Trademarks Cases 7-15

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Republic of the Philippines

SUPREME COURT

Manila

EN BANC

G.R. No. L-48226 December 14, 1942

ANA L. ANG, petitioner,vs.TORIBIO TEODORO, respondent.

Cirilo Lim for petitioner.

Marcial P. Lichauco and Manuel M. Mejia for respondent.

OZAETA, J.:

Petitioner has appealed to this Court by certiorari to reverse the judgment of the Court of Appealsreversing that of the Court of First Instance of Manila and directing the Director of Commerce to cancelthe registration of the trade-mark "Ang Tibay" in favor of said petitioner, and perpetually enjoining thelatter from using said trade-mark on goods manufactured and sold by her.

Respondent Toribio Teodoro, at first in partnership with Juan Katindig and later as sole proprietor, hascontinuously used "Ang Tibay," both as a trade-mark and as a trade-name, in the manufacture and

sale of slippers, shoes, and indoor baseballs since 1910. He formally registered it as trade-mark onSeptember 29, 1915, and as trade-name on January 3, 1933. The growth of his business is a thrilling epicof Filipino industry and business capacity. Starting in an obscure shop in 1910 with a modest capital of P210 but with tireless industry and unlimited perseverance, Toribio Teodoro, then an unknown youngman making slippers with his own hands but now a prominent business magnate and manufacturer with alarge factory operated with modern machinery by a great number of employees, has steadily grown withhis business to which he has dedicated the best years of his life and which he has expanded to suchproportions that his gross sales from 1918 to 1938 aggregated P8,787,025.65. His sales in 1937 amountedto P1,299,343.10 and in 1938, P1,133,165.77. His expenses for advertisement from 1919 to 1938aggregated P210,641.56.

Petitioner (defendant below) registered the same trade-mark "Ang Tibay" for pants and shirts onApril 11, 1932, and established a factory for the manufacture of said articles in the year 1937.In thefollowing year (1938) her gross sales amounted to P422,682.09. Neither the decision of the trial court northat of the Court of Appeals shows how much petitioner has spent or advertisement. But respondent in hisbrief says that petitioner "was unable to prove that she had spent a single centavo advertising "Ang Tibay"shirts and pants prior to 1938. In that year she advertised the factory which she had just built and it waswhen this was brought to the attention of the appellee that he consulted his attorneys and eventuallybrought the present suit."

The trial court (Judge Quirico Abeto) presiding absolved the defendant from the complaint, with costsagainst the plaintiff, on the grounds that the two trademarks are dissimilar and are used on different andnon-competing goods; that there had been no exclusive use of the trade-mark by the plaintiff; and that



there had been no fraud in the use of the said trade-mark by the defendant because the goods on which itis used are essentially different from those of the plaintiff. The second division of the Court of Appeals,composed of Justices Bengson, Padilla, Lopez Vito, Tuason, and Alex Reyes, with Justice Padillaas ponente, reversed that judgment, holding that by uninterrupted an exclusive use since 191 in themanufacture of slippers and shoes, respondent's trade-mark has acquired a secondary meaning; that thegoods or articles on which the two trade-marks are used are similar or belong to the same class; and that

the use by petitioner of said trade-mark constitutes a violation of sections 3 and 7 of Act No. 666. Thedefendant Director of Commerce did not appeal from the decision of the Court of Appeals.

First . Counsel for the petitioner, in a well-written brief, makes a frontal sledge-hammer attack on thevalidity of respondent's trade-mark "Ang Tibay." He contends that the phrase "Ang Tibay" as employedby the respondent on the articles manufactured by him is a descriptive term because, "freely translate inEnglish," it means "strong, durable, lasting." He invokes section 2 of Act No. 666, which provides thatwords or devices which related only to the name, quality, or description of the merchandise cannot be thesubject of a trade-mark. He cites among others the case of Baxter vs. Zuazua (5 Phil., 16), which involvedthe trade-mark "Agua de Kananga" used on toilet water, and in which this Court held that the word"Kananga," which is the name of a well-known Philippine tree or its flower, could not be appropriated asa trade-mark any more than could the words "sugar," "tobacco," or "coffee." On the other hand, counsel

for the respondent, in an equally well-prepared and exhaustive brief, contend that the words "Ang Tibay"are not descriptive but merely suggestive and may properly be regarded as fanciful or arbitrary in thelegal sense. The cite several cases in which similar words have been sustained as valid trade-marks, suchas "Holeproof" for hosiery, 1 "ideal for tooth brushes, 2 and "Fashionknit" for neckties and sweaters. 3

We find it necessary to go into the etymology and meaning of the Tagalog words "Ang Tibay" to

determine whether they are a descriptive term, i.e., whether they relate to the quality or description of the

merchandise to which respondent has applied them as a trade-mark. The word "ang" is a definite articlemeaning "the" in English. It is also used as an adverb, a contraction of the word "anong" (what or how).For instance, instead of saying, "Anong ganda!" ("How beautiful!"), we ordinarily say, "Angganda!" Tibay is a root word from which are derived the verb magpatibay (to strenghten; thenouns pagkamatibay (strength, durability), katibayan (proof, support, strength), katibay-tibayan (superior

strength); and the adjectives matibay (strong, durable, lasting), napakatibay(very strong), kasintibay or magkasintibay (as strong as, or of equal strength). The phrase "Ang Tibay" is an exclamation denotingadministration of strength or durability. For instance, one who tries hard but fails to break an objectexclaims, "Ang tibay!" (How strong!") It may also be used in a sentence thus, " Ang tibay ng sapatos mo!"(How durable your shoes are!") The phrase "ang tibay" is never used adjectively to define or describe anobject. One does not say, "ang tibay sapatos" or "sapatos ang tibay" is never used adjectively to define ordescribe an object. One does not say, "ang tibay sapatos" or "sapatos ang tibay" to mean "durable shoes,"but "matibay na sapatos" or "sapatos na matibay."

From all of this we deduce that "Ang Tibay" is not a descriptive term within the meaning of the Trade-Mark Law but rather a fanciful or coined phrase which may properly and legally be appropriated as atrade-mark or trade-name. In this connection we do not fail to note that when the petitioner herself took

the trouble and expense of securing the registration of these same words as a trademark of her productsshe or her attorney as well as the Director of Commerce was undoubtedly convinced that said words (AngTibay) were not a descriptive term and hence could be legally used and validly registered as a trade-mark.It seems stultifying and puerile for her now to contend otherwise, suggestive of the story of sour grapes.Counsel for the petitioner says that the function of a trade-mark is to point distinctively, either by its ownmeaning or by association, to the origin or ownership of the wares to which it is applied. That is correct,and we find that "Ang Tibay," as used by the respondent to designate his wares, had exactly performedthat function for twenty-two years before the petitioner adopted it as a trade-mark in her own business.



Ang Tibay shoes and slippers are, by association, known throughout the Philippines as products of theAng Tibay factory owned and operated by the respondent Toribio Teodoro.

Second . In her second assignment of error petitioner contends that the Court of Appeals erred in holding

that the words "Ang Tibay" had acquired a secondary meaning. In view of the conclusion we have

reached upon the first assignment of error, it is unnecessary to apply here the doctrine of "secondary

meaning" in trade-mark parlance. This doctrine is to the effect that a word or phrase originallyincapable of exclusive appropriation with reference to an article of the market, because

geographically or otherwise descriptive, might nevertheless have been used so long and so

exclusively by one producer with reference to his article that, in that trade and to that branch of thepurchasing public, the word or phrase has come to mean that the article was his product. (G. & C.Merriam Co. vs. Salfield, 198 F., 369, 373.) We have said that the phrase "Ang Tibay," being neithergeographic nor descriptive, was originally capable of exclusive appropriation as a trade-mark. But were itnot so, the application of the doctrine of secondary meaning made by the Court of Appeals couldnevertheless be fully sustained because, in any event, by respondent's long and exclusive use of saidphrase with reference to his products and his business, it has acquired a proprietary connotation. (Landers,Frary, and Clark vs. Universal Cooler Corporation, 85 F. [2d], 46.)

Third . Petitioner's third assignment of error is, that the Court of Appeals erred in holding that pants andshirts are goods similar to shoes and slippers within the meaning of sections 3 and 7 of Act No. 666. Shealso contends under her fourth assignment of error (which we deem convenient to pass upon together withthe third) that there can neither be infringement of trade-mark under section 3 nor unfair competitionunder section 7 through her use of the words "Ang Tibay" in connection with pants and shirts, becausethose articles do not belong to the same class of merchandise as shoes and slippers.

The question raised by petitioner involve the scope and application of sections 3,7, 11, 13, and 20 of theTrade-Mark Law (Act No. 666.) Section 3 provides that "any person entitled to the exclusive use of atrade-mark to designate the origin or ownership of goods he has made or deals in, may recover damagesin a civil actions from any person who has sold goods of a similar kind, bearing such trade-mark . . . Thecomplaining party . . . may have a preliminary injunction, . . . and such injunction upon final hearing, if

the complainant's property in the trade-mark and the defendant's violation thereof shall be fullyestablished, shall be made perpetual, and this injunction shall be part of the judgment for damages to berendered in the same cause." Section 7 provides that any person who, in selling his goods, shall give themthe general appearance of the goods of another either in the wrapping of the packages, or in the devices orwords thereon, or in any other feature of their appearance, which would be likely to influence purchasersto believe that the goods offered are those of the complainant, shall be guilty of unfair competition, andshall be liable to an action for damages and to an injunction, as in the cases of trade-mark infringementunder section 3. Section 11 requires the applicant for registration of a trade-mark to state, among others,"the general class of merchandise to which the trade-mark claimed has been appropriated." Section 13provides that no alleged trade-mark or trade name shall be registered which is identical with a registeredor known trade-mark owned by another and appropriate to the same class of merchandise, or which tonearly resembles another person's lawful trade-mark or trade-name as to be likely to cause confusion or

mistake in the mind of the public, or to deceive purchasers. And section 2 authorizes the Director of Commerce to establish classes of merchandise for the purpose of the registration of trade-marks and todetermine the particular description of articles included in each class; it also provides that "an applicationfor registration of a trade-mark shall be registered only for one class of articles and only for the particulardescription of articles mentioned in said application."

We have underlined the key words used in the statute: "goods of a similar kin," "general class of merchandise," "same class of merchandise," "classes of merchandise," and "class of articles," because it is



upon their implications that the result of the case hinges. These phrases, which refer to the same thing,have the same meaning as the phrase "merchandise of the same descriptive properties" used in the statutesand jurisprudence of other jurisdictions.

The burden of petitioner's argument is that under sections 11 and 20 the registration by respondent of the

trade-mark "Ang Tibay" for shoes and slippers is no safe-guard against its being used by petitioner for

pants and shirts because the latter do not belong to the same class of merchandise or articles as the former; that she cannot be held guilty of infringement of trade-mark under section 3 because respondent's

mark is not a valid trade-mark, nor has it acquired a secondary meaning; that pants and shirts do not

possess the same descriptive properties as shoes and slippers; that neither can she be held guilty of unfair

competition under section 7 because the use by her of the trade-mark "Ang Tibay" upon pants and shirts

is not likely to mislead the general public as to their origin or ownership; and that there is now showing

that she in unfairly or fraudulently using that mark "Ang Tibay" against the respondent. If we wereinterpreting the statute for the first time and in the first decade of the twentieth century, when it wasenacted, and were to construe it strictly and literally, we might uphold petitioner's contentions. But lawand jurisprudence must keep abreast with the progress of mankind, and the courts must breathe life intothe statutes if they are to serve their purpose. Our Trade-mark Law, enacted nearly forty years ago, hasgrown in its implications and practical application, like a constitution, in virtue of the life continually

breathed into it. It is not of merely local application; it has its counterpart in other jurisdictions of thecivilized world from whose jurisprudence it has also received vitalizing nourishment. We have to applythis law as it has grown and not as it was born. Its growth or development abreast with that of sisterstatutes and jurisprudence in other jurisdictions is reflected in the following observation of a well-knownauthor:

This fundamental change in attitude first manifested itself in the year 1915-1917. Until aboutthen, the courts had proceeded on the theory that the same trade-mark, used on un-like goods,could not cause confusion in trade and that, therefore, there could be no objection to the use andregistration of a well-known mark by a third party for a different class of goods. Since 1916however, a growing sentiment began to arise that in the selection of a famous mark by a thirdparty, there was generally the hidden intention to "have a free ride" on the trade-mark owner's

reputation and good will. (Derenberg, Trade-Mark Protection & Unfair Trading, 1936 edition, p.409.)

In the present state of development of the law on Trade-Marks, Unfair Competition, and Unfair Trading,the test employed by the courts to determine whether noncompeting goods are or are not of the same classis confusion as to the origin of the goods of the second user. Although two noncompeting articles may beclassified under two different classes by the Patent Office because they are deemed not to possess thesame descriptive properties, they would, nevertheless, be held by the courts to belong to the same class if the simultaneous use on them of identical or closely similar trade-marks would be likely to causeconfusion as to the origin, or personal source, of the second user's goods. They would be considered asnot falling under the same class only if they are so dissimilar or so foreign to each other as to make itunlikely that the purchaser would think the first user made the second user's goods.

Such construction of the law is induced by cogent reasons of equity and fair dealing. The courts havecome to realize that there can be unfair competition or unfair trading even if the goods are non-competing,and that such unfair trading can cause injury or damage to the first user of a given trade-mark, first, byprevention of the natural expansion of his business and, second, by having his business reputationconfused with and put at the mercy of the second user. Then noncompetitive products are sold under thesame mark, the gradual whittling away or dispersion of the identity and hold upon the public mind of themark created by its first user, inevitably results. The original owner is entitled to the preservation of the



valuable link between him and the public that has been created by his ingenuity and the merit of his waresor services. Experience has demonstrated that when a well-known trade-mark is adopted by another evenfor a totally different class of goods, it is done to get the benefit of the reputation and advertisements of the originator of said mark, to convey to the public a false impression of some supposed connectionbetween the manufacturer of the article sold under the original mark and the new articles being tenderedto the public under the same or similar mark. As trade has developed and commercial changes have come

about, the law of unfair competition has expanded to keep pace with the times and the element of strictcompetition in itself has ceased to be the determining factor. The owner of a trade-mark or trade-name hasa property right in which he is entitled to protection, since there is damage to him from confusion of reputation or goodwill in the mind of the public as well as from confusion of goods. The modern trend isto give emphasis to the unfairness of the acts and to classify and treat the issue as a fraud.

A few of the numerous cases in which the foregoing doctrines have been laid down in one form oranother will now be cited: (1) In Teodoro Kalaw Ng Khe vs. Level Brothers Company (G.R. No. 46817),decided by this Court on April 18, 1941, the respondent company (plaintiff below) was granted injunctiverelief against the use by the petitioner of the trade-mark "Lux" and "Lifebuoy" for hair pomade, theyhaving been originally used by the respondent for soap; The Court held in effect that although saidarticles are noncompetitive, they are similar or belong to the same class. (2) In Lincoln Motor Co. vs.

Lincoln Automobile Co. (44 F. [2d], 812), the manufacturer of the well-known Lincoln automobile wasgranted injunctive relief against the use of the word "Lincoln" by another company as part of its firmname. (3) The case of Aunt Jemima Mills Co. vs. Rigney & Co. (247 F., 407), involved the trade-mark "Aunt Jemima," originally used on flour, which the defendant attempted to use on syrup, and there thecourt held that the goods, though different, are so related as to fall within the mischief which equityshould prevent. (4) In Tiffany & Co., vs. Tiffany Productions, Inc. (264 N.Y.S., 459; 23 Trade-mark Reporter, 183), the plaintiff, a jewelry concern, was granted injunctive relief against the defendant, amanufacturer of motion pictures, from using the name "Tiffany." Other famous cases cited on the margin,wherein the courts granted injunctive relief, involved the following trade-marks or trade-names: "Kodak,"for cameras and photographic supplies, against its use for bicycles. 4 "Penslar," for medicines and toiletarticles, against its use for cigars; 5 "Rolls-Royce," for automobiles. against its use for radiotubes; 6 "Vogue," as the name of a magazine, against its use for hats; 7"Kotex," for sanitary napkins,

against the use of "Rotex" for vaginal syringes; 8 "Sun-Maid," for raisins, against its use for flour; 9 "Yale,"for locks and keys, against its use for electric flashlights; 10 and "Waterman," for fountain pens, against itsuse for razor blades. 11

lawphil.net

Against this array of famous cases, the industry of counsel for the petitioner has enabled him to cite onthis point only the following cases: (1) Mohawk Milk Products vs. General Distilleries Corporation (95 F.[2d], 334), wherein the court held that gin and canned milk and cream do not belong to the same class;(2) Fawcett Publications, Inc. vs. Popular Mechanics Co. (80 F. [2d], 194), wherein the court held thatthe words "Popular Mechanics" used as the title of a magazine and duly registered as a trade-mark werenot infringed by defendant's use of the words "Modern Mechanics and Inventions" on a competitivemagazine, because the word "mechanics" is merely a descriptive name; and (3) Oxford Book Co. vs.

College Entrance Book Co. (98 F. [2d], 688), wherein the plaintiff unsuccessfully attempted to enjoin the

defendant from using the word "Visualized" in connection with history books, the court holding that saidword is merely descriptive. These cases cites and relied upon by petitioner are obviously of no decisiveapplication to the case at bar.

We think reasonable men may not disagree that shoes and shirts are not as unrelated as fountain pens andrazor blades, for instance. The mere relation or association of the articles is not controlling. As mayreadily be noted from what we have heretofore said, the proprietary connotation that a trade-mark ortrade-name has acquired is of more paramount consideration. The Court of Appeals found in this case that



by uninterrupted and exclusive use since 1910 of respondent's registered trade-mark on slippers and shoesmanufactured by him, it has come to indicate the origin and ownership of said goods. It is certainly notfarfetched to surmise that the selection by petitioner of the same trade-mark for pants and shirts wasmotivated by a desire to get a free ride on the reputation and selling power it has acquired at the hands of the respondent. As observed in another case, 12 the field from which a person may select a trade-mark ispractically unlimited, and hence there is no excuse for impinging upon or even closely approaching the

mark of a business rival. In the unlimited field of choice, what could have been petitioner's purpose inselecting "Ang Tibay" if not for its fame?

Lastly, in her fifth assignment of error petitioner seems to make a frantic effort to retain the use of themark "Ang Tibay." Her counsel suggests that instead of enjoining her from using it, she may be requiredto state in her labels affixed to her products the inscription: "Not manufactured by Toribio Teodoro." Wethink such practice would be unethical and unworthy of a reputable businessman. To the suggestion of petitioner, respondent may say, not without justice though with a tinge of bitterness: "Why offer aperpetual apology or explanation as to the origin of your products in order to use my trade-mark insteadof creating one of your own?" On our part may we add, without meaning to be harsh, that a self-respecting person does not remain in the shelter of another but builds one of his own.

The judgment of the Court of Appeals is affirmed, with costs against the petitioner in the three instances.So ordered.

Yulo, C.J., Moran, Paras and Bocobo, JJ., concur.

Republic of the PhilippinesSUPREME COURT

Manila

EN BANC

G.R. No. L-4531 January 10, 1953

ANG SI HENG and SALUSTIANA DEE, plaintiffs-appellants,vs.

WELLINGTON DEPARTMENT STORE, INC., BENJAMIN CHUA, S.R. MENDINUETO, andFELIMON COSIO,defendants-appellees.

Quisumbing, Sycip, Quisumbing and Salazar for appellants.

Fabian Millar and Antonio Fa. Quesada for appellees.

LABRADOR, J.:

The plaintiffs-appellants herein are engaged in the business of manufacturing shirts, pants,drawers, and other articles of wear for men, women, and children. They have been in that businesssince the year 1938, having obtained the registration for the said articles the trademark of "Wellington."In the year 1940 they registered the business name "Wellington Company," and this registration of the



name was renewed on June 11, 1946. Their invoices, stationery, and signboard bear the trade name"Wellington Company," and in newspaper advertisements they described their business as "WellingtonShirt Factory." It does not appear, however, that their trademark for their articles of wear was againregistered after August 27, 1938, nor their trade name registered after 1946.

Defendant Benjamin Chua applied for the registration of the business name "Wellington

Department Store" on May 7, 1946. His application therefor was approved by the Bureau of Commerce, and a certificate issued in his favor. On June 8, 1946, this business name was transferred toWellington Department Store, Inc., of which he is the president. It does not appear, however, that hisapplication with the Bureau of Commerce for the registration of the business name "WellingtonDepartment Store" has been renewed, and neither does it appear that the business name "WellingtonCompany" applied for by plaintiffs-appellants has also been renewed.

The plaintiffs-appellants allege that the use of the words "Wellington Department Store" as a businessname and as a corporate name by the defendant-appellee deceives the public into buying defendantcorporation's goods under the mistaken belief that the names are the plaintiff's or have the same source asplaintiffs' goods, thereby resulting in damage to them. They, therefore, pray that the defendantcorporation be enjoined from using the business name "Wellington Department Store" and the corporate

name "Wellington Department Store, Inc"; that the Director of Commerce be ordered to cancel theregistration of said business name, and the Securities and Exchange Commissioner be also ordered tocancel the corporate name "Wellington Department Store, Inc." In their answer the defendants WellingtonDepartment Store, Inc., and Benjamin Chua allege, by way of special defense, that the plaintiffs areengaged in the manufacture or production of shirts, pants, drawers, and other articles of wear for men,women, and children, and keep a dry goods store for the sale of the same, whereas they (the defendants)are not engaged in the same business or in the manufacture or sale of articles with the trademark "Wellington," and that they are keeping a store for articles such as shoes, hats, toys, perfumes, bags,apparels, and the like, most of which are different from those manufactured and sold by plaintiffs-appellants.

Upon the above issues the parties went to trial, and thereafter the court a quo dismissed the complaint and

absolved the defendants therefrom, holding that the corporate name "Wellington Department Store Inc.,"has not been previously acquired and appropriated by any person or corporation, citing the caseof Compañia General de Tabacos vs. Alhambra Cigar & etc. Co., 33 Phil., 485, and Walter E. Olsen &

Co. vs. Lambert , 42 Phil., 633. Against this decision the plaintiffs have prosecuted this appeal, contendingthat the appellees' business is similar and identical to that of the appellants; that the use of the businessname "Wellington Department Store, Inc.," misleads and confuses the public; that plaintiffs-appellantshave acquired a property right in the name "Wellington;" and that if the defendants-appellees are notliable for any infringement of tradename, at least they are liable for unfair competition.

The term "Wellington" is either a geographical name (see Webster's

International Dictionary, where it is said to be the capital of New

Zealand; urban district of Shropshire, England and of

Somersetshire, England; co. seat, of Summer co., Kans, etc.), or the

surname of a person. But mere geographical names are ordinarily

regarded as common property, and it is a general rule that the same

cannot be appropriated as the subject of an exclusive trademark or

trade name.

(52 Am. Jur., 548.) Even if Wellington were a surname, which is noteven that of the plaintiffs-appellants, it cannot also be validly registered



as a trade name. (Section 4, Paragraph (e), Republic Act. No. 166.) Asthe term cannot be appropriated as a trademark or a trade name, no actionfor violation thereof can be maintained, as none is granted by the statutein such cases. The right to damages and for an injunction forinfringement of a trademark or a trade name is granted only to thoseentitled to the exclusive use of a registered trademark or trade name.

(Section 23, Republic Act No. 166.) It is evident, therefore, that noaction may lie in favor of the plaintiffs-appellants herein for damages orinjunctive relief for the use by the defendants-appellees of the name"Wellington."

The complaint, however, alleges that the defendants-appellees have the actual intent to mislead the publicand to defraud the plaintiffs, as by the use of the name "Wellington Department Store, "they havedeceived the public into buying its goods under the mistaken belief that the same are the plaintiffs' orhave the same source as the plaintiffs' goods. The action is evidently one for unfair competition, which isdefined in Chapter VI, Section 29, of Republic Act No. 166, not one for violation of a trademark or atradename. In order to determine whether defendants are liable in this respect and have deceived thepublic into believing that the goods they sell are of plaintiffs' manufacture or proceed from the same

source as plaintiffs' goods, all the surrounding circumstances must be taken into account, especially theidentity or similarity of their business, how far the names are a true description of the kind and quality of the articles manufactured or the business carried on, the extent of the confusion which may be created orproduced, the distance between the place of business of one and the other party, etc. (Chas S. HigginsCo. vs. Higgins Soap Co., 144 N.Y. 462, 39 N.E. 490, 27 L.R.A. 42, 43 Am. St. Rep. 769.)

While there is similarity between the trademark or trade name "Wellington Department Store," noconfusion or deception can possibly result or arise from such similarity because the latter is a "departmentstore," while the former does purport to be so. The name "Wellington" is admittedly the name of thetrademark on the shirts, pants, drawers, and other articles of wear for men, women and children, whereasthe name used by the defendant indicates not these manufactured articles or any similar merchandise, buta department store. Neither can the public be said to be deceived into the belief that the goods being sold

in defendant's store originate from the plaintiffs, because the evidence shows that defendant's store sellsno shirts or wear bearing the trademark "Wellington," but other trademarks. Neither could such deceptionbe by any possibility produced because defendant's store is situated on the Escolta, while plaintiffs' storeor place of business is located in another business district far away from the Escolta. The mere fact thattwo or more customers of the plaintiffs thought of the probable identity of the products sold by one andthe other is not sufficient proof of the supposed confusion that the public has been led into by the use of the name adopted by the defendants. No evidence has been submitted that customers of the plaintiffs-appellants had actually been misled into purchasing defendant's articles and merchandise, for the verywitnesses who have supposedly noted the use of plaintiffs' trade name do not claim to have actuallypurchased any articles from defendant's store.

The concept of unfair competition has received the attention of this Court in two previous cases, that

of Ang vs. Teodoro1 (2 Off. Gaz., No. 7, 673) and Teodoro Kalaw Ng Khe vs. Lever Brothers Co.2 (G.R.No. 46817, promulgated on April 18, 1941.) In the first case this Court stated that even a name or phrasenot capable of appropriation as trademark or trade name may, by long and exclusive use by a businesswith reference thereto or to its products, acquire a proprietary connotation, such that the name or phrase tothe purchasing public becomes associated with the business or the products and entitled to protectionagainst unfair competition. But in the case at bar, the principle therein enunciated cannot be made toapply because the evidence submitted by the appellants did not prove that their business has continued forso long a time that it has become of consequence and acquired a goodwill of considerable value, such that



its articles and products have acquired a well-known reputation and confusion will result by the use of thedisputed name by the defendants' department store. It is true that appellants business appears to have beenestablished a few years before the war and appellees' after liberation, yet it seems appellees' business andgoodwill are the products of their own individual initiative, not wrested by unfair competition fromappellants' business and goodwill.

In the case of Kalaw Ng Khe vs. Lever Brothers Co., this Court citing a well-considered opinion of theCourt of Appeals published in 39 Off. Gaz., 1479-1486, No. 62, May 21, 1941, declared that it is notnecessary that the articles of the petitioner be exactly similar to those handled by respondents in order thatunfair competition may be said to arise, and that it is sufficient for the articles to fall under the generalcategory of toilet articles. It might be true that, inasmuch as appellees' department store deals on shirtsand other articles of wear while appellants produce the same articles, some competition would arisebetween them. It is not, however, competition that the law seeks to prevent, but unfair competition,wherein a newcomer in business tries to grab or steal away the reputation or goodwill of the business of another. As the court stated in said case, "the tendency of the courts has been to widen the scope of protection in the field of unfair competition. They have held that there is no fetish in the word"competition," and that the invocation of equity rest more vitally on the element of unfairness." As wehave stated, appellant have not shown any well-established reputation or goodwill previous to the

establishment of appellees' business, such that it can be said that something was unfairly taken by the useof such reputation by the appellees' department store.

We agree, therefore, with the trial court that plaintiffs-appellants have not been able to show the existenceof a cause of action for unfair competition against the defendants-appellees.

The judgment appealed from is, therefore, affirmed, with costs against the plaintiffs-appellants.

Paras, C.J., Pablo, Bengzon, Tuason, Montemayor, Jugo and Bautista Angelo, JJ., concur.


SUPREME COURT Manila

EN BANC

G.R. No. L-18289 March 31, 1964

ANDRES ROMERO, petitioner,vs.MAIDEN FORM BRASSIERE CO., INC., and THE DIRECTOR OF PATENTS, respondents.

Alafriz Law Office for petitioner.

Ross, Selph & Carrascoso for respondent Maiden Form Brassiere Co., Inc.

Office of the Solicitor General and Tiburcio S. Evalle for respondent Director of Patents.

BARRERA, J.:



From the decision of the Director of Patents (of January 17, 1961) dismissing his petition for cancellationof the registration of the trademark "Adagio" for brassieres manufactured by respondent Maiden FormBrassiere Co., Inc., petitioner Andres Romero, interposed this appeal.

On February 12, 1957, respondent company, a foreign corporation, filed with respondent Director of Patents an application for registration (pursuant to Republic Act No. 166) of the trademark "Adagio" for

the brassieres manufactured by it. In its application, respondent company alleged that said trademark wasfirst used by it in the United States on October 26, 1937, and in the Philippines on August 31, 1946; that ithad been continuously used by it in trade in, or with the Philippines for over 10 years; that said trademark "is on the date of this application, actually used by respondent company on the following goods, classifiedaccording to the official classification of goods (Rule 82) - Brassieres, Class 40"; and that said trademark is applied or affixed by respondent to the goods by placing thereon a woven label on which the trademark is shown.

Acting on said application, respondent Director, on August 13, 1957, approved for publication in theOfficial Gazette said trademark of respondent company, in accordance with Section 7 of Republic ActNo. 166 (Trademark Law), having found, inter alia, that said trademark is "a fanciful and arbitrary use of a foreign word adopted by applicant as a trademark for its product; that it is neither a surname nor a

geographical term, nor any that comes within the purview of Section 4 of Republic Act No. 166; and thatthe mark as used by respondent company convincingly shows that it identifies and distinguishesrespondent company's goods from others."

On October 17, 1957, respondent Director issued to respondent company a certificate of registration of with, trademark "Adagio".

On February 26, 1958, petitioner filed with respondent Director a petition for cancellation of saidtrademark, on the grounds that it is a common descriptive name of an article or substance on which thepatent has expired; that its registration was obtained fraudulently or contrary to the provisions of Section4, Chapter II of Republic Act No. 166; and that the application for its registration was not filed inaccordance with the provisions of Section 37, Chapter XI of the same Act. Petitioner also alleged that saidtrademark has not become distinctive of respondent company's goods or business; that it has been used byrespondent company to classify the goods (the brassieres) manufactured by it, in the same manner aspetitioner uses the same; that said trademark has been used by petitioner for almost 6 years; that it hasbecome a common descriptive name; and that it is not registered in accordance with the requirements of Section 37(a), Chapter XI of Republic Act No. 166.

Issues having been joined, the case was heard and, after hearing, respondent Director (on January 17,1961) rendered the decision above adverted to.

Petitioner filed a motion for reconsideration of said decision, on the grounds that (1) it is contrary to theevidence, and (2) it is contrary to law. Said motion was denied by respondent Director by resolution of March 7, 1961.

Hence, this appeal.

Appellant claims that the trademark "Adagio" has become a common descriptive name of a particularstyle of brassiere and is, therefore, unregistrable. It is urged that said trademark had been used by localbrassiere manufacturers since 1948, without objection on the part of respondent company.



This claim is without basis in fact. The evidence shows that the trademark "Adagio" is a musical term,which means slowly or in an easy manner, and was used as a trademark by the owners thereof (theRosenthals of Maiden Form Co., New York) because they are musically inclined. Being a musical term, itis used in an arbitrary (fanciful) sense as a trademark for brassieres manufactured by respondentcompany. It also appears that respondent company has, likewise, adopted other musical terms such as"Etude" (Exh. W-2), "Chansonette" (Exh. W-3), "Prelude" (Exh. W-4), "Over-ture" (Exh. W-6), and

"Concerto" (Exh. V), to identify, as a trademark, the different styles or types of its brassieres. Asrespondent Director pointed out, "the fact that said mark is used also to designate a particular style of brassiere, does not affect its registrability as a trademark" (Kiekhaefer Corp. v. Willys-Overland Motors,Inc., 111 USPQ 105).1äwphï1.ñët

It is not true that respondent company did not object to the use of said trademark by petitioner and otherlocal brassiere manufacturers. The records show that respondent company's agent, Mr. Schwartz, warnedthe Valleson Department Store to desist from the sale of the "Adagio" Royal Form brassieresmanufactured by petitioner (t.s.n., pp. 27-28, Oct. 7, 1958), and even placed an advertisement (Exhs. 3 &4) in the local newspapers (Manila Daily Bulletin, Manila Times, Fookien Times, and others) warning thepublic against unlawful use of said trademark (t.s.n., p. 15, Aug. 17, 1959). The advertisement (Exh. U) inthe Manila Times made by respondent company on February 9, 1958, was brought to petitioner's attention

(t.s.n., p. 24, Oct. 7, 1958), which must have prompted him to file this present petition for cancellation, onFebruary 26, 1958.

On the other hand, respondent company's long and continuous use of the trademark "Adagio" has notrendered it merely descriptive of the product. In Winthrop Chemical Co. v. Blackman (268 NYS 653), itwas held that widespread dissemination does not justify the defendants in the use of the trademark.

Veronal has been widely sold in this country by the plaintiff; over 5,250,000 packages have beensold since 1919. This is a consequence of the long and continued use by the plaintiff of thistrademark and is the result of its efforts to inform the profession and the public of its product.This widespread dissemination does not justify the defendants in the use of this trademark. If thisargument were sound, then every time a plaintiff obtained the result of having the public purchase

its article, that fact of itself would destroy a trademark. Arbitrary trademarks cannot becomegeneric in this way. Jacobs v. Beecham, 221 U.S. 263, 31 S. Ct. 555, 55 L. Ed. 729; Coca-ColaCo. v. Koke Co. of American, 254 U.S. 143, 41 S. Ct. 113, 65 L. Ed. 189. (emphasis supplied.)

Appellant next contends that the trademark "Adagio at the time it was registered (in the Philippines) onOctober 17, 1957, had long been used by respondent company, only "to designate a particular style orquality of brassiere and, therefore, is unregistrable as a trademark. In support of the contention, he allegesthat the sentence "Maidenform bras are packaged for your quick shopping convenience. For other popularMaidenform styles writ for free style booklet to: Maiden Form Brassiere Co., Inc 200 Madison Avenue,New York 16, N.Y." printed on the package (Exh. W), shows that the trademark "Adagio" is used todesignate a particular style or quality of brassiere. He also cites portions of the testimonies of hiswitnesses Bautista and Barro, to the effect that said trademark refers to the style of brassieres sold in the

stores of which they are salesmen.

This contention is untenable. Said sentence appearing on the package (Exh. W), standing alone, does notconclusively indicate that the trademark "Adagio" is merely a style of brassiere. The testimony of Mr.Schwartz, witness of respondent company, belies petitioner's claim:



Q. There is a statement at the bottom of Exhibit W which reads, 'There is a Maidenform for everytype of figure'. As you stated you are very familiar with these bras manufacture by MaidenformBrassiere Company, what are these types of figures this Exhibit W refer to?

A. This is a product sold primarily in the United States they have cold climate there, and a style tosuit the climate and we have different here. This kind of bra very seldom comes here. This type is

very expensive and sold primarily in the United States. We do not sell it here; it is very expensivean import restrictions do not allow our dollar allocations for such sort.

As to the testimonies of Bautista and Barro, they are me conclusions of said witnesses. Note that whenBautista was asked why he considered the trademark "Adagio" as a style, he replied that the brand"Adagio" is attached distinguish the style. He stated as follows:

Q. You said that those bras mentioned by you such as Adagio, Prelude, Alloette, are styles, willyou please tell us the reason why you said that those are styles?

A. You know his brand like Adagio, Alloette are just attached to the bras just to distinguish thestyle: It is not the main brand.

Barro, on the other hand, said that "Adagio" is a mark. She declared as follows:

Q. You state that you used to sell brassieres in the store in which you work; when customerscome to your store and ask for brassieres, what do they usually ask from you?

A. Well, I tell you there are so many types and certain types of people ask for certain brassiere.There are people who ask for Royal Form Adagio and there are others who ask for Duchess IdealForm, and so many kinds of marks.

Brassieres are usually of different types or styles, and appellee has used different trademarks for every

type as shown by its labels, Exhibits W-2 (Etude), W-3 (Chansonette), W-4 (Prelude), W-5 (Maidenette),and W-6, (Overture). The mere fact that appellee uses "Adagio" for one type or style, does not affect thevalidity of such word as a trademark. In. the case of Kiekhaefer Corp. v. Willys-Overland Motors, 111USPQ 105, it was held that the fact that the word "Hurricane" was used to designate only one model of automobile, did not affect the validity of that word as a trademark. In Minnesota Mining Co. V. MotloidCo., 74 USPQ 235, the applicant sought to register the letters "MM" in diagonal relationship within acircle. Applicant admitted that this mark was used only for its medium price and medium quality denture-base materials. The Assistant Commissioner of Patents held:

It clearly appears, however, that the mark serves to indicate origin of applicant's goods; and thefact that it is used on only one of several types or grades does not affect its registrability as a trademark.

Appellant also claims that respondent Director erred in registering the trademark in question, despiteappellee's non-compliance with Section 37, paragraphs 1 and 4 (a) of Republic Act No. 166.

This contention flows from a misconception of the application for registration of trademark of respondent.As we see it, respondent's application was filed under the provisions of Section 2 of Republic Act No. 166as amended by Section 1 of Republic Act 865 which reads as follows:



"SEC. 2. What are registrable — Trademarks, ... own by persons, corporations, partnerships orassociations domiciled ... in any foreign country may be registered in accordance with theprovisions of this Act: Provided , That said trademarks, trade-names, or service marks are actuallyin use in commerce and services not less than two months in the Philippines before the time theapplications for registration are filed: ..."

Section 37 of Republic Act No. 166 can be availed of only where the Philippines is a party to aninternational convention or treaty relating to trademarks, in which the trade-mark sought to be registeredneed not be use in the Philippines. The applicability of Section 37 has been commented on by the Directorof Patents, in this wise:

Trademark rights in the Philippines, without actual use the trademark in this country can, of course, be created artificially by means of a treaty or convention with another country orcountries. Section 37 of the present Philippine Trademark Law, Republic Act No. 166(incorporated as Rule 82 in the Rules of Practice for Registration of Trademarks) envisions theeventual entrance of the Philippines into such convention treaty. It is provided in said section thatapplications filed thereunder need not allege use in the Philippines of the trade mark sought to beregistered. The Philippines has, however not yet entered into any such treaty or convention and,

until she does, actual use in the Philippines of the trademark sought to be registered andallegation in the application of such fact, will be required in all applications for original orrenewal registration submitted to the Philippine Patent Office. (Circular Release No. 8.)

Appellant, likewise, contends that the registration the trademark in question was fraudulent or contrarySection 4 of Republic Act No. 166. There is no evidence to show that the registration of the trademark "Adagio" was obtained fraudulently by appellee. The evidence record shows, on the other hand, that thetrademark "Adagio" was first exclusively in the Philippines by a appellee in the year 1932. There beingno evidence of use of the mark by others before 1932, or that appellee abandoned use thereof, theregistration of the mark was made in accordance with the Trademark Law. Granting that appellant usedthe mark when appellee stopped using it during the period of time that the Government imposedrestrictions on importation of respondent's brassiere bearing the trademark, such temporary non-use did

not affect the rights of appellee because it was occasioned by government restrictions and was notpermanent, intentional, and voluntary.

To work an abandonment, the disuse must be permanent and not ephemeral; it must be intentionaland voluntary, and not involuntary or even compulsory. There must be a thorough-goingdiscontinuance of any trade-mark use of the mark in question (Callman, Unfair Competition andTrademark, 2nd Ed., p. 1341).

The use of the trademark by other manufacturers did not indicate an intention on the part of appellee toabandon it.

"The instances of the use by others of the term 'Budweiser, cited by the defendant, fail, evenwhen liberally construed, to indicate an intention upon the part of the complainant to abandon itsrights to that name. 'To establish the defense of abandonment, it is necessary to show not onlyacts indicating a practical abandonment, but an actual intention to abandon. Saxlehner v. Eisener& Mendelson Co., 179 U.S. 19, 21 S. Ct. 7 (45 L. Ed. 60). (Anheuser-Busch, Inc. v. BudweiserMalt Products Corp., 287 F. 245.)

Appellant next argues that respondent Director erred in declaring illegal the appropriation in thePhilippines of the trademark in question by appellant and, therefore, said appropriation did not affect



appellee's right thereto and the subsequent registration thereof. Appellant urges that its appropriation of the trademark in question cannot be considered illegal under Philippine laws, because of non-complianceby appellee of Section 37 of Republic Act No. 166. But we have already shown that Section 37 is not theprovision invoked by respondent because the Philippines is not as yet a party to any internationalconvention or treaty relating to trademarks. The case of United Drug Co. v. Rectanus, 248 U.S. 90, 39 S.Ct. 48, 63 L. Ed. 141, cited by appellant, is not applicable to the present case, as the records show that

appellee was the first user of the trademark in the Philippines, whereas appellant was the later user.Granting that appellant used the trade-mark at the time appellee stopped using it due to governmentrestrictions on certain importations, such fact did not, as heretofore stated, constitute abandonment of thetrademark as to entitle anyone to its free use.

Non-use because of legal restrictions is not evidence of an intent to abandon. Non-use of theirancient trade-mark and the adoption of new marks by the Carthusian Monks after they had beencompelled to leave France was consistent with an intention to retain their right to use their oldmark. Abandonment will not be inferred from a disuse over a period of years occasioned bystatutory restrictions on the name of liquor. (Nims Unfair Competition and Trade-Mark p. 1269.)

IN VIEW OF ALL THE FOREGOING, we are of the opinion and so hold, that respondent Director of

Patents did not err in dismissing the present petition for cancellation of the registered trademark of appellee company, and the decision appealed from is therefore hereby affirmed, with costs against theappellant. So ordered.

Bengzon, C.J., Padilla, Bautista Angelo, Labrador, Reyes, J.B.L., Paredes, Dizon, Regala and

Makalintal, JJ., concur.

Concepcion, J., took no part.

Republic of the PhilippinesSUPREME COURT Manila

EN BANC

G.R. No. L-18337 January 30, 1965

CHUA CHE, petitioner,vs.PHILIPPINES PATENT OFFICE and SY TUO, respondents.

Chipeco & Alcaraz, Jr. for petitioner.

Perfecto E. de Vera for respondents.

PAREDES, J.:

This is a petition to review the decision of the Director of Patents, in Inter Partes Case No. 161, denyingthe application of petitioner Chua Che for the registration of "T.M. X-7" for use on soap Class 51, beingmanufactured by said Chua Che, upon the opposition of respondent Sy Tuo.

Under date of October 30, 1958, Chua Che presented with the Philippines Patent Office a petition prayingfor the registration in his favor the trade name "X-7". The petition, states:



The undersigned CHUA CHE, a citizen of China, a resident of 2804 Limay St., Tondo, Manila,and doing business at same address, has adopted and used the trademark "X-7" shown in theaccompanying Drawing.

In accordance with the requirements of law, the undersigned declares that this trademark —

1. Was first used by him on June 10, 1957.

2. Was first used by him in commerce in or with the Philippines on June 10, 1957.

3. Has been continuously used by him in trade in or with the Philippines for more than one year.

4. Is, on the date of this application, actually used by him on the following goods, classifiedaccording to the Official Classification of Goods (Rule 82):

Class 51 — Soap

5. Is applied to the goods or to the packages containing the same, by placing thereon a printedlabel on which the trademark is shown, or by directly impressing the mark to the goods.

The corresponding declaration, which was under oath, contained, among others, the following:

3. That he believes himself to be the lawful owner of the trademark sought to be registered.

4. That the said trademark is in actual use in commerce in or with the Philippines not less thantwo months before this application is filed.

5. That no other person, partnership, corporation, or association, to the best of his knowledge andbelief, has the right to use said trademark in the Philippines, either in the identical form or in any

such near resemblance thereto as might be calculated to deceive.

Under date of July 6, 1959, an Examiner of the Department of Commerce and Industry, submitted a reportrecommending the allowance of the application, which report was approved by the Supervising TMExaminer. After the Notice of allowance was published in the Official Gazette, as required, respondent SyTuo presented a "Notice of Opposition," dated October 15, 1959, anchoring said opposition on thefollowing allegations:

1. The registration of the trademark "X-7" as applied for by CHUA CHE will not only violate therights and interests of the Oppositor over his registered trademark "X-7" covered by Certificate of Registration No. 5,000, issued April 21, 1951, but will also tend to mislead the purchasing publicand make it convenient for unscrupulous dealers to pass off the goods of the applicant CHUA

CHE, for those of the oppositor SY TUO, to the injury of both the oppositor and the public.

2. The registration of the said trademark "X-7" in the name of CHUA CHE will be in violation of,and will run counter to, Section 4 (d) of Republic Act No. 166, as amended, because it isconfusingly similar to the trademark "X-7" covered by Registration No. 5,000 previouslyregistered to, and being used by the oppositor and is not abandoned.



The Oppositor SY TUO, doing business as the Western Cosmetic Laboratory will rely on thefollowing facts:

(a) Oppositor has prior use of the trademark "X-7" as he has been using it extensively andcontinuously since July 31, 1952, while the applicant, Chua Che, allegedly used histrademark only since June 10, 1957.1äwphï1.ñët

(b) Oppositor's mark "X-7" is distinctive and his invented mark and not merely anordinary, common and weak mark.

(c) The oppositor and the applicant use the trademark "X-7" for allied and closely relatedproducts.

(d) The oppositor has spent a huge amount by way of advertising and advertising his "X-7" brand.

(e) The oppositor has spent a big amount in expanding his business for the manufacture

of toilet soap and crystal laundry soap with his already popular "X-7" brand.

(f) The trademark applied for by the applicant Chua Che consists of the trademark "X-7"and anyone is likely to be misled as to the source or origin by the close resemblance oridentity with the trademark "X-7" of the oppositor.

Attached to the Opposition were labels (samples) being used by oppositor on his products, which clearlyshow "X-7".

Petitioner herein presented an Answer to Notice of Opposition, claiming among others that the grounds of opposition are not correct, since although it is admitted that "X-7" is registered in the name of oppositor,said trademark is not being used on soap, but purely toilet articles. After the presentation of the Answer

the case was heard, wherein the parties presented their respective evidence, both testimonial anddocumentary. In the memoranda of the contenders, they limited the principal issues, thus —

Oppositor SY TUO —

The registration of the trademark "X-7" in the name of applicant CHUA CHE will likely misleadthe public so as to make them believe that said goods are manufactured or sponsored by or insome way in trade associated with opposer.

Applicant CHUA CHE —

In Inter Partes proceedings, the principal issue is "priority of adoption and use." Since opposer

has not yet used "X-7" mark on soap, but will still use it, applicant should be entitled to theregistration of the same.

The Director of Patents rendered judgment on January 18, 1961, the pertinent portions of which read:

Based on those facts there is no question that opposer's first use of the trademark X-7 on July 31,1953, is prior to applicant's first use of the mark on June 10, 1957. The only question then in thiscase is whether or not purchasers of X-7 perfume, lipstick and nail polish would likely upon



seeing X-7 laundry soap, attribute common origin to the products or assume that there existedsome kind of trade connection between applicant and opposer.

Opposer's record shows that he has been using since July 31, 1953 the trademark X-7 on perfume,lipstick and nail polish; that he has spent substantial amounts of money in building upon thegoodwill of this trademark through advertisements in all kinds of media — through newspapers

of general circulation, by means of billboards in various places in the Philippines, and also overthe radio and television. In these advertisements opposer has spent about P120,000.00. There isno question that opposer enjoys a valuable goodwill in the trademark X-7.

The products of the parties, while specifically different, are products intended for use in the homeand usually have common purchasers. Furthermore, the use of X-7 for laundry soap is but anatural expansion of business of the opposer. In fact, herein opposer in 1956, prior to the allegeddate of first use by respondent-applicant of the trademark X-7 for laundry soap on June 10, 1957,had made steps in expanding the use of this trademark to granulated soap. Under thesecircumstances, it is concluded that the average purchasers are likely to associate X-7 laundry soapwith X-7 perfume, lipstick and nail polish or to think that the products have common origin orsponsorship.

IN VIEW OF THE ABOVE FINDINGS, the opposition in this case should be as it is herebysustained and consequently Application Serial No. 6941, of Chua Che, is also hereby rejected.

OPPOSITION SUSTAINED

The above judgment is now before Us, applicant-appellant claiming that it was error for the Director toconclude that opposer SY TUO had priority to use the trademark in question, and that the use by appellantof the trademark "X-7" on granulated soap to be manufactured and sold by him, would likely misleadpurchasers.

At the very outset, we would like to state that in cases of the nature of the one at bar, only questions of law should be raised, and the only exception to this rule, meaning that findings of facts may be reviewed,is when such findings are not supported by substantial evidence (Sec. 2, Rule 44, Revised Rules). Thefinding of the Director of Patents Office to the effect that opposer-appellee Sy Tuo had priority of use andadoption of the trademark "X-7", is for all intents and purposes, one of fact. This being the case, suchfinding becomes conclusive to this Court. Even on this sole issue alone, the petition for review must fall.

However, there are other matters which must be clarified. For instance, the fact that appellee has not yetused the trademark "X-7" on granulated soap, the product on which appellant wants to use the saidtrademark. The circumstance of non-actual use of the mark on granulated soap by appellee, does notdetract from the fact that he has already a right to such a trademark and should, therefore, be protected.The observation of the Director of Patents to the effect that "the average purchasers are likely to associate

X-7 laundry soap with X-7 perfume, lipstick and nail polish or to think that the products have commonorigin or sponsorship," is indeed well taken. It has been pointed out by appellant that the product uponwhich the trademark X-7 will be used (laundry soap) is different from those of appellee's, and thereforeno infringement and/or confusion may result. We find no merit in the above contention, for it has beenheld that while it is no longer necessary to establish that the goods of the parties possess the samedescriptive properties, as previously required under the Trade Mark Act of 1905, registration of atrademark should be refused in cases where there is a likelihood of confusion, mistake, or deception, eventhough the goods fall into different categories. (Application of Sylvan Sweets Co., 205 F. 2nd, 207.) Theproducts of appellee are common household items nowadays, in the same manner as laundry soap. The



likelihood of purchasers to associate those products to a common origin is not far-fetched. Both from thestandpoint of priority of use and for the protection of the buying public and, of course, appellee's rights tothe trademark "X-7", it becomes manifest that the registration of said trademark in favor of applicant-appellant should be denied.

PREMISES CONSIDERED, the decision sought to be reviewed should be, as it is hereby affirmed in all

respects, with costs against appellant CHUA CHE in both instances.

Bengzon, C.J., Bautista Angelo, Reyes, J.B.L., Barrera, Dizon, Regala, Makalintal, Bengzon, J.P., and

Zaldivar, JJ., concur.

Concepcion, J., took no part.



EN BANC

G.R. No. L-19906 April 30, 1969

STERLING PRODUCTS INTERNATIONAL, INCORPORATED, plaintiff-appellant,vs.FARBENFABRIKEN BAYER AKTIENGESELLSCHAFT, and ALLIED MANUFACTURINGAND TRADING CO., INC., defendant-appellants.

SANCHEZ, J.:

In this, a case for trademark infringement and unfair competition, each of the principal suitors,namely, plaintiff Sterling Products International, Inc.,1 and defendant Farbenfabriken BayerAktiengesellschaft,2 seeks to exclude the other from use in the Philippines of the trademarks BAYER andBAYER CROSS IN CIRCLE. SPI asks this Court to strike down FBA's registration of BAYER CROSSIN CIRCLE covering industrial and agricultural products — insecticides and other chemicals, notmedicines — from the supplemental register. FBA, for its part, prays for the cancellation from theprincipal register of SPI's certificates of registration of the trademarks aforesaid for medicines.

Contending parties are doing business in the Philippines. SPI markets Bayer Aspirin, Aspirin forChildren and Cafiaspirina. The BAYER and BAYER CROSS IN CIRCLE are being used by SPI in the

Philippines only for said products —

Bayer Aspirin, Cafiaspirina and Bayer Aspirin for Children. On thecontainers (bottles or printed celophane strips, which, in turn, are placed in cardboard boxes) of BayerAspirin, Aspirin for Children and Cafiaspirina, SPI features the trademarks BAYER and BAYER CROSSIN CIRCLE. FBA thru Allied Manufacturing & Trading Co., Inc.3 distributes "Folidol" and otherindustrial and agricultural chemicals. FBA's "Folidol" (in steel or fiber drums or aluminum containers)displays a replica of SPI's trademark BAYER CROSS IN CIRCLE; on the tin cap and label of thecontainer.



The conflict apparent, suit followed.

The trial court declared itself "in favor of the solution that favors division of the market rather thanmonopoly." But to avoid confusion, it directed defendants "to add a distinctive word, or words in theirmark to indicate that their products come from Germany." The judgment below reads:

IN VIEW WHEREOF, both complaint and counterclaim are dismissed without costs; the Courtsustains plaintiff's right to use the Bayer trademark for its medicines, and defendants' right to use it forchemicals, insecticides, and other products not medicines, but the Court orders defendants to add adistinctive word or words in their mark to indicate that their products come from Germany.4

Both parties appealed: Plaintiff, insofar as the judgment "dismisses plaintiff's complaint andsustains defendants' right to use the BAYER trademark for their chemicals, insecticides, and otherproducts not medicines";5 and defendants, from the portions of the aforementioned decision particularlythose which dismiss the counterclaim of the defendants for the cancellation of the registrations by theplaintiff of the trademarks Bayer and Bayer Cross and which allow the plaintiff "to continue using theBayer trademarks for medicines."6

And now to the facts.

The word BAYER was the surname of Friedrich Bayer, a German, who, on August 1, 1868,organized a drug company bearing his name — Friedr Bayer et comp. — at Barmen, Germany. Thecompany was at first engaged in the manufacture and sale of chemicals. At about the year 1888 it startedto manufacture pharmaceutical preparations also. A change of name from Friedr Bayer to Farbenfabrikenvorm. Friedr. Bayer & Co. (FFB, for short) effective July 1, 1881 was followed in 1912 by a change of principal place of business from Elberfeld to Luverkusen, Germany.7 Its products came to be knownoutside Germany. With the discovery in 1899 of the Bayer Aspirin, the mark BAYER acquired prestige.The time was ripe to register the trademarks. The record, however, does not clearly show when the wordBAYER was registered as a trademark in Germany. The BAYER CROSS IN CIRCLE trademark wasregistered in Germany on January 6, 1904 — No. 65777.8 It was intended to be used on "medicines forhuman beings and animals, disinfectants preservatives, tar dyestuffs and chemical preparations for dyesand for photographic purposes."9 This registered trademark consists of the BAYER CROSS encircled bythe company's name Farbenfabriken vorm. Friedr. Bayer & Co. Elberfeld.

When the company was merged with other German companies in 1925 to form the I.G.Farbenindustrie, the name of the former company was deleted from the trademark and what remained wasthe present BAYER CROSS IN CIRCLE. A new registration was effected on June 17, 1929 in Germanyand for which it was issued a certificate with serial no. 404341. The trademark BAYER CROSS INCIRCLE was registered by FFB and its subsidiaries in other parts of the world, viz, in Norway, England,Denmark, and Argentina in 1904; in Japan and the United States in 1908; in Spain in 1911; in Peru in1913.

Sometime in 1895, FFB established a subsidiary in New York, United States. It was namedFarbenfabriken of Elberfeld Co. Its purpose was to sell FFB's products in the United States and Canada. Itwas this subsidiary that registered the trademarks BAYER and BAYER CROSS IN CIRCLE in theUnited States between the years 1907-1908.

Sometime in 1913, FFB organized another subsidiary — The Bayer Co., Inc. of New York. Thisnew subsidiary was authorized by FFB to negotiate for and acquire the trademarks, goodwill, assets andproperty of Farbenfabriken of Elberfeld Co. By an agreement dated June 12, 1913 (Exh. 106) Bayer of



New York purchased for the sum of US $750,000.00 Farbenfabriken of Elberfeld Co.'s "right for the salein the United States and Canada of the drugs, chemicals, pharmaceuticals and any and all other productsand articles manufactured and (or) controlled by Leverkusen" (FFB) and its "trademarks, good will andother assets and property."

On April 6, 1917,10 the United States declared war on Germany. Pursuant to the provisions of the

Trading with the Enemy Act, the Alien Property Custodian classified The Bayer Co., Inc. of New York asan enemy-controlled corporation. Hence, the Alien Property Custodian seized its assets about the earlypart of 1918. Between December 1918 and January 1919, all the assets of The Bayer Co., Inc. of NewYork were sold by the Alien Property Custodian to Sterling Drug, Inc. for the sum of US $5,310,000.00.The Bayer Co., Inc. of New York then became a subsidiary of Sterling Drug, Inc. Winthrop ChemicalCo., Inc. was later organized as a new subsidiary of Sterling Drug, Inc. to manufacture and sell thephysicians' drugs which had been acquired" by the purchase of the Bayer Co., Inc. Winthrop's operationwas evidently hampered because 'the Germans had kept manufacturing processes secret, so that themanufacture of physicians' drugs on a commercial scale became an almost insoluble problem.11

Sterling Drug, Inc. secured registrations of the BAYER trademarks in different countries of theworld.12

It would appear that the trademark BAYER for medicines was known in the Philippines about theclose of the 19th century. This appears on page 88 of the Revista Farmaceutica de Filipinos Año I,Numero 7, 3 de Julio de 1893. Before World War I, BAYER products entering the Philippines came fromGermany.

In 1922, a worldwide conflict of interests occurred between Farbenfabriken vorm. Friedrich Bayer& Co. and The Bayer Co., Inc. of New York, in reference to the trademarks BAYER and BAYERCROSS IN CIRCLE as they were applied to various products.

Two agreements resolved this conflict, both executed on April 9, 1923 in London, England: one,between FFB and Winthrop Chemical Co., Inc. (Exh. 66), and the other between FFB and Bayer NewYork (Exh. WWW). Under the terms of the agreement with Winthrop Chemical Co., Inc., FFB stipulated,amongst others: (1) not to contest anymore Winthrop's right over the trademarks BAYER and BAYERCROSS IN CIRCLE; (2) to discontinue the use of said trademarks in the United States which wasunderstood to include the Philippines under par. 16 of said agreement; and (3) to disclose all secrets of other processes relating to the manufacture of pharmaceuticals.

Paragraph 26 of the FFB — Bayer New York agreement reads —

26. NEW YORK (The Bayer Company, Inc. of New York) agree that they will not sell or offer forsale any goods other than hereunder or those they may market for Winthrop as hereinbefore provided andother than Aspirin and compounds of Aspirin which New York shall continue to market for their own

account in the United States of America, Puerto Rico, the Philippines and Hawaiian Islands and thePanama Zone.13

In 1925, Farbenfabriken vorm. Friedrich Bayer & Co. became I.G. Farbenindustrie, AG. Thisnecessitated a new agreement incorporating Exh. 66 with modifications. Said new agreement was signedon November 15, 1926 between I.G. Farbenindustrie and Winthrop.

On September 5, 1941, in the anti-trust suits against Sterling Drug, Inc., Winthrop Chemicals Co.and The Bayer Co., of New York, two consent decrees [Exh. 68 (No. 15-363) and Exh. 69: (No. 15-364)]



were promulgated by the U.S. District Court for Southern New York. Said consent decrees declared theApril 9 1923, cartel agreements violative of the U.S. anti-trust laws. One reason given is that the Germancompany, FFB (later I.G. Farbenindustrie) — FBA's predecessors — was excluded from the U.S.pharmaceutical market. The sentence, however, contains a saving clause, thus —

The Bayer contract of 1923, the Bayer contract of 1926, and any and all amendments or

supplements thereto are declared and adjudged to be unlawful under the Anti-Trust Laws of the UnitedStates, and the defendants Bayer and Sterling, and their respective successors an subsidiaries, or any of them, be and they are hereby enjoined and restrained from carrying out or enforcing any of the aforesaidcontracts, or any supplements, amendments or modifications thereof, or from paying to I.G. Farben, itssubsidiaries, successors, or assigns, any royalties or share of profits pursuant to said contracts with respectto sales following the effective date of this decree.

Provided, however, that nothing herein contained in this Sec. III shall:lawphi1.nêt

x x x x x x x x x

Affect in any way the rights or title of the defendant Bayer, its successors, subsidiaries or assigns,in or to the name "Bayer" and the "Bayer Cross" mark or registrations thereof, or

Affect or diminish any right, title or interest of said defendants, their successor subsidiaries orassigns, in or to or under any heretofore acquired and presently existing patents, patent applications,patent licenses, trade-marks, trade-names (such as the name "Bayer" and the "Bayer Cross" mark andregistrations thereof), processes or formulae relating to the manufacturing, processing, use or sale of aspirin, aspirin compounds, pharmaceutical or other drug or chemical products, or impair any rights orremedies of said defendants, their successors, subsidiaries or assigns, provided by statute or convention,and by suits for damages, injunction or other remedy with respect to any such patents, patent applications,patent licenses or trademarks....14

Meanwhile, in 1935, plaintiff Sterling Products International, Inc. (SPI) a Delaware corporation, asubsidiary of Sterling Drug, Inc. of New York, was issued a license to do business in thePhilippines.15 The trademarks BAYER and BAYER CROSS IN CIRCLE were then registered in thePhilippines under the old Trademark Law (Act 666) by The Bayer Co., Inc.; the BAYER CROSS INCIRCLE trademark on April 18, 1939 for which it was issued Certificate of Registration No. 13081; theBAYER trademark on April 22, 1939 for which it was issued Registration Certificate No. 13089. Thesetrademark rights were assigned to SPI on December 30, 1942 and the assignment was recorded in thePhilippines Patent Office on March 5, 1947. With the passage of Republic Act 166 repealing the oldTrademark Law (Act 666), SPI was issued by the Philippines Patent Office on June 18, 1948 two newcertificates of registration: No. 1260-S for BAYER CROSS IN CIRCLE; No. 1262-S for BAYER. Theregistration of these trademarks was only for "Medicines".

Came World War II. I.G. Farbenindustrie AG. was seized by the allied powers. In 1945, afterWorld War II, I.G. Farbenindustrie AG. was decartelized by the Allied High Commission. The unitknown as Farbenfabriken Bayer was transferred in 1953 to Farbenfabriken Bayer Aktiengesellschaft(FBA), one of the defendants in this case, which was organized in 1951.

Sometime in 1958, defendant Allied Manufacturing & Trading Co., Inc. (AMATCO) started sellingFBA's products especially "Folidol" a chemical insecticide which bears the BAYER CROSS IN CIRCLEtrademark.16



On November 18, 1959, FBA applied for the registration of the BAYER CROSS IN CIRCLEtrademark with the Philippines Patent Office for animal and plant destroying agents. The examiner'sreport dated December 17, 1959 stated that the subject mark appears to be similar to SPI's registeredBAYER trademarks as covered by Certificates of Registration Nos. 1260-S and 1262-S. He concludedthat "[r]egistration of applicant's mark is proscribed by Section 4-d of the Statute because it would causeconfusion or mistake or [to] deceive purchasers."17 This action of the Philippines Patent Office drew a

reply from FBA. In its letter dated February 1, 1960 applicant FBA, thru counsel, said that it "offers noquestion or objection to the assertion of the Examiner that the registrant's mark and that of the applicantare similar to each other. It emphasized the fact that it was seeking registration in the SupplementalRegister. Its concluding statement runs thus:.

Being aware of the duties and obligations of a trademark user in the Philippines and the penaltiesprovided for in the pertinent law on tradermarks and being aware also that Supplemental Registration isnot a prima facie evidence of ownership of mark but merely a recordation of the use as in fact the mark isactually being used by the applicant in the Philippines, it is respectfully urged that this [application] begiven due course.18

On February 25, 1960, FBA was issued a certificate of registration in the Supplemental Register,

SR-304.

We now grapple with the problems raised in the separate appeals.

1. A rule widely accepted and firmly entrenched because it has come down through the years is thatactual use in commerce or business is a prerequisite to the acquisition of the right of ownership over atrademark. This rule is spelled out in our. Trademark Law thus:

SEC. 2-A. Ownership of trade-marks, trademark names and service-mark; how acquired. — Anyone who lawfully produces or deals in merchandise of any kind or who engages in any lawfulbusiness, or who renders any lawful service in commerce, by actual use thereof in manufacture or trade,in business, and in the service rendered, may appropriate to his, exclusive use a trademark, a trade-name,or a service-mark not so appropriated by another, to distinguish his merchandise, business, or servicefrom the merchandise, business or service of others. The ownership or possession of a trademark, trade-name, service mark, heretofore or hereafter appropriated, as in this section provided, shall be recognizedand protected in the same manner and to the same extent as are other property rights known to the law.(As inserted by Section 1 of Republic Act 638)

It would seem quite clear that adoption alone of a trademark would not give exclusive right thereto.Such right grows out of their actual use."19 Adoption is not use. One may make advertisements, issuecirculars, give out price lists on certain goods; but these alone would not give exclusive right of use. Fortrademark is a creation of use. The underlying reason for all these is that Purchasers have come tounderstand the mark as indicating the origin of the wares.20 Flowing from this is the trader's right toprotection in the trade he has built up and the goodwill he has accumulated from use of the trademark.Registration of a trademark, of course, has value: it is an administrative act declaratory of a pre-existingright. Registration does not, however, perfect a trademark right.

The BAYER trademarks registered in the Philippines to which plaintiff SPI may lay claim, ascorrectly stated in the decision below, are those which cover medicines only. For, it was on said goodsthat the BAYER trademarks were actually used by it in the Philippines. Therefore, the certificates of registration for medicines issued by the Director of Patents upon which the protection is enjoyed are onlyfor medicines. Nothing in those certificates recited would include chemical or insecticides.



But plaintiff insists that the statement of the applicant (The Bayer Co., Inc.) in its registrations of the BAYER marks states that "the merchandise for which the trademark is appropriated is d. — Chemicals, Medicines and Pharmaceutical Preparations." Plaintiff's position is that such statementdetermines the goods for which said marks had been registered. Validity does not attach to thisproposition. First, the statement itself admits that "the particular description of the articles comprised insaid class (d) on which the trademark is used is Medicines."21 It is not used for chemicals.

Then, Section 11 of the Trademark Law requires that the certificate of registration state "the

particular goods . . . for which it is registered." This is controlling. Under Section 11 aforesaid, likewiseto be entered in the certificate of registration is "the date of the first use in commerce or business. SPImay not claim "first use" of the trademarks prior to the registrations thereof on any product other thanmedicines.

Besides, Section 7 of the same Trademark Act directs that upon the filing of the application and thepayment of the required fee, the "Director [of Patents] shall cause an examination of the application" — for registration of the trademark — "to be made, and, if on such examination it shall appear that theapplicant is entitled to registration, the Director . . . shall cause the mark . . . to be published in theOfficial Gazette." This examination, it would seem to us, is necessary in order that the Director of Patents

may be satisfied that the application conforms to the requirement of actual use in commerce of thetrademark in Section 2 and 2-A of the Trademark Law; and that the statement in said application — as tothe "first use" thereof and "the goods . . . in connection with which the mark . . . is used" (Section 5) — istrue.

Really, if the certificate of registration were to be deemed as including goods not specified therein,then a situation may arise whereby an applicant may be tempted to register a trademark on any and allgoods which his mind may conceive even if he had never intended to use the trademark for the saidgoods. We believe that such omnibus registration is not contemplated by our Trademark Law.

Because of this and of the fact that the Bayer trademarks were never used in the Philippines byplaintiff except for medicines — Aspirin, Aspirin for Children and Cafiaspirina — we find ourselvesunwilling to draw a hard and fast rule which would absolutely and under all circumstances giveunqualified protection to plaintiff against the use of said trademarks by all others on goods other thanmedicines.

2. Neither will the 1927 registration in the United States of the BAYER trademark for insecticidesserve plaintiff any. The United States is not the Philippines. Registration in the United States is notregistration in the Philippines. At the time of the United States registration in 1927, we had our ownTrademark Law, Act No. 666 aforesaid of the Philippine Commission, which provided for registrationhere of trademarks owned by persons domiciled in the United States.

What is to be secured from unfair competition in a given territory is the trade which one has in thatparticular territory. There is where his business is carried on; where the goodwill symbolized by thetrademark has immediate value; where the infringer may profit by infringement.

There is nothing new in what we now say. Plaintiff itself concedes 22 that the principle of territoriality of the Trademark Law has been recognized in the Philippines, citing Ingenohl vs. Walter E.Olsen, 71 L. ed. 762. As Callmann puts it, the law of trademarks "rests upon the doctrine of nationality orterritoriality."23



Accordingly, the 1927 registration in the United States of the BAYER trademark would not of itself afford plaintiff protection for the use by defendants in the Philippines of the same trademark for the sameor different products.

3. A question basic in the field of trademarks and unfair competition is the extent to which aregistrant of a trademark covering one product may invoke the right to protection against the use by

other(s) of the same trademark to identify merchandise different from those for which the trademark hasbeen appropriated.

Plaintiff's trenchant claim is that it should not be turned away because its case comes within theprotection of the confusion of origin rule. Callmann notes two types of confusion. The first isthe confusion of goods "in which event the ordinarily prudent purchaser would be induced to purchaseone product in the belief that he was purchasing the other." In which case, "defendant's goods are thenbought as the plaintiff's, and the poorer quality of the former reflects adversely on the plaintiff'sreputation." The other is the confusion of business: "Here though the goods of the parties are different, thedefendant's product is such as might reasonably be assumed to originate with the plaintiff, and the publicwould then be deceived either into that belief or into the belief that there is some connection between theplaintiff and defendant which, in fact, does not exist."24

A judicial test giving the scope of the rule of confusion of origin is Ang vs. Teodoro (December 14,1942), 74 Phil. 50. Briefly, the facts of the just cited case are as follows: Toribio Teodoro, at first inpartnership with Juan Katindig and later as sole proprietor, had continuously used "Ang Tibay" both astrademark and as tradename in the manufacture and sale of slippers, shoes and indoor baseballs since1910. He formally registered it as a trademark on September 29, 1915 and as a tradename on January 3,1933. Ana L. Ang registered the same trademark "Ang Tibay" for pants and shirts on April 11, 1932 andestablished a factory for the manufacture of said articles in 1937. Suit was lodged by Teodoro against Angto cancel the latter's registration of the trademark "Ang Tibay" and to perpetually enjoin her from usingthe said trademark on goods manufactured and sold by her. The judgment of the trial court absolveddefendant (Ana L. Ang) from the complaint with costs against the plaintiff. The Court of Appealsreversed. On appeal by certiorari, we affirmed the judgment of the Court of Appeals. We there said:

"In the present state of development of the law on Trade-Marks, Unfair Competition, and UnfairTrading, the test employed by the courts to determine whether noncompeting goods are or are not of thesame class is confusion as to the origin of the goods of the second user. Although two noncompeting

articles may be classified under two different classes by the Patent Office because they are deemed not topossess the same descriptive properties, they would, nevertheless, be held by the courts to belong to thesame class if the simultaneous use on them of identical or closely similar trademarks would be likely tocause confusion as to the origin, or personal source, of the second user's goods. They would be consideredas not falling under the same class only if they are so dissimilar or so foreign to each other as to make itunlikely that the purchaser would think the first user made the second user's goods.

Such construction of the law is induced by cogent reasons of equity and fair dealing. The courtshave come to realize that there can be unfair competition or unfair trading even if the goods arenoncompeting, and that such unfair trading can cause injury or damage to the first user of a giventrademark, first, by prevention of the natural expansion of his business and, second, by having hisbusiness reputation confused with and put at the mercy of the second user. When noncompetitive productsare sold under the mark, the gradual whittling away or dispersion of the identity and hold upon the publicmind of the mark created by its first user, inevitably results. The original owner is entitled to thepreservation of the vauable link between him and the public that has been created by his ingenuity and themerit of his wares or services. Experience has demonstrated that when a well-known trademark is adopted



by another even for a totally different class of goods, it is done to get the benefit of the reputation andadvertisements of the originator of said mark, to convey to the public a false impression of some supposedconnection between the manufacturer of the article sold under the original mark and the new articlesbeing tendered to the public under the same or similar mark. As trade has developed and commercialchanges have come about, the law of unfair competition has expanded to keep pace with the times and theelement of strict competition in itself has ceased to be the determining factor. The owner of a trademark

or trade-name has a property right in which he is entitled to protection, since there is damage to him fromconfusion of reputation or goodwill in the mind of the public as well as from confusion of goods. Themodern trend is to give emphasis to the unfairness of the acts and to classify and treat the issue as afraud.25

The thoughts expressed in Ang Tibay command respect Conduct of business should conform toethical business standards. Unfairness is proscribed. The invocation of equity is bottomed upon theinjunction that no one should "reap where he has not sown."26

Nonetheless, "[i]t has been emphasized that each case presents a unique problem which must beanswered by weighing the conflicting interests of the litigants."27 With this in mind, we are convinced thatthe case before us is not to be analogized with Ang Tibay. The factual setting is different. His Honor,

Judge Magno S. Gatmaitan (now Associate Justice of the Court of Appeals), the trial judge, so found. Hereached a conclusion likewise different. And the reasons, so well stated by His Honor, are these:

1st). — It was not plaintiff's predecessor but defendant's namely Farbenfabriken or BayerGermany that first introduced the medical products into the Philippine market and household withthe Bayer mark half a century ago; this is what the Court gathers from the testimony of Frederick Umbreit and this is the implication even of Exhs. 48, 49, 66 and as already shown a few pagesback;28

2nd). — There is thus reason plausible enough for defendant' plea that as Sterling was not the"originator" of the Bayer mark, the rule in Ang vs. Teodoro, supra, is not applicable; and this iscorrect notwithstanding Exhs. 106 and 63 and even giving unto these documents full force andvirtue, because purchase of the assets of Elberfeld, defendants' previous affiliate in New York, byBayer of New York, even if that were to be held to include purchase of the Bayer mark, did notmake the purchaser Bayer of New York the originator of the mark; especially since Bayer of NewYork was only another subsidiary of Bayer Germany or Farbenfabriken which was the realoriginator;

3rd). — The Court is also impelled to believe that the evidence establishes that among thecommon people of the Philippines the "Bayer" medicines come from Germany; this the Courtdeduces from the testimony of witness Florisa Pestano who only reproduced the belief of hergrandmother; the Court might as well say that plaintiff itself has not discouraged that belief because the drug and its literature that came from the plaintiff and its affiliate would show that itrepresented its medicines to have come from defendant29 and were manufactured in Germanywith that Bayer mark; thus Exh. 7030 which is the price list of 1928 of Botica de Sta. Cruz onpage 6 indicates that Winthrop Chemical Company of New York, — plaintiff's subsidiary — wasa distributor of I.G. Farbenindustrie, A.G. Leverkusen Germany; Exh. 80 31 which is a medicaldiary published by Winthrop for 1934 on page 148 manifested that the journal, "PracticalTherapeutics" was published by I.G. Farbenindustrie Aktiengesellachaft for Winthrop ChemicalCompany, Inc.; "with particular reference to the pharmacological products, sera and vaccinesoriginated and prepared in the laboratories of the I.G. Farbenindustrie A.G."; and Exh. 79 a, b, c,d and e which are prospectuses for the medicines, Mitigal, Afridol, Aspirins, Novalgina and My-



Salvarsan32 showed that these products were manufactured for Winthrop by I.G. Farbenindustrie;and then Exh. 81 the Revista Boie of 1928 would show that Winthrop represented itself as thedistributor of the products of Bayer of Germany otherwise known as I.G. Farbenindustrie, "segunla alta calidad de la marca original";33 the Court being also impelled to add in this connection thatit has to take judicial notice of a belief of long standing common among the people in thePhilippines that German products are of very high quality and it is only natural for a distributor or

a retailer to take advantage of that, and as it is not debated that "Bayer" is a German surname,(see plaintiff's rebuttal Exh. QQQQ, see also p. 7 plaintiff's reply memorandum wherein it is saidthat this surname is a "pretty common one among members of the Germany race") it is all so veryeasy to associate the Bayer trademark with products that come from Germany and to believe thatthey are of high quality;

4th). — The rationale of the doctrine in Ang vs. Teodoro, supra being that:

The Courts have come to realize that there can be unfair competition or unfair trading even if thegoods are non-competing, and that such unfair trading can cause injury or damage to the first user of agiven trade mark, first, by prevention of the natural expansion of his business, and second, by having hisbusiness reputation confused with and put at the mercy of the second user. 74 Phil. 55-56;

and the Court having found out that the 'first user' was Bayer Germany and it was this that had builtup the Bayer mark and plaintiff apparently having itself encouraged that belief even after it had acquiredthe Bayer mark in America, thru forced sale, of defendant's subsidiary there in 1918, Exhs. 79, 80, 81, toapply the Ang Tibay rule in the manner advocated by Sterling would, the Court fears, produce the reverseresult and the consequence would be not equity but injustice.34

It would seem to us that the fact that plaintiff rode on the German reputation in the Bayer trademark has diluted the rationally of its exclusionary claim. Not that the free ride in the name of defendant'sGerman predecessor was sporadic. It is continuing. Proof of this is the label on the box used by plaintiff (Exhibit U) in the distribution of Bayer Aspirin. This box bears prominently on the front part the legend"Genuine" in red color and two arrows: the first pointing to BAYER CROSS IN CIRCLE, and thesecond, to BAYER Aspirin. At the back thereof in big letters are the words "BAYER ASPIRIN",followed in small letters "Used since 1900" and down below the small words "Mfd. in the Phil. byWinthrop Stearns, Inc. for STERLING PRODUCTS INTERNATIONAL, INCORPORATED." Inplaintiff's prospectus (Exhibit 1) found in the box of Bayer Aspirin tablets, children's size, there is thesignificant statement: "GENUINE BAYER — Each Children's Size Bayer Aspirin tablet is stamped withthe Bayer Cross, the trademark of the genuine Bayer product. This means that your child is getting thesame gentle-to-the-system Bayer Aspirin that has been used for over 50 years by millions of normalpeople without ill effect."

With the background of prior use in the Philippines of the word BAYER by FBA's Germanpredecessor and the prior representations that plaintiff's medicines sold in the Philippines weremanufactured in Germany, the facts just recited hammer on the mind of the public that the Aspirin.Cafiaspirina and Aspirin for Children being marketed for plaintiff in the Philippines come from the samesource — the German source — and in use since 1900. That this view is far from far-fetched, is illustratedby the testimony of plaintiff's own witness, Dr. Antonio Vasquez, viz:

Q. Have you ever heard of a pharmaceutical company of Bayer of Germany, or a company inGermany named Bayer?

A. Yes, sir.



Q. Since when have you heard of this pharmaceutical company in Germany with the name Bayer,since when have you heard of that?

A. I have always taken the name Bayer as associated with Winthrop & Stearns.

Q. But, you said a while ago....

Witness.

.... Yes .....

x x x x x x x x x

Q. ... that you have heard of a pharmaceutical company with the name of Bayer in Germany?

A. Yes, sir.

Q. Do you know if this Winthrop & Stearns you mentioned has ever been connected with BayerCompany of Germany?

A. I have always understood that they were distributing drugs of Bayer & Company.35

4. The Ang Tibay doctrine, we believe, is not to be read as shunting aside the time-honoredteaching that he who comes into equity must do so with clean hands.36 Plaintiff cannot now say that thepresent worth of its BAYER trademarks it owes solely to its own efforts; it is not insulated from thecharge that as it marketed its medicines it did so with an eye to the goodwill as to quality that defendants'predecessor had established.

There is no whittling away of the identity of plaintiff's trademarks. Plaintiff is not the first user

thereof in the Philippines. The trademarks do not necessarily link plaintiff with the public. Plaintiff mustshow injury; it has not. On the contrary, representations as to the place of manufacture of plaintiff'smedicines were untrue, misleading. Plaintiff could still be tagged with the same deception "which (it)complains of in the defendant(s)."37 Appropriate it is to recall here our observation in the Ang Tibayopinion, viz: "On our part may we add, without meaning to be harsh, that a self-respecting person doesnot remain in the shelter of another but builds one of his own."38

Plaintiff, the owner in this country of the trademarks BAYER for medicines, has thus forfeited itsright to protection from the use of the same trademarks by defendants for products different therefrom — insecticides and other chemicals.

5. But defendants ask us to delist plaintiff's BAYER trademarks for medicines from the Principal

Register, claiming right thereto for said use. Said trademarks had been registered since 1939 by plaintiff'spredecessor. The Bayer Co., Inc.

Defendants' claim is stale; it suffers from the defect of non-use.39 While it is conceded that FBA'spredecessors first introduced medical products with the BAYER trademarks in the Philippine market, it isequally true that, after World War I, no definite evidence there is that defendants or their professorstraded in the Philippines in medicines with the BAYER trademarks thereafter. FBA did not seasonablyvoice its objection. Lack of protest thereto connoted acquiescence. And this; notwithstanding the fact that



the 1923 and 1926 agreements were set aside in the anti-trust suits. Defendants did use the marks; but itwas much later, i.e., in 1958 — and on chemicals and insecticides — not on medicines. FBA onlybestirred itself and challenged plaintiff's right to the trademarks on medicines when this suit was filed.Vigilantibus non dormientibus equitas subvenit.40

The net result is that, as the trial court aptly observed, plaintiff may hold on to its BAYER

trademarks for medicines. And defendants may continue using the same trademarks for insecticides andother chemicals, not medicines.

6. Defendants balk at the ruling below which directs them "to add a distinctive word or words intheir mark to indicate that their products come from Germany."41

We are left under no doubt as to the reasonableness of the formula thus fashioned. It avoids themischief of confusion of origin — defendant FBA's product would not be mistaken for those of plaintiff.It reduces friction. We perceive of no prejudice to defendants. The order does not visit defendant FBAwith reprobation or condemnation. Rather, said defendant would be enhancing the value of and would besponsoring its own products. Anyway, a statement that its products come from Germany is but astatement of fact.

FOR THE REASONS GIVEN, the judgment under review is hereby affirmed. No costs. Soordered.

Concepcion, C.J., Reyes, J.B.L., Dizon, Makalintal, Zaldivar, Fernando, Capistrano, Teehankee and

Barredo, JJ., concur.

Castro, J., is on leave.



FIRST DIVISION

G.R. No. L-24075 January 31, 1974

CRISANTA Y. GABRIEL, petitioner,vs.DR. JOSE R. PEREZ and HONORABLE TIBURCIO EVALLE as Director of

Patents, respondents.

Paredes, Poblador, Cruz and Nazareno for petitioner.

Jesus I. Santos for respondent Dr. Jose R. Perez.

Office of the Solicitor General Antonio P. Barredo, Assistant Solicitor General Antonio G. Ibarra and

Solicitor Alicia V. Sempio-Diy for respondent Director of Patents.



MAKASIAR, J.:1äwphï1.ñët

Petition for review of the decision dated July 18, 1964 of the respondent Director of Patents denying

the petition of herein petitioner Crisanta Y. Gabriel to cancel and revoke certificate of registration

No. SR-389 covering the trademark "WONDER" used on beauty soap issued on May 11, 1961 to

herein private respondent Dr. Jose R. Perez..

On October 19, 1962, petitioner Crisanta Y. Gabriel filed with the Patent Office a petition for

cancellation of the trademark "WONDER from the supplemental register alleging that the

registrant was not entitled to register the said trademark at the time of his application for

registration; that the trademark was not used and has not been actually used by registrant at the

time he applied for its registration; that it was thru fraud and misrepresentation that the

registration was procured by the registrant; and that it was she who has been actually using the

said trademark since March, 1959, and as such is the rightful and recognized owner thereof and

therefore entitled to its registration. In support of her petition, she further alleged the written

contract between her and the registrant (respondent) wherein, according to her, the latter has

recognized her right of use and ownership of said trademark; and that the labels submitted by the

registrant are the very containers bearing the trademark "WONDER" which are owned by herand which she has been exclusively and continuously using in commerce (pp. 24-25, Vol. I, rec.).

Respondent Dr. Jose R. Perez, in due time, duly filed his answer denying each and every ground for

cancellation alleged in the said petition, and further averring that there is pending in the Court of

First Instance of Bulacan a civil case (No. 2422) for unfair competition with injunction and

damages filed by him against herein petitioner involving the manufacture of beauty soap and the

use of the trademark "WONDER"; that a writ of preliminary injunction has been issued on

September 7, 1961 by the said court against herein petitioner restraining her "from making,

manufacturing and producing 'Wonder Bleaching Beauty Soap' with the same labels and chemical

ingredients as those of the plaintiff, and from advertising, selling and distributing the same

products"; and that no right of petitioner had been violated and therefore no cause of action exists

in favor of petitioner (pp. 28-32, Vol. I, rec.).

Issues having been joined, the case was heard and thereafter, respondent Director of Patents

rendered his decision denying the petition to cancel the certificate of registration (pp. 139-150, Vol.

1, rec.).

Petitioner filed a motion for reconsideration on the ground that the decision is contrary to law and

the evidence; but the same was denied on January 15, 1965 by respondent Director of Patents for

lack of merit (p. 158, Vol. rec.).

Hence, this petition for review filed on January 28, 1965 by herein petitioner (pp. 1-5, Vol. IV, rec.).Respondents were required to answer the same, and respondent Director Tiburcio Evalle filed his

answer on August 6, 1965 (pp. 29-32, Vol. IV, rec.). Private respondent Dr. Jose R. Perez did not

file an answer. Thereafter, both parties were required to file their respective briefs and petitioner

filed one on September 28, 1965 (p. 38, Vol. IV, rec.), while respondent Director Evalle filed his

brief on February 23, 1966 (p. 53, Vol. IV, rec.). Again, private respondent Perez did not file a brief

as his counsel's motion for an extension of time within which to file one was denied by this Court

for being late (pp. 41-42, Vol. IV, rec.). Consequently, the case was submitted for decision on May

22, 1966.



On May 22, 1973, counsel for private respondent filed a motion for the early resolution of the case

alleging among others that "respondent Dr. Jose R. Perez had died already and still Crisanta Y.

Gabriel, the petitioner in this case, has been continuously harassing the rights of the late Dr. Jose R.Perez as far as the ownership and use of the trademark are concerned." (Pp. 59-61, Vol. IV, rec.)

[ No motion been filed for substitution of the heirs in lieu of the deceased private respondent.]

By way of factual background, herein private respondent Dr. Jose R. Perez filed with the PatentsOffice on February 23, 1961 an application for registration of the trademark "WONDER" in the

Supplemental Register. After due and proper proceedings, the said petition was approved and the

trademark "WONDER" was registered, as prayed for, in the Supplemental Register. Thereafter,

Certificate of Registration No. SR-389 was issued to and in the name of herein private respondent

Dr. Jose R. Perez. Said trademark "WONDER" is used by said private respondent on bleaching

beauty soap (Medicated and Special) which under the Official Classification of Merchandise (Rule

82) of the Board of Patents falls under Class 51. Private respondent Dr. Perez, in his petition for

registration, claimed March 10, 1953 as the date of first use of said trademark and August 1, 1953

as the date of first use of said trademark in commerce in the Philippines (see pp. 1-7, Vol. I, rec.).

Petitioner Crisanta Y. Gabriel on the other hand, earlier filed on October 3, 1960 with the Patent

Office a petition to register the same trademark "WONDER" and claimed March 7, 1959 as thedate of first use of said trademark in commerce. Said petition was dismissed on November 18, 1960

by the Patents Office (thru its examiner) on the ground that said petitioner was not the owner of thetrademark sought to be registered, informing at the same time petitioner that "as shown on the

labels submitted, it appear that Dr. Jose R. Perez is the owner of the present mark ... ."

Subsequently, on March 23, 1961, the said application was considered abandoned under Rules 97

and 98 of the Revised Rules of Practice in Trademark Cases for failure of petitioner to comply with

Rule 93 of the same Revised Rules (see p. 8, Vol. I, rec.; pp. 79-86, Vol. III, rec.). Later, said

applicant was revived, but further consideration thereof was suspended by the Patents Office until

final determination of the present case wondering that the matter of ownership of the trademark

"WONDER" is in dispute (see p. 9, Vol. I, rec.).

The main facts of this case as substantially supported by the evidence on record, are related byrespondent Director of Patents in the decision now under review, thus:

... Way back in 1953, the Respondent who claims to be a medical researcher and

manufacturer, was experimenting on the creation of a beauty soap. Having

discovered a workable formula he applied from the Bureau of Health for the

issuance of a Certificate of Label Approval and on June 6, 1958 he was issued such

certificate. It covers a beauty soap for bleaching, which whitens or sometimes

softens the skin. (t.s.n., p. 48, Aug. 27, 1963). This certificate (Exh. "5") particularly

describes and mentions "Dr. Perez" Wonder Beauty Soap. He continued

experimenting until he was able to discover an improved soap formula which he

claims that aside from bleaching or whitening the skin it also allegedly removes

pimples, freckles, dandruff, scabies, itching, head lice(s), rashes, falling of hair, and

shallow wrinkles (t.s.n. p. 49, Aug. 27, 1963). For such product he obtained another

certificate of label approval from the Bureau of Health on August 10, 1959 (Exh.

"6"). This document also particularly describes "Dr. Perez Wonder Beauty Soap

(Improved Formula)."

In January, 1959 he made an agreement with a certain company named

"Manserco" for the distribution of his soap. It was then being managed by Mariano



S. Yangga who happens to be the brother of the Petitioner Crisanta Y. Gabriel

(t.s.n., pp. 3-4, Aug. 27, 1963). This was corroborated by Mr. August Cesar Espiritu

who testified in favor of the Respondent. Mr. Espiritu claims to be the organizer andone of the incorporators of "Manserco," although really no document of its

corporate existence was introduced as evidence in this case (t.s.n., pp. 55-57, Sept.

23, 1963). However, this fact had never been disputed by the Petitioner.

Because the corporation was allegedly going bankrupt and the members were

deserting, the Respondent terminated the agreement in July, 1959, and thereafter he

asked the Petitioner to become the distributor of his products (t.s.n., pp. 4-5, Aug.

27, 1963) and on September 1, 1959, a contract of "Exclusive Distributorship" was

executed between the Petitioner and the Respondent. (Exh. "7"; "F-l" to "F-2".)

The agreement is hereunder reproduced, to wit:

EXCLUSIVE DISTRIBUTORSHIP AGREEMENT

KNOW ALL MEN BY THESE PRESENT:

THIS AGREEMENT made and executed by and between DR. JOSE

R. PEREZ, Filipino, of legal age, a resident of Sta. Maria, Bulacan,

now and hereinafter called the Party of the First Part,

AND

CRISANTA Y. GABRIEL, likewise Filipino, of legal age, a resident

of 1558 Camarines St., Manila, now and hereinafter called the Party

of the Second Part,

W I T N E S S E T H

1. That the Party of the First Part hereby agrees and binds himself to

make the Party of the Second Part the sole and exclusive distributor

of his product called and popularly known as "Dr. Perez" Wonder

Medicated Beauty Soap' for the whole Philippines for a period of

five (5) years from date of perfection of this agreement, renewable

for another five (5) years at the mutual agreement of both parties;

2. That the Party of the First Part hereby agrees to sell to the Party

of the Second Part the abovementioned merchandise at the rate of

sixty (P.60) centavos a piece which shall have a minimum weight of

eighty (80) grams; PROVIDED however that said price may be

subject to change in cases of deflation and inflation of the peso;

3. That the Party of the First Part hereby binds himself to make

delivery of the merchandise under contract at 1558 Camarines St.,

Manila, the cost of the same being for the account of the former;

4. That the Party of the First Part hereby agrees to extend to the

Party of the Second Part a credit line of TWO THOUSAND

(P2,000.00) PESOS with accounts due and payable on the 5th and



20th of each month with a maximum of sixty days from date of

receipt of the merchandise by the Party of the Second Part;

5. That the Party of the First Part guarantees the production of the

full quantity of Dr. Perez Wonder Medicated Beauty Soap that the

Party of the Second Part could sell and distribute; with the latter

giving the former a written notice of the same;

6. That the Party of the Second Part has the exclusive right of

ownership of the packages and that said party is responsible for the

costs as well as the design and the manner of packing the same;

7. That the Party of the First Part hereby binds himself not to give or

sell to any person or entity the same product or any similar product

or products of the same name during the term and duration of this

contract;

8. That this contract is binding upon the administrator, heirs andassigns of both parties during the term and duration of this

agreement;

9. That this contract will take effect upon the signing thereof.

IN WITNESS WHEREOF, the parties and their witnesses have

hereunder set their hands at Manila this 1st day of September, 1959.

(See pp. 11-13, Vol. IV, rec.).

At this juncture, mention should be made of the Petitioner's commercial

background, as it appears in the record. Her documentary exhibits show that she

was registered as a bona fide Filipino retailer as of April 8, 1958 (Exh. "C"); thatshe was doing business under the name "Gabriel Grocery and Cold Store" as of

March 20, 1958 (Exh. "A"); and that on September 24, 1959 she obtained another

certificate of registration for the firm name "Wonder Commercial Co., Inc.," she

being the Manager thereof (Exh. "B"). (Pp. 10-13, Vol. IV, rec.).

Respondent Director of Patents set forth the evidence of the petitioner as follows:

From the evidence presented by her, she endeavors to prove that even before the

execution of the agreement (Exh "F-1") or particularly on March 11, 1959 she hired

the services of Eriberto Flores (t.s.n., pp. 43-52, May 23, 1963) who allegedly

designed the packages for which she paid him the sum of P50.00 (Exh. "FF").

Thereafter she allegedly started the sales promotion of the Respondent's product byextensive advertisement through some magazines (Exhs. "G"; "G-l"; and "H"), the

radio (Exhs.

"I"-"18"), and the cinema by means of projector "slides" (Exhs. "M" and "N") in

various neighborhood theatres in the Philippines (Exhs. "O" to "-48"). She also

allegedly caused the printing of thousands of boxes and literature accompanying the

soap with printing companies (Exhs. "P", "Q", "R", "S", "T", "U", "V", "W",

and "X" to "X-8"). She also presented a few sales invoices, the earliest of which was

issued on November 4, 1959 by the Wonder Commercial Co., Inc., showing sales of



the "Wonder Soap." (Exh. "Y"). Another booklet of sales invoices under the firm

name "C.Y. Gabriel" showing sales of the same soap, the earliest of which was

August 13, 1960 was also presented (Exhs. "Z" and "AA"). All the while thepackages (Exhs. "D" and "E") and literature (Exh. "W") indicate that the soap is

known as "Dr. Perez Bleaching Beauty Soap" manufactured by Dr. Jose R. Perez

Cosmetic Laboratory and that the exclusive distributor is "Crisanta Y. Gabriel

(C.Y Gabriel)", the herein Petitioner.

As further evidence of sale, the Petitioner presented as witness Pedro Alvero, a

businessman from San Pablo City who, as alleged dealer in medicinal products,

toiletries, etc., testified as having purchased from her "Wonder" soap in 1959 up to

1961 (t.s.n., pp. 43-52, May 23, 1963). (See pp. 13-14, Vol IV, rec.).

I

The determination that Dr. Perez is the rightful owner of the disputed trademark "WONDER" and

the consequent denial by the respondent Director of Patents of the petition to cancel certificate of

registration No. SR-389 covering said trademark issued to and in the name of Dr. Jose R. Perez,

were based mainly on his finding that Dr. Perez had priority of adoption and use of the said

trademark. And such finding of fact is conclusive on this Court. As stated by Justice Fernando in

Lim Kiah vs. Kaynee Company (25 SCRA 485) and reiterated by him in the subsequent case of Sy

Ching vs. Gaw Liu (44 SCRA 150-151): "It is well-settled that we are precluded from making an

inquiry as the finding of facts of the Director of Patents in the absence of any showing that there

was grave abuse of discretion is binding on us. As set forth by Justice Makalintal in Chung Te vs. Ng

Kian Giab (18 SCRA 747): 'The rule is that findings of facts by the Director of Patents areconclusive on the Supreme Court provided that they are supported by substantial

evidence.' " In the present case, the findings of fact of the respondent Director of Patents are

substantially supported by evidence and no grave abuse of discretion was committed by said

respondent.

1. At the time of the analysis of the soap product of private respondent Dr. Jose R. Perez, there was

already a label or trademark known as "Dr. Perez' WONDER Beauty Soap" as shown and

supported by Exhibit "5" which is a Certificate of Label Approval dated June 6, 1958 (p. 103, Vol.

III, rec.) and Exhibit "6" another Certificate of Label Approval dated August 10, 1959 (p. 104, Vol.

III, rec.) both issued by the Bureau of Health to Dr. Jose R. Perez as manager of the Dr. Jose R.

Perez Cosmetic Laboratory. Both certificates identified the product covered as "Dr. Perez' Wonder

Beauty Soap" and further indicated that said product emanated from the Dr. Jose R. Perez

Cosmetic Laboratory. Furthermore, the certificates show that the Bureau of Health referred to and

relied on the said label or trademark of the product as the basis for its certification that the same

(product) "was found not adulterated nor misbranded."

2. It is not denied that private respondent Dr. Jose R. Perez was the originator, producer and

manufacturer of the soap product identified as "DR. JOSE R. PEREZ WONDER BEAUTY

SOAP." This fact, furthermore, is clearly shown in Exhibits "5" and "6" which, as alreadyadverted to, point out that said product emanated from the Dr. Jose R. Perez Cosmetic

Laboratory.<äre||anº•1àw> The very boxes-containers used in packing the said product also exhibit

this fact (Exhs. "DD", "EE", "LL", "HH" also marked as Exh. "7", "JJ" and "KK", pp. 94-96,

98-101, Vol. III, rec.).



On the other hand, petitioner Crisanta Y. Gabriel appears to be a mere distributor of the product

by contract with the manufacturer, respondent Dr. Jose R. Perez (Exhs. "7", "F-1" to "F-2", p. 13,

Vol. III, rec.) and the same was only for a term. This fact is also clearly shown by the containers-boxes used in packing the product (Exhs. "E", "D" and "II" also marked as Exh. "8", pp. 10, 11

and 99, Vol. III, rec.) which indicate and describe Crisanta Y. Gabriel as the exclusive distributor

of the product.

Thus, as stated in the decision under review: "Therefore, it cannot be denied that the Respondent is

the originator and manufacturer of the so-called "Dr. PerezWonder Beauty Soap," a phrase clearly

coined by, and associated with, the Respondent. As such, the connotation in itself is sufficient to

clothe the product as an item or a commodity emanating from a particularly identified source who

is none other than Dr. Jose R. Perez. The words serve as an indication of origin, and the product

identified by the words can never be regarded as having emanated or originated from another

individual, typical of which is the Petitioner, mere distributor." (P. 15, Vol. IV, rec.). Under Section

2 and 2-A of the Trademark Law, Republic Act No. 166, amended, the right to register trademark

is based on ownership and a mere distributor of a product bearing a trademark, even if permitted

to use said trademark, has right to and cannot register the said trademark (Marvex Commercial

Co., Inc. vs. Petra Hawpia & Co., 18 SCR 1178; Operators, Inc. vs. Director of Patents, et al., 15

SCRA 148).

II

1. Petitioner urges that the agreement of exclusive distributorship executed by and between her and

respondent vested in her the exclusive ownership of the trademark "WONDER". But a scrutiny of

the provisions of said contract does not yield any right in favor of petitioner other than thatexpressly granted to her — to be the sole and exclusive distributor of respondent Dr. Perez'

product.

The fact that paragraph 6 (Exh. "F-2") of the agreement provides that the petitioner "has the

exclusive right of ownership of the packages and that said party is responsible for the costs as well

as the design and manner of packing the same" did not necessarily grant her the right to the

exclusive use of the trademark; because the agreement never mentioned transfer of ownership of

the trademark. It merely empowers the petitioner as exclusive distributor to own the package and

to create a design at her pleasure, but not the right to appropriate unto herself the sole ownership

of the trademark so as to entitle her to registration in the Patent Office. In fact, the agreement does

not even grant her the right to register the mark, as correctly stated in the appealed decision, which

further held that:

The statute provides that "the owner of a trademark use in commerce may register

his trademark ... ." By statutory definition a trademark is "any word, name, symbol

or device or any combination thereof adopted and used by a manufacture or

merchant to identify his goods and distinguish them from those manufactured by

others. (Emphasis added). There is nothing in the statute which remotely suggests

that one who merely sells a manufacturer's goods bearing the manufacturer's markacquires any rights in the mark; nor is there anything in the statute which suggests

that such a person may register a mark which his supplier has adopted and used to

identify his goods. Ex parte E. Leitz, Inc., (Comr Pats) 105 USPQ 480. (Pp. 16-17,

Vol. IV, rec.).

2. The exclusive distributor does not acquire any proprietary interest in the principal's trademark.



In the absence of any inequitable conduct on the part of the manufacturer, an

exclusive distributor who employs the trademark of the manufacturer does not

acquire proprietary rights of the manufacturer, and a registration of the trademarkby the distributor as such belongs to the manufacturer, provided the fiduciary

relationship does not terminate before application for registration is filed. (87 CJS

258-259, citing cases.)

III

It has been repeatedly said that the objects of a trademark are "to point out distinctly the origin or

ownership of the goods to which it is affixed, to secure to him, who has been instrumental in

bringing into market a superior article of merchandise, the fruit of his industry and skill, and to

prevent fraud and imposition. 52 Am. Jur., p. 50, citing cases." (Etepha vs. Director of Patents, et

al., 16 SCRA 495). Necessarily, therefore, a trademark can only be used in connection with the sale

of the identical article that has been sold under the trademark or tradename to the extent necessary

to establish them as such (Note 1 L.R.A. [N.S.] 704; A.I.M. Percolating Corporation vs. FerrodineChemical Corporation, et al., 124 S.E. 446).

In this instant case, the trademark "WONDER" has long been identified and associated with the

product manufactured and produced by the Dr. Jose R. Perez Cosmetic Laboratory. It would thusappear that the decision under review is but in consonance with the sound purposes or objects of a

trademark. Indeed, a contrary ruling would have resulted in the cancellation of the trademark in

question and in granting the pending application of herein petitioner to register the same

trademark in her favor to be used on her bleaching soap, which is of the same class as that of

respondent (bleaching and beauty soap) [see pp. 222, 265-276, Vol. I, rec.; also Exh. "9", p. 105,Vol. III, rec.]. And the effect on the public as well as on respondent Dr. Jose R. Perez would have

been disastrous. Such a situation would sanction a false implication that the product to be sold by

her (petitioner) is still that manufactured by respondent.

IV

Petitioner would also anchor her claim of exclusive ownership of the trademark in question on the

fact that she defrayed substantial expenses in the promotion of respondent's soap as covered by the

trademark "WONDER" and the printing of the packages which she further claimed have been

designed thru her efforts as she was the one who hired the services of an artist who created the

designed of the said packages and trademark. Such claim was disposed correctly by respondent

Director of Patents, thus:

Petitioner's act in defraying substantial expenses in the promotion of the

Respondent's goods and the printing of the packages are the necessary or essential

consequences of Paragraph 6 of the agreement because, anyway, those activities are

normal in the field of sale and distribution, as it would redound to her own benefitas distributor, and those acts are incumbent upon her to do. While it may be arguedthat sale by the Petitioner may be regarded as trademark use by her, nevertheless it

should also be regarded that such sale is a consequence of the "Exclusive

Distributorship Agreement" and it inured to the benefit of the Respondent because

it was his trademark that was being used. But this does not result in the

Respondent's surrender in her favor of the right to register the trademark in herown name. What would happen if the first five years' period terminates and the

Respondent decide not to continue with the agreement under Paragraph 1 thereof?



What trademark would he use if he himself assumes the distribution thereof or if he

contracts with another, entity or person for exclusive distributorship? (P. 17, Vol.

IV, rec.).

It is true that she has been dealing with the product "Wonder Soap" even before the execution of

the Exclusive Distributorship Agreement on September 1, 1959, evidence by her agreement with

Grace Trading Co., Inc. dated June 23, 1959 for the printing of boxes-containers for the "WonderSoap" and the literature accompanying the same (Exhs. "Q" and "W", pp. 58, 68, Vol. III, rec.), as

well as by another contract dated July 22, 1959 with the Philippine Broadcasting Corporation for

spot announcement of the product "Wonder Soap" showing her as the sponsor (Exh. "I-1" or "5-

A", p. 18, Vol. III, rec.). But this was because Manserco, Inc., which handled first the distribution

of the product "Wonder Soap" from January, 1959 to July, 1959, employed her (petitioner) to help

precisely in the marketing and distribution of the said product, she being the sister of Mariano

Yangga who was then the general manager of said Manserco, Inc., as testified to by Mr. Augusto

Cesar Espiritu, who, as earlier adverted to, was the organizer and one of the incorporators of the

Manserco, Inc.(pp. 480-481, Vol. III, rec.).

V

From the records, it further appears that pursuant to the Exclusive Distributorship Agreementbetween petitioner and respondent, the latter manufactured "WONDER" soap and delivered them

to the former who in turn handled the distribution thereof. This continued for sometime until

January, 1961, when the arrangement was stopped because as claimed and alleged by herein

respondent, he discovered that petitioner began manufacturing her own soap and placed them in

the boxes which contained his name and trademark, and for which reason respondent Dr. Perez filedan unfair competition case against her (petitioner) [see pp. 29-31, Vol. I, rec.; pp. 379-380, Vol. II,

rec.] with the Court of First Instance of Bulacan, which issued a writ of preliminary injunction

against her. These claims of respondent were never denied, much less refuted by petitioner in her

rebuttal testimony. Earlier in her direct testimony, petitioner stated that her occupation was

merchant and manufacturer of bleaching soap (p. 222, Vol. II, rec.) and on cross-examination she

stated that she manufactured Marvel and Dahlia Bleaching Beauty Soap as well as C.Y. GABRIELWONDER BEAUTY SOAP, although she claimed to have manufactured the same only from

February, 1961 to September, 1961 (pp. 265-270, Vol. II, rec.). Her use of the mark "Wonder" on

the soap manufactured by her is patently shown by Exhibit "9" consisting of a cake of soap with

the inscription C.Y. GABRIEL WONDER SPECIAL and an accompanying literature wherein

appear, among others, the following words: C.Y. Gabriel — WONDER MEDICATED BeautySoap, Manufactured by: C.Y. GABRIEL COSMETIC LABORATORY (see Exh. "9", p. 105, Vol.

III, rec.; pp. 440-441, Vol. II, rec.).

VI

OUR examination of the entire records of the present case likewise revealed petitioner's disregard

of the rudiments of fair dealing. Mr. Justice Fernando, in behalf of the Court, stated in Lim Kiah vs.

Kaynee Company, thus:

... The decision of the Director of Patents is not only sound in law but also

commendable for its consonance with the appropriate ethical standard which by no

means should be excluded from the business world as alien, if not a hostile, force.While in the fierce competitive jungle which at time constitutes the arena of

commercial transactions, shrewdness and ingenuity are at a premium, the law is by



no means called upon to yield invariably its nod of approval to schemes frowned

upon by the concept of fairness. Here, petitioner engaged in manufacturing and

selling the same kind of products would rely on a trademark, which undeniably waspreviously registered abroad and which theretofore had been used and advertised

extensively by one of the leading department stores in the Philippines. (25 SCRA

490.)

To our mind, the situation of herein petitioner is worse.

WHEREFORE, THE DECISION SOUGHT TO BE REVIEWED IS HEREBY AFFIRMED AND

THE PETITION IS HEREBY DISMISSED. WITH COSTS AGAINST PETITIONER.

Makalintal, C.J., Castro, Teehankee, Esguerra and Muñoz Palma, JJ., concur.1äwphï1.ñët



SECOND DIVISION

G.R. No. L-26676 July 30, 1982

PHILIPPINE REFINING CO., INC., petitioner,vs.NG SAM and THE DIRECTOR OF PATENTS, respondents.

Ponce Enrile, Siguion Reyna, Montecillo & Bello and Associates for petitioner.

Primitivo C. Bucasas for respondents.

ESCOLIN, J.:

The sole issue raised in this petition for review of the decision of the Director of patents is whether or notthe product of respondent, Ng Sam, which is ham, and those of petitioner consisting of lard, butter,cooking oil and soap are so related that the use of the same trademark "CAMIA" on said goods wouldlikely result in confusion as to their source or origin.

The trademark "CAMIA" was first used ill the Philippines by petitioner on its products in 1922. In 1949,petitioner caused the registration of said trademark with the Philippine Patent Office under certificates of registration Nos. 1352-S and 1353-S, both issued on May 3, 1949. Certificate of Registration No. 1352-Scovers vegetable and animal fats, particularly lard, butter and cooking oil, all classified under Class 47(Foods and Ingredients of Food) of the Rules of Practice of the Patent Office, while certificate of registration No. 1353-S applies to abrasive detergents, polishing materials and soap of all kinds (Class 4).



On November 25, 1960, respondent Ng Sam, a citizen residing in Iloilo City, filed an application with thePhilippine Patent office for registration of the Identical trademark "CAMIA" for his product, ham, whichlikewise falls under Class 47. Alleged date of first use of the trademark by respondent was on February10, 1959.

After due publication of the application, petitioner filed an opposition, in accordance with Section 8 of

Republic Act No. 166, otherwise known as the Trademark Law, as amended. Basis of petitioner'sopposition was Section 4(d) of said law, which provides as unregistrable:

a mark which consists of or comprises a mark or tradename which so resembles a mark ortradename registered in the Philippines or a mark or tradename previously used in thePhilippines by another and not abandoned, as to be likely, when applied to or used inconnection with the goods, business services of the applicant, to cause confusion ormistake or to deceive purchasers.

The parties submitted the case for decision without presenting any evidence: thereafter the Director of patents rendered a decision allowing registration of the trademark "CAMIA" in favor of Ng Sam.

Petitioner moved for a reconsideration, but the same was denied.

Hence, this petition.

A rudimentary precept in trademark protection is that "the right to a trademark is a limited one, in thesense that others may used the same mark on unrelated goods." 1 Thus, as pronounced by the UnitedStates Supreme Court in the case of American Foundries vs. Robertson

2, "the mere fact that one personhas adopted and used a trademark on his goods does not prevent the adoption and use of the sametrademark by others on articles of a different description."

Such restricted right over a trademark is likewise reflected in our Trademark law. Under Section 4(d) of

the law, registration of a trademark which so resembles another already registered or in use should bedenied, where to allow such registration could likely result in confusion, mistake or deception to theconsumers. Conversely, where no confusion is likely to arise, as in this case, registration of a similar oreven Identical mark may be allowed.

The term "CAMIA" is descriptive of a whole genus of garden plants with fragrant white flowers. Somepeople call the "CAMIA" the "white ginger plant" because of its tuberous roots, while children refer to itas the butterfly flower because of its shape. Being a generic and common term, its appropriation as atrademark, albeit in a fanciful manner in that it bears no relation to the product it Identifies, is valid.However, the degree of exclusiveness accorded to each user is closely restricted. 3

The records of this case disclose that the term "CAMIA" has been registered as a trademark not only by

petitioner but by two (2) other concerns, as follows:

1. CAMIA Application No. 280 Registration No. SR-320 Date Registered — May 26,1960 Owner — Everbright Development Company Business Address — 310 M. H. delPilar Grace Park, Caloocan City Class 4 — Thread and Yarn

2. CAMIA and Representation Application No. 538 Date Filed — August 10, 1945 DateRegistered - April 20, 1946 Owner — F.E. Zuellig, Inc. Business Address — 55 Rosario



St., Manila Class 43 — Particular Good on which mark is used: Textiles, Embroiderieslaces, etc.

A trademark is designed to Identify the user. But it should be so distinctive and sufficiently original as toenable those who come into contact with it to recognize instantly the Identity of the user. " It must beaffirmative and definite, significant and distinctive, capable to indicate origin." 4

It is evident that "CAMIA" as a trademark is far from being distinctive. By itself, it does not Identifypetitioner as the manufacturer or producer of the goods upon which said mark is used, as contra-distinguished to trademarks derived from coined words such as "Rolex", "Kodak" or "Kotex". It has beenheld that if a mark is so commonplace that it cannot be readily distinguished from others, then it isapparent that it cannot Identify a particular business; and he who first adopted it cannot be injured by anysubsequent appropriation or imitation by others, and the public will not be deceived." 5

The trademark "CAMIA" is used by petitioner on a wide range of products: lard, butter, cooking oil,abrasive detergents, polishing materials and soap of all kinds. Respondent desires to use the same on hisproduct, ham. While ham and some of the products of petitioner are classified under Class 47 (Foods andIngredients of Food), this alone cannot serve as the decisive factor in the resolution of whether or not theyare related goods. Emphasis should be on the similarity of the products involved and not on the arbitraryclassification or general description of their properties or characteristics.

In his decision, the Director of Patents enumerated the factors that set respondent's product apart from thegoods of petitioner. He opined and We quote:

I have taken into account such factors as probable purchaser attitude and habits,marketing activities, retail outlets, and commercial impression likely to be conveyed bythe trademarks if used in conjunction with the respective goods of the parties. I believethat ham on one hand, and lard, butter, oil, and soap on the other are products that wouldnot move in the same manner through the same channels of trade. They pertain tounrelated fields of manufacture, might be distributed and marketed under dissimilarconditions, and are displayed separately even though they frequently may be sold throughthe same retail food establishments. Opposer's products are ordinary day-to-dayhousehold items whereas ham is not necessarily so. Thus, the goods of the parties are notof a character which purchasers would be likely to attribute to a common origin. (p. 23,Rollo).

The observation and conclusion of the Director of Patents are correct. The particular goods of the partiesare so unrelated that consumers would not in any probability mistake one as the source or origin of theproduct of the other. "Ham" is not a daily food fare for the average consumer. One purchasing ham wouldexercise a more cautious inspection of what he buys on account of it price. Seldom, if ever, is thepurchase of said food product delegated to household helps, except perhaps to those who, like the cooks,are expected to know their business. Besides, there can be no likelihood for the consumer of respondent'sham to confuse its source as anyone but respondent. The facsimile of the label attached by him on hisproduct, his business name "SAM'S HAM AND BACON FACTORY" written in bold white lettersagainst a reddish orange background 6, is certain to catch the eye of the class of consumers to which hecaters.

In addition, the goods of petitioners are basically derived from vegetable oil and animal fats, while theproduct of respondent is processed from pig's legs. A consumer would not reasonably assume that,petitioner has so diversified its business as to include the product of respondent.



Mr. Runolf Callman, in Section 80.3, VOL. I, p. 1121 of his book, Unfair Competition and Trade Marks,declare:

While confusion of goods can only be evident, where the litigants are actually incompetition, confusion of business may arise between non-competitive interests as well.This is true whether or not the trademarks are registered. Sec. 16 of the Trademark Act,

in referring to 'merchandise of substantially the same descriptive properties, embracescompetitive and non-competitive trademark infringement but it is not so extensive as to

be applicable to cases where the public would not reasonably expect the plaintiff to make

or sell the same class of goods as those made or sold by the defendant . (Emphasissupplied).

In fine, We hold that the businesss of the parties are non-competitive and their products so unrelated thatthe use of Identical trademarks is not likely to give rise to confusion, much less cause damage topetitioner.

WHEREFORE, the instant petition is hereby dismissed and the decision of the Director of Patents in InterPartes Case No. 231 affirmed in toto. Costs against petitioner.

SO ORDERED.

Barredo (Chairman), Aquino, Concepcion, Jr., Guerrero, Abad Santos and De Castro, JJ., concur.

Separate Opinions

DE CASTRO, J., dissenting:

I vote to grant the petition of the Philippine Refining Co. Inc. As the registered owner and prior user of the trademark, "CAMIA" on a wide variety of products such as lard, butter, cooking oil, abrasivedetergents, polishing materials and soap of all kinds, the respondent's ham which comes under the sameclassification of "Food and Ingredients of Foods" under which petitioner has registered its trademark, if given the same trademark, "CAMIA" is likely to confuse the public that the source of the ham is thepetitioner. if the respondent's ham is of poor quality, petitioner's business may thus be affected adverselyas a result, while from the standpoint of the purchasers, some measure of deception may take effect uponthem. Thus, the use of the same trademark on the ham would likely result in confusion as to the source or

origin thereof, to the damage or detriment of the petitioner. The purpose of the law will be served betterby not allowing the registration of the trademark "CAMIA" for respondent's ham, with such a limitlessnumber of other words respondent may choose from, as trademark for his product.



Separate Opinions

DE CASTRO, J., dissenting:

I vote to grant the petition of the Philippine Refining Co. Inc. As the registered owner and prior user of the trademark, "CAMIA" on a wide variety of products such as lard, butter, cooking oil, abrasivedetergents, polishing materials and soap of all kinds, the respondent's ham which comes under the sameclassification of "Food and Ingredients of Foods" under which petitioner has registered its trademark, if given the same trademark, "CAMIA" is likely to confuse the public that the source of the ham is thepetitioner. if the respondent's ham is of poor quality, petitioner's business may thus be affected adverselyas a result, while from the standpoint of the purchasers, some measure of deception may take effect uponthem. Thus, the use of the same trademark on the ham would likely result in confusion as to the source ororigin thereof, to the damage or detriment of the petitioner. The purpose of the law will be served betterby not allowing the registration of the trademark "CAMIA" for respondent's ham, with such a limitlessnumber of other words respondent may choose from, as trademark for his product.

Footnotes

1 Sec. 221, Nims, Unfair Competition and Trade Mark, Vol. 1, p. 657.

2 269 US 372, 381, 70 L ed 317, 46 Sct. 160.

3 Sec. 203, Nims, Unfair Competition and Trademarks, Vol. 1, p. 555.

4 Sparklets Corp. v. Walter Kidde Sales Co., 104 F. 2d 396, 398, C.C.P.A.

5 Maniton Springs Mineral Water Co. vs. Schueler, 239 Fed. 593, 597, C. C. A. 8th,1917.

p. 5, Original Record.

6 p. 5, Original Record.


FIRST DIVISION

G.R. No. L-29971 August 31, 1982

ESSO STANDARD EASTERN, INC., petitioner,vs.THE HONORABLE COURT OF APPEALS ** and UNITED CIGARETTECORPORATION, respondents.



&

TEEHANKEE, J.:1äwphï1.ñët

The Court affirms on the basis of controlling doctrine the appealed decision of the Court of Appealsreversing that of the Court of First Instance of Manila and dismissing the complaint filed by hereinpetitioner against private respondent for trade infringement for using petitioner's trademark ESSO, since itclearly appears that the goods on which the trademark ESSO is used by respondent is non-competing andentirely unrelated to the products of petitioner so that there is no likelihood of confusion or deception onthe part of the purchasing public as to the origin or source of the goods.

Petitioner Esso Standard Eastern, Inc., 1 then a foreign corporation duly licensed to do business in thePhilippines, is engaged in the sale of petroleum products which are Identified with its trademark ESSO(which as successor of the defunct Standard Vacuum Oil Co. it registered as a business name with theBureaus of Commerce and Internal Revenue in April and May, 1962). Private respondent in turn is adomestic corporation then engaged in the manufacture and sale of cigarettes, after it acquired inNovember, 1963 the business, factory and patent rights of its predecessor La Oriental TobaccoCorporation, one of the rights thus acquired having been the use of the trademark ESSO on its cigarettes,for which a permit had been duly granted by the Bureau of Internal Revenue.

Barely had respondent as such successor started manufacturing cigarettes with the trademark ESSO, whenpetitioner commenced a case for trademark infringement in the Court of First Instance of Manila. Thecomplaint alleged that the petitioner had been for many years engaged in the sale of petroleum productsand its trademark ESSO had acquired a considerable goodwill to such an extent that the buying public hadalways taken the trademark ESSO as equivalent to high quality petroleum products. Petitioner assertedthat the continued use by private respondent of the same trademark ESSO on its cigarettes was beingcarried out for the purpose of deceiving the public as to its quality and origin to the detriment anddisadvantage of its own products.

In its answer, respondent admitted that it used the trademark ESSO on its own product of cigarettes,which was not Identical to those produced and sold by petitioner and therefore did not in any way infringeon or imitate petitioner's trademark. Respondent contended that in order that there may be trademark infringement, it is indispensable that the mark must be used by one person in connection or competitionwith goods of the same kind as the complainant's.

The trial court, relying on the old cases of Ang vs. Teodoro 2 and Arce & Sons, Inc. vs. Selecta Biscuit

Company, 3referring to related products, decided in favor of petitioner and ruled that respondent wasguilty of infringement of trademark.

On appeal, respondent Court of Appeals found that there was no trademark infringement and dismissedthe complaint. Reconsideration of the decision having been denied, petitioner appealed to this Court by

way of certiorari to reverse the decision of the Court of Appeals and to reinstate the decision of the Courtof First Instance of Manila. The Court finds no ground for granting the petition.

The law defines infringement as the use without consent of the trademark owner of any "reproduction,counterfeit, copy or colorable limitation of any registered mark or tradename in connection with the sale,offering for sale, or advertising of any goods, business or services on or in connection with which suchuse is likely to cause confusion or mistake or to deceive purchasers or others as to the source or origin of such goods or services, or Identity of such business; or reproduce, counterfeit, copy or colorably imitateany such mark or tradename and apply such reproduction, counterfeit, copy or colorable limitation to



labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used upon or inconnection with such goods, business or services." 4 Implicit in this definition is the concept that thegoods must be so related that there is a likelihood either of confusion of goods or business. 5 Butlikelihood of confusion is a relative concept; to be determined only according to the particular, andsometimes peculiar, circumstances of each case. 6 It is unquestionably true that, as stated in Coburn vs.

Puritan Mills, Inc. 7 "In trademark cases, even more than in other litigation, precedent must be studied in

the light of the facts of the particular case.

It is undisputed that the goods on which petitioner uses the trademark ESSO, petroleum products, and theproduct of respondent, cigarettes, are non-competing. But as to whether trademark infringement existsdepends for the most part upon whether or not the goods are so related that the public may be, or isactually, deceived and misled that they came from the same maker or manufacturer. For non-competinggoods may be those which, though they are not in actual competition, are so related to each other that itmight reasonably be assumed that they originate from one manufacturer. Non-competing goods may alsobe those which, being entirely unrelated , could not reasonably be assumed to have a common source. inthe former case of related goods, confusion of business could arise out of the use of similar marks; in thelatter case of non-related goods, it could not. 8 The vast majority of courts today follow the modern theoryor concept of "related goods" 9 which the Court has likewise adopted and uniformly recognized and

applied. 10

Goods are related when they belong to the same class or have the same descriptive properties; when theypossess the same physical attributes or essential characteristics with reference to their form, composition,texture or quality. They may also be related because they serve the same purpose or are sold in grocerystores. 11 Thus, biscuits were held related to milk because they are both food products. 12 Soap andperfume, lipstick and nail polish are similarly related because they are common household items now adays. 13 The trademark "Ang Tibay" for shoes and slippers was disallowed to be used for shirts and pantsbecause they belong to the same general class of goods. 14 Soap and pomade although non- competitive,were held to be similar or to belong to the same class, since both are toilet articles. 15 But no confusion ordeception can possibly result or arise when the name "Wellington" which is the trademark for shirts,pants, drawers and other articles of wear for men, women and children is used as a name of a department

store. 16

Thus, in Acoje Mining Co., Inc. vs. Director of Patents, 17 the Court, through now Chief Justice Fernando,reversed the patent director's decision on the question of "May petitioner Acoje Mining Company registerfor the purpose of advertising its product, soy sauce, the trademark LOTUS, there being already inexistence one such registered in favor of the Philippine Refining Company for its product, edible oil, itbeing further shown that the trademark applied for is in smaller type, colored differently, set on abackground which is dissimilar as to yield a distinct appearance?" and ordered the granting of petitioner'sapplication for registration ruling that "there is quite a difference between soy sauce and edible oil. If oneis in the market for the former, he is not likely to purchase the latter just because of the trademark LOTUS" and "when regard is had for the principle that the two trademarks in their entirety as they appearin their respective labels should be considered in relation to the goods advertised before registration could

be denied, the conclusion is inescapable that respondent Director ought to have reached a differentconclusion. "

By the same token, in the recent case of Philippine Refining Co., Inc. vs. Ng Sam and Director of

Patents, 18 the Court upheld the patent director's registration of the same trademark CAMIA for thereinrespondent's product of ham notwithstanding its already being used by therein petitioner for a wide rangeof products: lard butter, cooking oil, abrasive detergents, polishing materials and soap of all kinds. TheCourt, after noting that the same CAMIA trademark had been registered by two other companies,



Everbright Development Company and F. E. Zuellig, Inc. for their respective products of thread and yarn(for the former) and textiles, embroideries and laces (for the latter) ruled that "while ham and some of theproducts of petitioner are classified under Class 47 (Foods and Ingredients of Food), this alone cannotserve as the decisive factor in the resolution of whether or not they are related goods. Emphasis should beon the similarity of the products involved and not on the arbitrary classification or general description of their properties or characteristics." The Court, therefore, concluded that "In fine, We hold that the

businesses of the parties are non-competitive and their products so unrelated that the use of Identicaltrademarks is not likely to give rise to confusion, much less cause damage to petitioner."

In the situation before us, the goods are obviously different from each other with "absolutely no iota of similitude"19 as stressed in respondent court's judgment. They are so foreign to each other as to make itunlikely that purchasers would think that petitioner is the manufacturer of respondent'sgoods.ït¢@lFº The mere fact that one person has adopted and used a trademark on his goods does notprevent the adoption and use of the same trademark by others on unrelated articles of a different kind. 20

Petitioner uses the trademark ESSO and holds certificate of registration of the trademark for petroleumproducts, including aviation gasoline, grease, cigarette lighter fluid and other various products such asplastics, chemicals, synthetics, gasoline solvents, kerosene, automotive and industrial fuel, bunker fuel,

lubricating oil, fertilizers, gas, alcohol, insecticides and the ESSO Gasul" burner, while respondent'sbusiness is solely for the manufacture and sale of the unrelated product of cigarettes. The public knowstoo well that petitioner deals solely with petroleum products that there is no possibility that cigarettes withESSO brand will be associated with whatever good name petitioner's ESSO trademark may havegenerated. Although petitioner's products are numerous, they are of the same class or line of merchandisewhich are non-competing with respondent's product of cigarettes, which as pointed out in the appealed judgment is beyond petitioner's "zone of potential or natural and logical expansion" 21When a trademark isused by a party for a product in which the other party does not deal, the use of the same trademark on thelatter's product cannot be validly objected to. 22

Another factor that shows that the goods involved are non-competitive and non-related is the appellatecourt's finding that they flow through different channels of trade, thus: "The products of each party move

along and are disposed through different channels of distribution. The (petitioner's) products aredistributed principally through gasoline service and lubrication stations, automotive shops and hardwarestores. On the other hand, the (respondent's) cigarettes are sold in sari-sari stores, grocery stores, andother small distributor outlets. (Respondent's) cigarettes are even peddled in the streets while (petitioner's)'gasul' burners are not. Finally, there is a marked distinction between oil and tobacco, as well as betweenpetroleum and cigarettes. Evidently, in kind and nature the products of (respondent) and of (petitioner) arepoles apart." 23

Respondent court correctly ruled that considering the general appearances of each mark as a whole, thepossibility of any confusion is unlikely. A comparison of the labels of the samples of the goods submittedby the parties shows a great many differences on the trademarks used. As pointed out by respondent courtin its appealed decision, "(A) witness for the plaintiff, Mr. Buhay, admitted that the color of the "ESSO"

used by the plaintiff for the oval design where the blue word ESSO is contained is the distinct and uniquekind of blue. In his answer to the trial court's question, Mr. Buhay informed the court that the plaintiff never used its trademark on any product where the combination of colors is similar to the label of theEsso cigarettes," and "Another witness for the plaintiff, Mr. Tengco, testified that generally, the plaintiff'strademark comes all in either red, white, blue or any combination of the three colors. It is to be pointedout that not even a shade of these colors appears on the trademark of the appellant's cigarette. The onlycolor that the appellant uses in its trademark is green." 24



Even the lower court, which ruled initially for petitioner, found that a "noticeable difference between thebrand ESSO being used by the defendants and the trademark ESSO of the plaintiff is that the former has arectangular background, while in that of the plaintiff the word ESSO is enclosed in an oval background."

In point of fact and time, the Court's dismissal of the petition at bar was presaged by its Resolution of May 21, 1979 dismissing by minute resolution the petition for review for lack of merit in the Identical

case of Shell Company of the Philippines, Ltd vs. Court of Appeals 25, wherein the Court thereby affirmedthe patent office's registration of the trademark SHELL as used in the cigarettes manufactured by thereinrespondent Fortune Tobacco Corporation notwithstanding the therein petitioner Shell Company'sopposition thereto as the prior registrant of the same trademark for its gasoline and other petroleumtrademarks, on the strength of the controlling authority of Acoje Mining Co. vs. Director of Patents,

Supra, and the same rationale that "(I)n the Philippines, where buyers of appellee's (Fortune Corp.'s)cigarettes, which are low cost articles, can be more numerous compared to buyers of the higher pricedpetroleum and chemical products of appellant (Shell Co.) and where appellant (Shell) is known to be inthe business of selling petroleum and petroleum-based chemical products, and no others, it is difficult toconceive of confusion in the minds of the buying public in the sense it can be thought that appellant(Shell) is the manufacturer of appellee's (Fortune's) cigarettes, or that appellee (Fortune) is themanufacturer or processor of appellant's (Shell's) petroleum and chemical products." 26

ACCORDINGLY, the petition is dismissed and the decision of respondent Court of Appeals is herebyaffirmed.

Melencio-Herrera, Plana, Relova and Gutierrez, Jr., JJ., concur.1äwphï1.ñët

Makasiar, J., is on leave.

Vasquez, J., took no part.

&

Footnotes1äwphï1.ñët

* First Division then cmposed of Villamor, Presiding Justice, ponente, Concepcion, Jr.and Mojica, JJ.

1 On December 31, 1969, by virtue of an "Agreement of Exchange and Transfer," thebusinesses, properties and other assets in the Philippines of Esso Standard Eastern, Inc.were transferred to Esso Philippines, Inc. Its petition to be substituted by EssoPhilippines, Inc. as party petitioner was denied in a resolution of this Court dated April 7,1970, pursuant to the then Solicitor General's opposition "because of the possible legalconsequence that may arise under the provisions of the Laurel-Langley Act and other

related laws.

2 74 Phil. 50.

3 1 SCRA 253.

4 Sec. 22, Trademark Law.



5 2 Callman, Unfair Competition and Trademarks, p. 1324.

6 Ibid, p. 1123.

7 108 F. 2d 377, 378.

8 2 Callman, Unfair Competition and Trademarks, p. 1336.

9 2 McCarthy, Trademarks and Unfair Competition, p. 119.

10 Vide: Arce vs. Selecta, 1 SCRA 253 (1961); Chua Che vs. Phil. Patents Office, 13SCRA 67 (1965); Ang vs. Teodoro, 74 Phil. 50; Khe vs. Lever Bros. Co., 49 O.G. 3891(1941); Ang Si Heng & Dee vs. Wellington Dept. Store, 92 Phil. 448; Acoje Mining Co.,Inc. vs. Director of Patents, 38 SCRA 480 (1971).

11 2 Callman Unfair Competition & Trade Marks, p. 1257.

12 Arce vs. Selecta, supra.

13 Chua Che vs. Phils. Patent Office, supra.

14 Ang vs. Teodoro, supra.

15 Khe vs. Lever Bros. Co., supra.

16 Ang Si Heng & Dee vs. Wellington Department Store, supra.

17 38 SCRA 480(1971).

18 G.R. No. L-26676, July 30, 1982 (2nd Division); see also Leviton Industries vs,Salvador, G. R. L-40163, June 19, 1982.

19 Record, p. 128.

20 American Foundries vs. Robertson, 269 US 372,381.

21 Record at page 138.

22 George W. Luft Co., Inc. vs. Ngo Guan, 18 SCRA 944 (1966).

23 Record at pages 135-136.

24 Record at pages 137-138.

25 G.R. No. L-49145, petition for review denied May 21, 1979 and judgment enteredJune 28, 1979.



26 Idem, separate opinion of Court of Appeals Justice Corazon Juliano Agrava; Record atpage 77.


SECOND DIVISION

G.R. No. L-27906 January 8, 1987

CONVERSE RUBBER CORPORATION, petitioner,vs.UNIVERSAL RUBBER PRODUCTS, INC. and TIBURCIO S. EVALLE, DIRECTOR OFPATENTS, respondents.

Parades, Poblador, Nazareno, Azada & Tomacruz for petitioner.

R E S O L U T I O N

FERNAN, J.:

The undisputed facts of the case are as follows:

Respondent Universal Rubber Products, Inc. filed an application with the Philippine Patent office for

registration of the trademark "UNIVERSAL CONVERSE AND DEVICE" used on rubber shoes andrubber slippers.

Petitioner Converse Rubber Corporation filed its opposition to the application for registration on groundsthat:

a] The trademark sought to be registered is confusingly similar to the word"CONVERSE" which is part of petitioner's corporate name "CONVERSE RUBBERCORPORATION" as to likely deceive purchasers of products on which it is to be used toan extent that said products may be mistaken by the unwary public to be manufactured bythe petitioner; and,

b] The registration of respondent's trademark will cause great and irreparable injury to thebusiness reputation and goodwill of petitioner in the Philippines and would cause damageto said petitioner within the, meaning of Section 8, R.A. No. 166, as amended.

Thereafter, respondent filed its answer and at the pre-trial, the parties submitted the following partialstipulation of facts:



1] The petitioner's corporate name is "CONVERSE RUBBER CORPORATION" and hasbeen in existence since July 31, 1946; it is duly organized under the laws of Massachusetts, USA and doing business at 392 Pearl St., Malden, County of Middle sex,Massachusetts;

2] Petitioner is not licensed to do business in the Philippines and it is not doing business

on its own in the Philippines; and,

3] Petitioner manufacturers rubber shoes and uses thereon the trademarks "CHUCKTAYLOR "and "ALL STAR AND DEVICE". 1

At the trial, petitioner's lone witness, Mrs. Carmen B. Pacquing, a duly licensed private merchant withstores at the Sta. Mesa Market and in Davao City, testified that she had been selling CONVERSE rubbershoes in the local market since 1956 and that sales of petitioner's rubber shoes in her stores averagedtwelve to twenty pairs a month purchased mostly by basketball players of local private educationalinstitutions like Ateneo, La Salle and San Beda.

Mrs. Pacquing, further stated that she knew petitioner's rubber shoes came from the United States"because it says there in the trademark Converse Chuck Taylor with star red or blue and is a round figureand made in U.S.A. " 2 In the invoices issued by her store, the rubber shoes were described as "ConverseChuck Taylor", 3 "Converse All Star," 4 "All Star Converse Chuck Taylor," 5 or "Converse Shoes Chuck Taylor." 6 She also affirmed that she had no business connection with the petitioner.

Respondent, on the other hand, presented as its lone witness the secretary of said corporation whotestified that respondent has been selling on wholesale basis "Universal Converse" sandals since 1962 and"Universal Converse" rubber shoes since 1963. Invoices were submitted as evidence of such sales. Thewitness also testified that she had no Idea why respondent chose "Universal Converse" as a trademark andthat she was unaware of the name "Converse" prior to her corporation's sale of "Universal Converse"rubber shoes and rubber sandals.

Eventually, the Director of Patents dismissed the opposition of the petitioner and gave due course torespondent's application. His decision reads in part:

... the only question for determination is whether or not the applicant's partialappropriation of the Opposer's [petitioner'] corporate name is of such character that in thisparticular case, it is calculated to deceive or confuse the public to the injury of thecorporation to which the name belongs ...

I cannot find anything that will prevent registration of the word 'UNIVERSALCONVERSE' in favor of the respondent. In arriving at this conclusion, I am guided bythe fact that the opposer failed to present proof that the single word "CONVERSE' in its

corporate name has become so Identified with the corporation that whenever used, itdesignates to the mind of the public that particular corporation.

The proofs herein are sales made by a single witness who had never dealt with thepetitioner . . . the entry of Opposer's [petitioner's] goods in the Philippines were not onlyeffected in a very insignificant quantity but without the opposer [petitioner] having adirect or indirect hand in the transaction so as to be made the basis for trademark pre-exemption.



Opposer's proof of its corporate personality cannot establish the use of the word"CONVERSE" in any sense, as it is already stipulated that it is not licensed to dobusiness in the Philippines, and is not doing business of its own in the Philippines. If so,it will be futile for it to establish that "CONVERSE" as part of its corporate nameIdentifies its rubber shoes. Besides, it was also stipulated that opposer [petitioner], inmanufacturing rubber shoes uses thereon the trademark "CHUCK TAYLOR" and "ALL

STAR and DEVICE" and none other.

Furthermore, inasmuch as the Opposer never presented any label herein, or specimen of its shoes, whereon the label may be seen, notwithstanding its witness' testimony touchingupon her Identification of the rubber shoes sold in her stores, no determination can bemade as to whether the word 'CONVERSE' appears thereon.

. . .the record is wanting in proof to establish likelihood of confusion so as to causeprobable damage to the Opposer. 7

Its motion for reconsideration having been denied by the respondent Director of Patents, petitionerinstituted the instant petition for review.

As correctly phrased by public respondent Director of Patents, the basic issue presented for ourconsideration is whether or not the respondent's partial appropriation of petitioner's corporate name is of such character that it is calculated to deceive or confuse the public to the injury of the petitioner to whichthe name belongs.

A trade name is any individual name or surname, firm name, device or word used bymanufacturers, industrialists, merchants and others to Identify their businesses, vocationsor occupations. 8 As the trade name refers to the business and its goodwill ... thetrademark refers to the goods." 9 The ownership of a trademark or tradename is a propertyright which the owner is entitled to protect "since there is damage to him from confusionor reputation or goodwill in the mind of the public as well as from confusion of goods.The modern trend is to give emphasis to the unfairness of the acts and to classify andtreat the issue as fraud. 10

From a cursory appreciation of the petitioner's corporate name "CONVERSE RUBBERCORPORATION,' it is evident that the word "CONVERSE" is the dominant word which Identifiespetitioner from other corporations engaged in similar business. Respondent, in the stipulation of facts,admitted petitioner's existence since 1946 as a duly organized foreign corporation engaged in themanufacture of rubber shoes. This admission necessarily betrays its knowledge of the reputation andbusiness of petitioner even before it applied for registration of the trademark in question. Knowing,therefore, that the word "CONVERSE" belongs to and is being used by petitioner, and is in fact thedominant word in petitioner's corporate name, respondent has no right to appropriate the same for use onits products which are similar to those being produced by petitioner.

A corporation is entitled to the cancellation of a mark that is confusingly similar to itscorporate name."11"Appropriation by another of the dominant part of a corporate name isan infringement."12

Respondent's witness had no Idea why respondent chose "UNIVERSAL CONVERSE" as trademark andthe record discloses no reasonable explanation for respondent's use of the word "CONVERSE" in its



trademark. Such unexplained use by respondent of the dominant word of petitioner's corporate namelends itself open to the suspicion of fraudulent motive to trade upon petitioner's reputation, thus:

A boundless choice of words, phrases and symbols is available to one who wishes atrademark sufficient unto itself to distinguish his product from those of others. When,however, there is no reasonable explanation for the defendant's choice of such a mark

though the field for his selection was so broad, the inference is inevitable that it waschosen deliberately to deceive. 13

The testimony of petitioner's witness, who is a legitimate trader as well as the invoices evidencing sales of petitioner's products in the Philippines, give credence to petitioner's claim that it has earned a businessreputation and goodwill in this country. The sales invoices submitted by petitioner's lone witness showthat it is the word "CONVERSE" that mainly Identifies petitioner's products, i.e. "CONVERSE CHUCKTAYLOR, 14 "CONVERSE ALL STAR," 15 ALL STAR CONVERSE CHUCK TAYLOR," 16 or"CONVERSE SHOES CHUCK and TAYLOR." 17 Thus, contrary to the determination of the respondentDirector of Patents, the word "CONVERSE" has grown to be Identified with petitioner's products, and inthis sense, has acquired a second meaning within the context of trademark and tradename laws.

Furthermore, said sales invoices provide the best proof that there were actual sales of petitioner's productsin the country and that there was actual use for a protracted period of petitioner's trademark or part thereof through these sales. "The most convincing proof of use of a mark in commerce is testimony of suchwitnesses as customers, or the orders of buyers during a certain period. 18 Petitioner's witness, havingaffirmed her lack of business connections with petitioner, has testified as such customer, supportingstrongly petitioner's move for trademark pre-emption.

The sales of 12 to 20 pairs a month of petitioner's rubber shoes cannot be considered insignificant,considering that they appear to be of high expensive quality, which not too many basketball players canafford to buy. Any sale made by a legitimate trader from his store is a commercial act establishingtrademark rights since such sales are made in due course of business to the general public, not only tolimited individuals. It is a matter of public knowledge that all brands of goods filter into the market,indiscriminately sold by jobbers dealers and merchants not necessarily with the knowledge or consent of the manufacturer. Such actual sale of goods in the local market establishes trademark use which serves asthe basis for any action aimed at trademark pre- exemption. It is a corollary logical deduction that whileConverse Rubber Corporation is not licensed to do business in the country and is not actually doingbusiness here, it does not mean that its goods are not being sold here or that it has not earned a reputationor goodwill as regards its products. The Director of Patents was, therefore, remiss in ruling that the proofsof sales presented "was made by a single witness who had never dealt with nor had never known opposer[petitioner] x x x without Opposer having a direct or indirect hand in the transaction to be the basis of trademark pre- exemption."

Another factor why respondent's applications should be denied is the confusing similarity between itstrademark "UNIVERSAL CONVERSE AND DEVICE" and petitioner's corporate name and/or itstrademarks "CHUCK TAYLOR" and "ALL STAR DEVICE" which could confuse the purchasing publicto the prejudice of petitioner,

The trademark of respondent "UNIVERSAL CONVERSE and DEVICE" is imprinted in a circularmanner on the side of its rubber shoes. In the same manner, the trademark of petitioner which reads"CONVERSE CHUCK TAYLOR" is imprinted on a circular base attached to the side of its rubber shoes.The deteminative factor in ascertaining whether or not marks are confusingly similar to each other "is notwhether the challenged mark would actually cause confusion or deception of the purchasers but whether



the use of such mark would likely cause confusion or mistake on the part of the buying public. It wouldbe sufficient, for purposes of the law, that the similarity between the two labels is such that there is apossibility or likelihood of the purchaser of the older brand mistaking the new brand for it." 19 Even if not an the details just mentioned were identical, with the general appearance alone of the two products,any ordinary, or even perhaps even [sic] a not too perceptive and discriminating customer could bedeceived ... " 20

When the law speaks co-purchaser," the reference is to ordinary average purchaser. 21 It is not necessaryin either case that the resemblance be sufficient to deceive experts, dealers, or other persons speciallyfamiliar with the trademark or goods involve." 22

The similarity y in the general appearance of respondent's trademark and that of petitioner wouldevidently create a likelihood of confusion among the purchasing public. But even assuming, arguendo,that the trademark sought to be registered by respondent is distinctively dissimilar from those of thepetitioner, the likelihood of confusion would still subsists, not on the purchaser's perception of the goodsbut on the origins thereof. By appropriating the word "CONVERSE," respondent's products are likely tobe mistaken as having been produced by petitioner. "The risk of damage is not limited to a possibleconfusion of goods but also includes confusion of reputation if the public could reasonably assume that

the goods of the parties originated from the same source. 23

It is unfortunate that respondent Director of Patents has concluded that since the petitioner is not licensedto do business in the country and is actually not doing business on its own in the Philippines, it has noname to protect iN the forum and thus, it is futile for it to establish that "CONVERSE" as part of itscorporate name identifies its rubber shoes. That a foreign corporation has a right to maintain an action inthe forum even if it is not licensed to do business and is not actually doing business on its own therein hasbeen enunciated many times by this Court. In La Chemise Lacoste, S.A. vs. Fernandez, 129 SCRA 373,this Court, reiterating Western Equipment and Supply Co. vs. Reyes, 51 Phil. 115, stated that:

... a foreign corporation which has never done any business in the Philippines and whichis unlicensed and unregistered to do business here, but is widely and favorably known inthe Philippines through the use therein of its products bearing its corporate andtradename, has a legal right to maintain an action in the Philippines to restrain theresidents and inhabitants thereof from organizing a corporation therein bearing the samename as the foreign corporation, when it appears that they have personal knowledge of the existence of such a foreign corporation, and it is apparent that the purpose of theproposed domestic corporation is to deal and trade in the same goods as those of theforeign corporation.

We further held:

xxx xxx xxx

That company is not here seeking to enforce any legal or control rightsarising from or growing out of, any business which it has transacted inthe Philippine Islands. The sole purpose of the action:

Is to protect its reputation, its corporate name, its goodwill whenever thatreputation, corporate name or goodwill have, through the naturaldevelopment of its trade, established themselves.' And it contends that itsrights to the use of its corporate and trade name:



Is a property right, a right in recess which it may assert and protectagainst all the world, in any of the courts of the world even in jurisdictions where it does not transact business-just the same as it mayprotect its tangible property, real or personal against trespass, orconversion. Citing sec. 10, Nims on Unfair Competition and Trademarksand cases cited; secs. 21-22, Hopkins on Trademarks, Trade Names and

Unfair Competition and cases cited That point is sustained by theauthorities, and is well stated in Hanover Star Milling Co. vs. Allen and

Wheeler Co. [208 Fed., 5131, in which the syllabus says:

Since it is the trade and not the mark that is to be protected, a trademark acknowledges no territorial boundaries of municipalities or states ornations, but extends to every market where the trader's goods havebecome known and Identified by the use of the mark.

The ruling in the aforecited case is in consonance with the Convention of the Union of Paris for theProtection of Industrial Property to which the Philippines became a party on September 27, 1965. Article8 thereof provides that "a trade name [corporate name] shall be protected in all the countries of the Union

without the obligation of filing or registration, whether or not it forms part of the trademark. " [emphasissupplied]

The object of the Convention is to accord a national of a member nation extensive protection "againstinfringement and other types of unfair competition" [Vanitary Fair Mills, Inc. vs. T. Eaton Co., 234 F. 2d6331.

The mandate of the aforementioned Convention finds implementation in Sec. 37 of RA No. 166,otherwise known as the Trademark Law:

Sec. 37. Rights of Foreign Registrants-Persons who are nationals of, domiciled or have abona fide or effective business or commercial establishment in any foreign country,which is a party to an international convention or treaty relating to marks or tradenameson the repression of unfair competition to which the Philippines may be a party, shall beentitled to the benefits and subject to the provisions of this Act . . . ...

Tradenames of persons described in the first paragraph of this section shall be protected

without the obligation of filing or registration whether or not they form parts of

marks. [emphasis supplied]

WHEREFORE, the decision of the Director of Patents is hereby set aside and a new one entered denyingRespondent Universal Rubber Products, Inc.'s application for registration of the trademark "UNIVERSALCONVERSE AND DEVICE" on its rubber shoes and slippers.

SO ORDERED.

Feria (Chairman), Alampay, Gutierrez, Jr. and Paras, JJ., concur.

Footnotes



1 p. 3, Rollo.

2 TSN, pp. 7-8,20-21, Feb. 24, 1965.

3 Exh. C

4 Exh. C-1. _

5 Exh. C-3.

6 Exh. C-4.

7 pp. 11-12, Rollo.

8 CIA General de Tabacos vs. Alhambra Cigar, 33 PhiL 485, underscoring supplied.

9 Nolledo, Commercial law Review, p. 839.

10 Ang vs. Toribio, 74 PhiL 219.

11 Callman Vol. 4, P. 2185.

12 Ibid, Vol. 3, p. 1439.

13 III Callman, Unfair Competition, 2nd Ed., pp. 1527-1528.

14 Exh. C.

15 Exh. C-1.

16 Exh. C-3.

17 Exh. C-4.

18 Ault and Wibogr vs. Ault 50 App. B.C 156 269, Fed. 627, [19201 cited in Vol. 3,Callman, p. 1185.

19 American Wire and Cable Co., Inc. vs. Director of Patents, 31 SCRA 544. "

20 Converse Rubber Corp. vs. Jacinto Rubber and Plastics Co., Inc., 97 SCRA 169.

21 R.F. & J. Alexander & Co., Ltd. vs. Ang et. al, 97 Phil. 157.

22 52 Am. Jur. p. 601

23 Callman Vol. 4, p. 2186.



Documents

Trademarks Cases 7-15