmaceuticals Inc. is entitled to recover what it had paid or agreed to pay for attorney's fees, because the filing of the petition in this case is not an act contemplated in article 2208, paragraph 2, of the new Civil Code. The respondent Doctors Pharmaceuticals Inc. filed its application with the Patent Office for registration of "Hemo-Vim" as trade-mark for its drug in liquid form described at the beginning of this opinion not on account of any act or omission of the petitioner. The filing of this petition by the Borden Company did not compel the Doctors Pharmaceuticals Inc. to litigate with third persons and the answer filed by it to protect its interest is a continuation or an off-shoot of the trade-mark application granted by the Director of Patents. Paragraph 11 of the same article also invoked by the respondent Doctors Pharmaceuticals Inc. gives direction to the courts to allow the recovery of attorney's fees and expenses of litigation. The right to litigate must not be penalized.¹ Whether the dismissal of the petition should be with prejudice, as we have not reviewed the decision of the Director of Patents we are not in a position to express our opinion as to whether the dismissal of the petition should be with prejudice. Section 25 of Republic Act No. 166 authorizes the bringing of an action to cancel registered trade-marks and trade-names. If an action be brought by the petitioner for the cancellation of the registered trade-mark of the respondent Doctors Pharmaceuticals Inc., then the competent court would be in a position to determine whether the dismissal of this petition was with or without prejudice. The petition is dismissed, with costs against petitioner. Paras, C.J., Feria, Pablo, Bengzon, Tuason, Reyes, Jugo and Bautista Angelo, JJ., concur. Footnotes ¹ Tan Ti vs. Alvear, 26 Phil., 566, 571. The Lawphil Project - Arellano Law Foundation