1. A trademark, started elsewhere, has only such validity and
protection in a foreign country as the foreign law accords it. P.
273 U. S.
544.
Page 273 U. S. 542
2. Section 311(2) of the Philippine Code of Civil Procedure,
which provides that a judgment "may be repelled by evidence of
clear mistake of law or fact," does not justify refusal to enforce
a judgment for costs rendered by the Supreme Court of Hongkong in a
trademark suit upon the ground that that court mistakenly denied
effect in Hongkong to a sale of the trademark with the business of
the plaintiff in the Philippine Islands, made by the Alien Property
Custodian to the defendant. P.
273 U. S.
544.
3. The Alien Property Custodian, under the Trading with the
Enemy Act, had no power to transfer trademark rights in a foreign
country contrary to the foreign law. P.
273 U. S.
544.
4. This Court has jurisdiction by certiorari to review a case
from the Supreme Court of the Philippine Islands in which the
validity of a section of the Philippine Code of Civil Procedure and
a construction of the Trading with the Enemy Act are drawn in
question. P
273 U. S. 545.
47 P.I. 189 reversed.
Certiorari (269 U.S. 542) to a judgment of the Supreme Court of
the Philippine Islands which reversed a judgment recovered by the
plaintiff, Ingenohl, in the Court of First Instance. The action was
based on a judgment for costs, awarded to the plaintiff by the
Supreme Court of Hongkong, in a suit to restrain the defendant,
Walter E. Olsen & Company Inc., from infringing the plaintiff's
trademark.
MR. JUSTICE HOLMES delivered the opinion of the Court.
This is a suit to recover the costs adjudged to the plaintiff,
the petitioner here, in a former suit that was brought by him
against the defendant in the British Colony of Hongkong and was
determined in his favor by the supreme
Page 273 U. S. 543
court there. The judgment declared the plaintiff to be the owner
of certain trademarks and tradenames and entitled to the exclusive
use of them in connection with his business as a cigar
manufacturer. It restrained the defendants from selling cigars
under these trademarks and awarded the costs now sued for. The
Court of First Instance of Manila gave judgment for the plaintiff.
On appeal, the Supreme Court of the Philippine Islands reversed
this decision on the ground that, by ยง 311(2) of the Code of Civil
Procedure, a judgment against a person "may be repelled by evidence
of a want of jurisdiction, want of notice to the party, collusion,
fraud or clear mistake of law or fact," and that the judgment of
the Supreme Court of Hongkong showed such a clear mistake.
The supposed mistake consisted in denying effect in Hongkong to
a sale of business and trademarks by the Alien Property Custodian
to the defendant, the circumstances and nature of which may be
stated in few words so far as they concern the present case. The
plaintiff Ingenohl had built up a great business as a cigar
manufacturer and exporter, having his factory at Manila. In 1908,
he established a factory at Hongkong, and thereafter goods from
both factories were sold under the same trademarks, the outside box
or package of the Hongkong goods having a label indicating that
they came from there. The trademarks were registered in Hongkong,
and the cigars covered by them had acquired a reputation. In 1918,
the Alien Property Custodian seized and sold all the property
"wheresoever situate in the Philippine Islands . . . including
the business as going concern, and the goodwill, tradenames and
trademarks thereof, of Syndicat Oriente,"
being the above mentioned business of the plaintiff in the
Philippines. The Supreme Court of the Philippines held that it was
plain error in the Supreme Court of the British Colony to hold that
this sale did not
Page 273 U. S. 544
carry the exclusive right to use the trademarks in the latter
place.
A trademark started elsewhere would depend for its protection in
Hongkong upon the law prevailing in Hongkong, and would confer no
rights except by the consent of that law.
Hanover Star Milling
Co. v. Metcalf, 240 U. S. 403;
United Drug Co. v. Theodore Rectanus Co., 248 U. S.
90. When then the judge who, in the absence of an appeal
to the Privy Council, is the final exponent of that law
authoritatively declares that the assignment by the Custodian of
the assets of the Manila firm cannot and will not be allowed to
affect the rights of the party concerned in Hongkong, we do not see
how it is possible for a foreign Court to pronounce his decision
wrong. It will be acted on, and settles the rights of the parties
in Hongkong, and, in view of that fact, it seems somewhat
paradoxical to say that it is not the law. If the Alien Property
Custodian purported to convey rights in English territory valid as
against those whom the English law protects, he exceeded the powers
that were or could be given to him by the United States.
It is not necessary to consider whether the section of the Code
of Civil Procedure relied upon was within the power of the
Philippine Commission to pass. In any event, as interpreted, it
involved delicate considerations of international relations, and
therefore we should not hold ourselves bound to that deference that
we show to the judgment of the local court upon matters of only
local concern. We are of opinion that whatever scope may be given
to the section, it is far from warranting the refusal to enforce
this English judgment for costs, obtained after a fair trial before
a court having jurisdiction of the parties, when the judgment is
unquestionably valid and in other respects will be enforced. Of
course, a foreign state might accept the Custodian's transfer as
good within its jurisdiction, if there were no opposing local
interest or right,
Page 273 U. S. 545
and that may be the fact for China outside of Hongkong, as seems
to have been held in another case not yet finally disposed of, but
no principle requires the transfer to be given effect outside of
the United States, and when, as here, it has been decided to have
been ineffectual, it is unnecessary to inquire whether, in the
other event, the Alien Property Custodian was authorized by the
statute to use, or did use in fact, words purporting to have that
effect, or what the effect, if any, would be.
Some question was made of the jurisdiction of this Court. The
jurisdiction was asserted at least provisionally when the writ of
certiorari was granted. There are few cases in which it is more
important to maintain it, and we confirm it now. The validity of
the section of the Code of Civil Procedure is drawn in question,
and also the construction of the Trading with the Enemy Act which
is treated as purporting to authorize what in our opinion it could
not authorize if it tried.
Judgment reversed.