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BACARDI CORP. V. DOMENECH, 311 U. S. 150 (1940)

U.S. Supreme Court

Bacardi Corp. v. Domenech, 311 U.S. 150 (1940)

Bacardi Corporation of America v. Domenech

No. 21

Argued October 22, 1940

Decided December 9, 1940

311 U.S. 150


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.

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