ONG AI GUI, vs.

THE DIRECTOR OF THE PHILIPPINES PATENT OFFICE

G.R. No. L-6235. March 28, 1955

FACTS:

Herein petitioner, Ong Ai Gui, filed an application with the Director of Patents for the
registration of the trade-name; "20th Century Nylon Shirts Factory", described as "General
merchandise dealing principally in textiles, haberdasheries; also operating as manufacturer of
shirts, pants and other men's and women's wears." After an examination, report held that the
words "shirts factory" are not registrable; so the applicant made a disclaimer of said words
(shirts factory) inserting a statement to that effect in his original application. The Director
ordered its publication in the Official Gazette.

Publication was made but before the expiration of the period for filing, opposition, Atty. J. A.
Wolfson, on behalf of E. I. Du Pont de Nemours and Company, presented an opposition on
the ground that the word "nylon" was a name coined by E. I. Du Pont de Nemours and
Company as the generic name of a synthetic fabric material, invented, patented,
manufactured and sold by it and that this word is a generic term. This opposition was
dismissed by the Director but further ruled that the application must be disapproved unless
the word "nylon" is also disclaimed.

The ground for the disapproval stated that the term nylon can never become distinctive and
can never acquire secondary meaning, because it is a generic term, like cotton, silk, linen, or
ramie and that no amount of advertising can make the terms distinctive of shirts or of the
business of making them. Hence, this appeal against the Director of Patents.

ISSUE:

Whether the term “nylon” is a generic term or not

HELD:

YES. The legal question is asserted by the applicant-appellant, and while he admits that the
term nylon is by itself alone descriptive and generic, what he desires to register is not the
said word alone but the whole combination of "20th Century Nylon Shirts Factory." It is to be
noted in answer to this contention that the Director of Patents has not completely denied
the registration of the whole trade-name. He has made a conditional denial only, permitting
the registration of the name but with the disclaimer of the terms "shirt factory" and "nylon."
The import of the decision is that the trade-name may be registered, but applicant-appellant
may not be entitled to the exclusive use of the terms "shirts factory" and "nylon" as against
any other who may subsequently use the said terms, for the latter are merely descriptive or
general terms, juris publici, incapable of appropriation by any single individual to the
exclusion of others. This is supported by reason and authority.

Although a combination of words may be registered as a trade-name, it is no justification for

not applying the principle that the use of a descriptive or generic term in a trade-name is
always subject to the limitation that the registrant cannot acquire the exclusive right to the
descriptive or generic term or word.

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.

Therefore, the errors assigned in the appeal were not committed by respondent Director of
Patents. His decision is hereby affirmed, with costs against the applicant-appellant.