CASE DIGEST: COMPAÑIA GENERAL DE TABACOS DE FILIPINAS vs. ALHAMBRA CIGAR AND CIGARETTE MANUFACTURING CO.

FACTS:

            It is admitted that plaintiff’s 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:

            Whether defendant’s 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.