1. The General Inter-American Convention for Trade-Mark and
Commercial Protection signed at Washington on February 20, 1929,
and ratified by the United States, by Cuba and by other American
countries, is a part of our law, and no special legislation in the
United States was necessary to make it effective there. P.
311 U. S.
161.
2. The treaty binds the Territory of Puerto Rico, and cannot be
overridden by the Puerto Rican legislature. P.
311 U. S.
162.
3. The treaty should be construed liberally to give effect to
its purpose. Where a provision fairly admits of two constructions,
one restricting, the other enlarging, rights claimed under it, the
more liberal construction is to be preferred. P.
311 U. S.
163.
4. When a foreign mark is entitled, by virtue of the treaty, to
registration in a ratifying State, and is duly registered there, a
substantive right to its protection in that State attaches. P.
311 U. S.
163.
5. A ratifying State cannot escape the obligation of protecting
the owner in his use of a foreign trademark, duly registered under
the treaty, by refusing that protection to its own nationals. P.
311 U. S.
164.
It is the plain purpose of the treaty to prevent a ratifying
State from denying protection to the foreign mark because of its
origin or previous registration in the foreign country. Protection
against piracy necessarily presupposes the right to use the marks
thus protected.
6. The treaty recognizes the right to transfer separately for
each country the right to use and exploit trademarks registered
under it when the transfer is executed in accordance with the law
of the place where it is made and is duly recorded. P.
311 U. S.
165.
7. A statute of Puerto Rico prohibiting the use on distilled
spirits manufactured in Puerto Rico of trademarks which had
previously been used anywhere outside of Puerto Rico, excepting any
that had been used on spirits manufactured in Puerto Rico on or
before a date specified or that had been used exclusively in
continental United States prior to that date,
held
discriminatory, in violation
Page 311 U. S. 151
of the above-mentioned treaty, when applied to Cuban trademarks
on rum, duly registered but not within the statutory exceptions,
and which a corporation, under license from the Cuban owner, sought
to use in connection with the manufacture and sale of rum in Puerto
Rico. Pp.
311 U. S. 154,
311 U.S. 167.
8. The fact that a corporation applied, under Puerto Rican laws,
for a permit to engage in the business of rectifying distilled
spirits in Puerto Rico did not estop it from questioning the
validity of later legislation discriminating against its foreign
trademarks in violation of the treaty. P.
311 U. S.
166.
9. A regulation of the Puerto Rican legislature providing that
distilled spirits (with certain exceptions not material here) may
be shipped or exported from the Island only in containers holding
not more than one gallon is within the local police power, and not
inconsistent with the Federal Alcohol Administration Act. P.
311 U.S. 167.
109 F.2d 57 reversed in part; affirmed in part.
Certiorari, 39 U.S. 652, to review a decree which reversed a
decree permanently enjoining the Treasurer of Puerto Rico from
enforcing against the plaintiff corporation legislation regulating
the use of trademarks on distilled spirits and forbidding export of
spirits in bulk.
MR. CHIEF JUSTICE HUGHES delivered the opinion of the Court.
This case presents the question of the validity of legislation
of Puerto Rico prohibiting the use of trademarks, brands, or
tradenames on distilled spirits manufactured
Page 311 U. S. 152
in Puerto Rico if the marks, brands, or names had previously
been used anywhere outside Puerto Rico, unless they had been used
on spirits manufactured in Puerto Rico on or before February 1,
1936, or, in the case of trademarks, they had been used exclusively
in continental United States prior to that date.
Petitioner, Bacardi Corporation of America, brought this suit in
the District Court of the United States for Puerto Rico against the
Treasurer of Puerto Rico to have this legislation declared invalid
and its enforcement enjoined. The complaint charged invalidity
under the Fifth Amendment and the commerce clause of the
Constitution of the United States, the Organic Act of Puerto Rico,
39 Stat. 151, the Federal Alcohol Administration Act, and the
General Inter-American Trade-Mark Convention of 1929. The
Destileria Serralles, Inc., a Puerto Rican corporation, was
permitted to intervene as a defendant.
The District Court held the legislation invalid, and issued a
permanent injunction. The Circuit Court of Appeals reversed the
decree and directed the dismissal of the complaint.
Sancho v.
Bacardi Corporation of America, 109 F.2d 57. In view of the
importance of the questions, we granted certiorari. 309 U.S.
652.
The findings of the District Court, which were not disturbed by
the rulings of the Circuit Court of Appeals, show the
following:
Petitioner, Bacardi Corporation of America, is a Pennsylvania
corporation authorized to manufacture distilled spirits. By
agreement, petitioner became entitled to manufacture and sell rum
in Puerto Rico under the trademarks and labels of Compania Ron
Bacardi, S.A., a Cuban corporation. For more than twenty years,
save for the period during national prohibition, the Cuban
corporation and its predecessors had sold rum in Puerto Rico and
throughout the United States under trademarks
Page 311 U. S. 153
which included the word "Bacardi," "Bacardi y Cia," the
representation of a bat in a circular frame, and certain
distinctive labels. These trademarks were duly registered in the
United States Patent Office and in the Office of the Executive
Secretary of Puerto Rico prior to the legislation here in
question.
Bacardi rum has always been made according to definite secret
processes, has been extensively advertised, and enjoys an excellent
reputation. Under petitioner's agreement with the Cuban
corporation, all rum designated by the described trademarks and
labels was to be manufactured under the supervision of
representatives of the Cuban corporation, and to be the same kind
and quality as the rum that the latter manufactured and sold.
In March, 1936, petitioner arranged for the installation of a
plant in Puerto Rico. Since March 31, 1936, petitioner has been
duly licensed to do business in Puerto Rico under its laws relating
to foreign corporations. Petitioner's basic permits from the
Federal Alcohol Administration were amended so as to enable
petitioner to operate in Puerto Rico, and its labels were approved.
Petitioner rented a building in Puerto Rico and spent large sums in
installing its plant.
On May 15, 1936, the legislature of Puerto Rico passed Act No.
115 known as the "Alcoholic Beverage Law," which, after providing
for permits, prohibited the holder of a permit from manufacturing
any distilled spirits which were
"locally or nationally known under a brand, tradename or
trademark previously used on similar products manufactured in a
foreign country, or in any other place outside Puerto Rico,"
with a proviso excepting brands, tradenames, or trademarks used
on spirits "manufactured in Puerto Rico on February 1, 1936," and
also "any new brand, tradename or trademark which
Page 311 U. S. 154
may in the future be used in Puerto Rico." [
Footnote 1] This Act was declared to be of an
experimental nature. It was repealed by Act No. 6 of June 30, 1936,
which contained a similar provision and added a prohibition against
exports in bulk. [
Footnote 2]
That Act was to be in force until September 30, 1937. It was,
however, converted into permanent legislation by the provisions of
Act No. 149 of May 15, 1937, known as the "Spirits and Alcoholic
Beverages Act." [
Footnote
3]
Declaring it to be the policy of the legislature "to protect the
renascent liquor industry of Puerto Rico from all competition by
foreign capital," [
Footnote 4]
and Act of 1937 provided in Sections 44 and 44(b) as follows:
Page 311 U. S. 155
"Section 44. -- No holder of a permit granted in accordance with
the provisions of this or of any other Act shall distill, rectify,
manufacture, bottle, or can any distilled spirits, rectified
spirits, or alcoholic beverages on which there appears, whether on
the container, label, stopper, or elsewhere, any trademark, brand,
tradename, commercial name, corporation name or any other
designation if said trademark, brand, tradename, commercial name,
corporation name, or any other designation, design, or drawing has
been used previously, in whole or in part, directly or indirectly,
or in any other manner, anywhere outside the Island of Puerto Rico,
Provided, That this limitation shall not apply to the
designations used by a distiller, rectifier, manufacturer, bottler,
or canner of distilled spirits manufactured in Puerto Rico on or
before February 1, 1936."
"Section 44(b). -- Distilled spirits, with the exception of
ethylic alcohol, 180 proof or more, industrial alcohol, alcohol
denatured according to authorized formulas, and denatured rum for
industrial purposes, may be shipped or exported from Puerto Rico to
foreign countries, to the continental United States, or to any of
its territories or possessions, or imported into Puerto Rico, only
in containers holding not more than one gallon, and each container
shall bear the corresponding label containing the information
prescribed by law and by the regulations of the Treasurer. . . .
[
Footnote 5]"
It is these sections which petitioner attacks.
Page 311 U. S. 156
Section 7 of the Act of 1937 amended the proviso of Section 44
so as to make its limitation applicable, in regard to trademarks
only, to such "as shall have been used exclusively in the
continental United States . . . prior to February 1, 1936."
[
Footnote 6] Petitioner asserts
that, in the absence of this last provision, there would have been
two distillers whose trademarks would be subject to the prohibition
of Section 44 -- that is, petitioner and one other -- and that
Section 7 protected the other manufacturer, leaving petitioner,
whose marks had been used in foreign countries and not exclusively
in continental United States, the only concern affected by the
prohibition. The District Court said that the Act had the
appearance of being framed so as to exclude only the plaintiff, and
that it was difficult to conceive of "a more glaring
discrimination." In this relation, petitioner cites the critical
reference in
McFarland v. American Sugar Refining Co.,
241 U. S. 79,
241 U. S. 86, to
a statute which "bristles with severities that touch the plaintiff
alone." The Circuit Court of Appeals, while recognizing the
immediate bearing of the provision as thus challenged, sustained it
"as applying to all who might later engage in the business."
That construction, however, does not touch the essential
character of the discrimination which the statute seeks to effect
in the use of trademarks. The statute does not deal with the
admission of corporations, foreign to Puerto Rico, for the purpose
of transacting business in the Island. Petitioner received its
local license. Nor
Page 311 U. S. 157
does the statute prohibit the manufacture of rum in Puerto Rico.
That is allowed. Petitioner received permits from Puerto Rico for
that manufacture, as well as the basic permits from the Federal
Alcohol Administration. The statutory restriction is not on doing
business or manufacturing apart from the use of petitioner's
trademarks and labels to designate its product. As to these
trademarks and labels, the prohibition does not rest on lack of
proper registration under the local law. Petitioner's trademarks
have been duly registered in the United States and Puerto Rico. Nor
does the prohibition of use proceed on the ground that the
trademarks, as such, are invalid. The Cuban corporation which
licensed petitioner to manufacture and sell Bacardi products and to
use Bacardi trademarks had for many years sold its rum in Puerto
Rico, although the rum was not manufactured there. There is no
question of deception or unfair methods of competition. Petitioner
is prohibited from the use of its trademarks, although valid and
duly registered and although the product to which they are applied
is otherwise lawfully made and the subject of lawful sale, solely
because the marks had previously been used outside Puerto Rico and
had not been used on spirits manufactured in Puerto Rico, or
exclusively in continental United States, prior to February 1,
1936.
The first question thus presented is whether this discriminatory
enactment conflicts with the General Inter-American Convention for
Trade Mark and Commercial Protection signed at Washington on
February 20, 1929. [
Footnote
7]
This treaty was the culmination of the efforts of many years to
secure the cooperation of the American States in
Page 311 U. S. 158
uniform trademark protection. As previous Conventions had not
proved satisfactory, [
Footnote
8] the Sixth International Conference of American States, held
at Havana in 1928, recommended to the Governing Board of the Pan
American Union the calling of a special conference "for the purpose
of studying in its amplest scope the problem of the Inter-American
protection of trademarks." Delegates from the respective States
were appointed accordingly, and from their proceedings the
Convention of 1929 resulted. There were obvious difficulties to be
surmounted. These inhered in the differences between the principles
of trademark protection in the Latin American countries, where the
civil law is followed, and the common law principles obtaining in
the United States. The Convention states that the Contracting
States were "animated by the desire to reconcile the different
juridical systems which prevail in the several American Republics,"
and resolved to negotiate the Convention "for the protection of
trademarks, tradenames, and for the repression of unfair
competition and false indications of geographical origin."
By Chapter I, entitled "Equality Of Citizens And Aliens As To
Trade Mark And Commercial Protection," the respective Contracting
States bind themselves to grant to the nationals of the other
Contracting States the same rights and remedies which their laws
extend to their own nationals.
By Chapter II, entitled "Trade Mark Protection," provision is
made for registration or deposit of trademarks in the proper
offices of the Contracting States. Article 3 then specifically
provides:
"Every mark duly registered or legally protected in one of the
Contracting States shall be admitted to registration
Page 311 U. S. 159
or deposit and legally protected in the other Contracting
States, upon compliance with the formal provisions of the domestic
law of such States."
The grounds upon which registration or deposit may be refused or
cancelled are then set forth, including those cases where the
distinguishing elements of marks infringe rights already acquired
by another person in the country where registration or deposit is
claimed, or where they lack an appropriate distinctive character,
or offend public morals, etc. (Art. 3). It is further provided that
labels, industrial designs, and slogans used to identify or to
advertise goods shall receive the same protection accorded to
trademarks in countries where they are considered as such, upon
compliance with the requirements of the domestic trademark law
(Art. 5). The owner of a mark protected in one of the Contracting
States is permitted to oppose registration or deposit of an
interfering mark (Art. 7), and the owner of a mark refused
registration because of an interfering mark has the right to apply
for and obtain the cancellation of the interfering mark on meeting
stated requirements. (Art. 8.)
There is another provision that "the use and exploitation of
trademarks may be transferred separately for each country" and
properly recorded. (Art. 11).
Chapter III provides for the "Protection Of Commercial Names,"
Chapter IV for the "Repression Of Unfair Competition," and Chapter
V for the "Repression Of False Indications Of Geographical Origin
Or Source." The remaining chapters relate to remedies and contain
general provisions. Among the latter is one to the effect that the
provisions of the Convention
"shall have the force of law in those States in which
international treaties possess that character, as soon as they are
ratified by their constitutional organs."
Article 35. An accompanying Protocol establishes an
Inter-American Trade Mark Bureau where marks may be registered.
Page 311 U. S. 160
The text of the provisions above mentioned relating to the
protection of trademarks is set forth in the margin. [
Footnote 9]
Page 311 U. S. 161
This treaty on ratification became a part of our law. No special
legislation in the United States was necessary to make it
effective.
Head Money Cases, 112 U.
S. 580,
Page 311 U. S. 162
112 U. S.
598-599;
Asakura v. Seattle, 265 U.
S. 332,
265 U. S. 341.
The treaty bound Puerto Rico and could not be overriden by the
Puerto Rican legislature.
Asakura v. Seattle, supra;
Page 311 U. S. 163
Nielsen v. Johnson, 279 U. S. 47,
279 U. S. 52;
United States v. Belmont, 301 U.
S. 324,
301 U. S. 331.
According to the accepted canon, we should construe the treaty
liberally to give effect to the purpose which animates it. Even
where a provision of a treaty fairly admits of who constructions,
one restricting, the other enlarging, rights which may be claimed
under it, the more liberal interpretation is to be preferred.
Jordan v. Tashiro, 278 U. S. 123,
278 U. S. 127;
Nielsen v. Johnson, supra; Factor v. Laubenheimer,
290 U. S. 276,
290 U. S. 293,
294.
Here, the clear purpose of the treaty is to protect the foreign
trademarks which fall within the treaty's purview. The basic
condition of that protection, as set forth in Article 3, is that
the mark shall have been "duly registered or legally protected" in
one of the Contracting States. This phrase shows the endeavor to
reconcile the conflicting juridical principles of these States --
the words "or legally protected" being added to the words "duly
registered" with the apparent intent to cover trademarks which were
entitled under the common law to protection by reason of
appropriation and use. [
Footnote
10] If duly registered or legally protected in one of the
Contracting States, the mark is to be admitted to registration or
deposit and is to be legally protected in the other Contracting
States. The condition of that protection in the other States is
compliance "with the formal provisions" of the domestic law. This
clearly indicates that formalities or procedural requisites are
envisaged, and that, when these have been met, it is the intent of
the treaty to confer a substantive right to the protection of the
foreign mark. The intent to give this right of protection if the
mark is entitled to registration under the treaty is shown with
Page 311 U. S. 164
abundant clarity by the provisions of the same article setting
forth the grounds, relating to infringement of previously acquired
rights or lack of distinctive character, etc., upon which
registration may be refused or canceled in the country where
protection is sought. Also, by the provisions as to the right of
the owner of a mark protected in one of the Contracting States to
oppose registration in another an interfering mark (Art. 7), and by
the provisions as to the right of the owner of a mark, having its
origin in one State and seeking registration in another, to obtain
cancellation or annulment of an interfering mark which stands in
the way of the registration sought, upon proving priority of right
as stated. (Art. 8). Then there is the additional recognition of
the right to transfer the ownership of a registered mark and also
to transfer separately for each country the use and exploitation of
trademarks when the transfer is executed in accordance with the law
of the place where it is made and is duly recorded. It will be
observed that the right of protection of the foreign marks, on
compliance with the prescribed formalities, is accorded in each of
the ratifying States irrespective of citizenship or domicile.
[
Footnote 11] When the
foreign mark is entitled by virtue of the treaty to registration in
a ratifying State, and is duly registered there, the substantive
right to its protection in that State attaches.
In this view, the contention that a ratifying State, on due
registration of a foreign mark in accordance with the treaty, is
not bound to protect the owner in the use of that mark, provided it
refuses that protection to its own nationals, necessarily fails.
Undoubtedly the Contracting States are bound, respectively, to give
to the nationals of the other Contracting States the same rights
and remedies that are extended to their own nationals.
Page 311 U. S. 165
That is provided in Article 1. But that provision does not
exhaust the rights given by the treaty. These rights under Article
3 extend to the legal protection of the foreign marks when duly
registered. When protection is sought for such marks, a ratifying
State cannot escape the obligations of the treaty and deny
protection by the simple device of embracing its own nationals in
that denial. That would make a mockery of the treaty. It is its
plain purpose to prevent a ratifying State from denying protection
to the foreign mark because of its origin or previous registration
in a foreign country. It is said that the object of the treaty is
to prevent piracy. That is true, but the argument does not meet the
issue. Protection against piracy necessarily presupposes the right
to use the marks thus protected.
We are here concerned with the construction of the treaty only
as it involves the determination of the validity of the statutory
discrimination against the foreign marks which have been duly
registered in the United States and Puerto Rico. The Bacardi marks
are of Cuban origin. We must assume upon this record that they were
duly registered and were valid in Cuba. Both the United States and
Cuba have ratified the treaty. [
Footnote 12] The right of the Cuban corporation which
owned the marks to make a separate transfer to petitioner of the
right to use and exploit them in Puerto Rico is recognized by the
treaty. Despite this, Puerto Rico has attempted to deny the right
to use these marks on rum manufactured in Puerto Rico for the sole
reason that the marks had been used outside Puerto Rico and had not
been used on spirits made there, or exclusively in continental
United States, before the given date. That is, the very fact of
Page 311 U. S. 166
origin in Cuba, which makes the treaty applicable, is asserted
as a ground for denying the right to use the trademarks, duly
registered, on a product otherwise lawfully manufactured in Puerto
Rico.
That Puerto Rico makes its rule applicable to its own citizens
who may possess such foreign marks cannot avail to purge the
discrimination of its hostility to the treaty. The same reasoning,
if admitted to sustain this particular discrimination, would
justify as against the treaty a local statute denying the right to
use in Puerto Rico any foreign trademark in any circumstances.
The exigencies of local trade and manufacture which prompted the
enactment of the state cannot save it, as the United States, in
exercising its treaty making power, dominates local policy.
We are not impressed by the argument that petitioner is estopped
by acts of acquiescence to challenge the validity of the Puerto
Rican legislation. It is said that petitioner, having accepted the
privilege to engage in the local business, is bound by the
prescribed conditions. The basis of the contention fails. It does
not appear that petitioner applied for a permit under the Act of
1937 which is the subject of attack. Petitioner did apply, on March
31, 1936, for a permit to engage in the business of rectifying
distilled spirits. At that time, the legislation of Puerto Rico did
not discriminate against petitioner's trademarks, and the
legislation of May 15, 1936, was of a temporary character. Apart
from that, it is not the right to manufacture, aside from the use
of trademarks, that is in dispute here, but the right to use
petitioner's trademarks upon its product. Nothing has been shown to
warrant a finding of estoppel to assert the invalidity of the
discrimination thus attempted in violation of the treaty.
W. W.
Cargill Co. v. Minnesota, 180 U. S. 452,
180 U. S. 468;
Hanover Fire Insurance Co. v.
Harding, 272 U.S.
Page 311 U. S. 167
494,
272 U. S. 507;
Power Manufacturing Co. v. Saunders, 274 U.
S. 490,
274 U. S. 497;
Frost v. Corporation Commission, 278 U.
S. 515,
278 U. S.
527-528.
We conclude that, upon this ground of repugnance to the treaty,
the decree of the District Court, insofar as it enjoined the
enforcement of Section 44 of Act No. 6 of June 30, 1936, as amended
by Act No. 149 of May 15, 1937 (including the amendment made by
Section 7 of that Act), with respect to petitioner's trademarks,
was right, and that the reversal in that relation by the Circuit
Court of Appeals was erroneous.
We have no occasion to consider the other grounds of objection
to Section 44 which have been urged under the Constitution and laws
of the United States and the Organic Act of Puerto Rico.
A different situation is presented with respect to Section 44(b)
of Act No. 149 of 1937, prohibiting bulk shipments of distilled
spirits. This prohibition does not appear to offend any right
conferred by the treaty, and we think an adequate basis for it is
found in the police power of Puerto Rico as applied to traffic in
intoxicating liquors. We have recently said that
"The aim of the Foraker Act and the Organic Act was to give
Puerto Rico full power of local self-determination, with an
autonomy similar to that of the states and incorporated
territories."
Puerto Rico v. Shell Company, 302 U.
S. 253,
302 U. S.
261-262.
See also Puerto Rico v. Rubert
Hermanos, 309 U. S. 543,
309 U. S. 547.
As the grant of legislative power in respect of local matters was
"as broad and comprehensive as language could make it" (
Puerto
Rico v. Shell Company, supra), we think the legislature of
Puerto Rico, in the exercise of its police power, had full
authority to deal with the manufacture of, and traffic in,
intoxicating liquors, so far as the Island was affected, in the
absence of a treaty violation such as we have found in the
prohibition of the use of
Page 311 U. S. 168
valid trademarks upon liquors which were otherwise permitted to
be manufactured and sold. The legislature of Puerto Rico could thus
have absolutely interdicted the manufacture or sale (
Mugler v.
Kansas, 123 U. S. 623),
the importation into the Island (
State Board of Equalization of
California v. Young's Market Co., 299 U. S.
59,
299 U. S. 62;
Mahoney v. Joseph Triner Corp., 304 U.
S. 401,
304 U. S. 404)
and the exportation from the Island.
Ziffrin v. Reeves,
308 U. S. 132,
308 U. S. 139.
Having this power, the legislature of Puerto Rico could adopt
measures reasonably appropriate to carry out its inhibitions. That
broad power necessarily embraced the limited exercise which we find
in Section 44(b) with respect to shipments in bulk. Nor do we find
anything in the Federal Alcohol Administration Act which militates
against that provision. The Circuit Court of Appeals did not err in
its decision in this respect.
The decree of the Circuit Court of Appeals in relation to
Section 44 is reversed, and the decree of the District Court is
modified so as to eliminate the injunction against the enforcement
of Section 40 [
Footnote 13]
and Section 44(b) of Act No. 149 of May 15, 1937, and, as thus
modified, is affirmed.
It is so ordered.
[
Footnote 1]
These provisions were as follows (Laws of Puerto Rico, 1936, pp.
610, 644, 646):
"(g) No holder of a permit under this title shall manufacture,
distill, rectify, or bottle, either for himself or for others, any
distilled spirit locally or nationally known under a brand,
tradename, or trademark previously used on similar products
manufactured in a foreign country, or in any other place outside
Puerto Rico:
Provided, (1) That such limitation, aimed at
protecting the industry already existing in Puerto Rico, shall not
apply to any brand, tradename, or trademark used by a manufacturer,
rectifier, distiller, or bottler of distilled spirits manufactured
in Puerto Rico on February 1, 1936, and (2) such restriction shall
not apply to any new brand, tradename, or trademark which may in
the future be used in Puerto Rico."
"(h) If any kind, type, or brand of distilled spirits of a
foreign origin becomes nationally or internationally known by
reason of its bearing or showing as its brand, tradename, or
trademark, the proper name of the manufacturer thereof, such name
shall not, in any manner or form whatever, appear on the labels for
any distilled spirit of said kind or type manufactured, distilled,
rectified, or bottled in Puerto Rico."
[
Footnote 2]
Laws of Puerto Rico, Third Special Session, 1936, p. 78.
[
Footnote 3]
Laws of Puerto Rico, 1937, p. 392.
[
Footnote 4]
This declaration is as follows:
"Section 1(b).
Declaration of Policy. It has been and
is the intention and the policy of this Legislature to protect the
renascent liquor industry of Puerto Rico from all competition by
foreign capital so as to avoid the increase and growth of financial
absenteeism and to favor said domestic industry so that it may
receive adequate protection against any unfair competition in the
Puerto Rican market, the continental American market, and in any
other possible purchasing market."
[
Footnote 5]
There followed in Section 44(b), after the provision quoted in
the text, a proviso relating to the liquidation of a stock of rum
where a rectifier wishes to withdraw from business.
[
Footnote 6]
Section 7 is as follows:
"In regard to trademarks, the provisions of the Proviso of
Section 44 of Act No. 6, approved June 30, 1936, and which is
hereby amended, shall be applicable only to such trademarks as
shall have been used exclusively in the continental United States
by any distiller, rectifier, manufacturer, bottler, or canner of
distilled spirits prior to February 1, 1936, provided such
trademarks have not been used, in whole or in part, by a distiller,
rectifier, manufacturer, bottler, or canner of distilled spirits
outside of the continental United States at any time prior to said
date."
[
Footnote 7]
The Convention was ratified by the United States on February 11,
1931, and proclaimed February 27, 1931. 46 Stat. 2907. It was
ratified by Cuba in 1930.
Id., p. 2976. It has also been
ratified by Columbia, Guatemala, Haiti, Honduras, Nicaragua,
Panama, and Peru. Bulletin, U.S. Trade-Mark Association, 1936, p.
174.
[
Footnote 8]
Ladas, "The International Protection of Trade Marks by the
American Republics," pp. 11
et seq.; Derenberg,
"Trade-Mark Protection and Unfair Trading," pp. 779
et
seq.
[
Footnote 9]
"Chapter I. Equality Of Citizens And Aliens As To Trade Mark And
Commercial Protection."
"Article 1. The Contracting States bind themselves to grant to
the nationals of the other Contracting States and to domiciled
foreigners who own a manufacturing or commercial establishment or
an agricultural development in any of the States which have
ratified or adhered to the present Convention the same rights and
remedies which their laws extend to their own nationals or
domiciled persons with respect to trademarks, tradenames, and the
repression of unfair competition and false indications of
geographical origin or source."
"Chapter II. Trade Mark Protection."
"Article 2. The person who desires to obtain protection for his
marks in a country other than his own, in which this Convention is
in force, can obtain protection either by applying directly to the
proper office of the State in which he desires to obtain
protection, or through the Inter-American Trade Mark Bureau
referred to in the Protocol on the Inter-American Registration of
Trade Marks, if this Protocol has been accepted by his country and
the country in which he seeks protection."
"Article 3. Every mark duly registered or legally protected in
one of the Contracting States shall be admitted to registration or
deposit and legally protected in the other Contracting States, upon
compliance with the formal provisions of the domestic law of such
States."
"Registration or deposit may be refused or cancelled of
marks:"
"1. The distinguishing elements of which infringe rights already
acquired by another person in the country where registration or
deposit is claimed."
"2. Which lack any distinctive character or consist exclusively
of words, symbols, or signs which serve in trade to designate the
class, kind, quality, quantity, use, value, place of origin of the
products, time of production, or which are or have become at the
time registration or deposit is sought, generic or usual terms in
current language or in the commercial usage of the country where
registration or deposit is sought, when the owner of the marks
seeks to appropriate them as a distinguishing element of his
mark."
"In determining the distinctive character of a mark, all the
circumstances existing should be taken into account, particularly
the duration of the use of the mark and if in fact it has acquired
in the country where deposit, registration, or protection is
sought, a significance distinctive of the applicant's goods."
"3. Which offend public morals or which may be contrary to
public order."
"4. Which tend to expose persons, institutions, beliefs,
national symbols or those of associations of public interest, to
ridicule or contempt."
"5. Which contain representations of racial types or scenes
typical or characteristic of any of the Contracting States, other
than that of the origin of the mark."
"6. Which have as a principal distinguishing element, phrases,
names or slogans which constitute the tradename or an essential or
characteristic part thereof, belonging to some person engaged in
any of the other Contracting States in the manufacture, trade, or
production of articles or merchandise of the same class as that to
which the mark is applied. . . ."
"Article 5. Labels, industrial designs, slogans, prints,
catalogues or advertisements used to identify or to advertise goods
shall receive the same protection accorded to trademarks in
countries where they are considered as such, upon complying with
the requirements of the domestic trademark law. . . ."
"Article 7. Any owner of a mark protected in one of the
Contracting States in accordance with its domestic law, who may
know that some other person is using or applying to register or
deposit an interfering mark in any other of the Contracting States,
shall have the right to oppose such use, registration, or deposit,
and shall have the right to employ all legal means, procedure, or
recourse provided in the country in which such interfering mark is
being used or where its registration or deposit is being sought,
and, upon proof that the person who is using such mark or applying
to register or deposit it had knowledge of the existence and
continuous use in any of the Contracting States of the mark on
which opposition is based upon goods of the same class, the opposer
may claim for himself the preferential right to use such mark in
the country where the opposition is made or priority to register or
deposit it in such country, upon compliance with the requirements
established by the domestic legislation in such country and by this
Convention."
"Article 8. When the owner of a mark seeks the registration or
deposit of the mark in a Contracting State other than that of
origin of the mark and such registration or deposit is refused
because of the previous registration or deposit of an interfering
mark, he shall have the right to apply for and obtain the
cancellation or annulment of the interfering mark upon proving, in
accordance with the legal procedure of the country in which
cancellation is sought, the stipulations in Paragraph (a) and those
of either Paragraph (b) or (c) below:"
"(a) That he enjoined legal protection for his mark in another
of the Contracting States prior to the date of the application for
the registration or deposit which he seeks to cancel; and"
"(b) that the claimant of the interfering mark, the cancellation
of which is sought, had knowledge of the use, employment,
registration or deposit in any of the Contracting States of the
mark for the specific goods to which said interfering mark is
applied, prior to adoption and use thereof or prior to the filing
of the application or deposit of the mark which is sought to be
cancelled; or"
"(c) that the owner of the mark who seeks cancellation based on
a prior right to the ownership and use of such mark, has traded or
trades with or in the country in which cancellation is sought, and
that goods designated by his mark have circulated and circulate in
said country from a date prior to the filing of the application for
registration or deposit for the mark, the cancellation which is
claimed, or prior to the adoption and use of the same. . . ."
"Article 11. The transfer of the ownership of a registered or
deposited mark in the country of its original registration shall be
effective, and shall be recognized in the other Contracting States,
provided that reliable proof be furnished that such transfer has
been executed and registered in accordance with the internal law of
the State in which such transfer took place. Such transfer shall be
recorded in accordance with the legislation of the country in which
it is to be effective."
"The use and exploitation of trademarks may be transferred
separately for each country, and such transfer shall be recorded
upon the production of reliable proof that such transfer has been
executed in accordance with the internal law of the State in which
such transfer took place. Such transfer shall be recorded in
accordance with the legislation of the country in which it is to be
effective."
[
Footnote 10]
Derenberg,
op. cit., p. 788.
[
Footnote 11]
See Bulletin U.S. Trade Mark Association, 1931, p. 173;
Derenberg,
op. cit., p. 788.
[
Footnote 12]
The Solicitor General has submitted to the Court a communication
by the Cuban Embassy in Washington to the Secretary of the United
States relating to the interest of Cuban nationals and the Cuban
Government in the question here presented.
[
Footnote 13]
Section 40 was embraced in the decree of the District Court, but
is not the subject of attack in this Court.