Salve’s product has no secondary meaning.

In Coca-cola Co. v. Koke Co. Of America, indeed, a mark that develops secondary
meaning in the marketplace retains trademark status and is protected against claims of
unfair competition. (Comment: Indeed, Salve seeks to protect her bags from infringement
but are her products protected by trademark by way of acquisition of secondary
meaning?)

Protection of trademark is afforded to products which have acquired secondary

meaning. Secondary meaning is usually done by a barrage of commercials implanting in
people’s mind that when the community talks about cat’s shadows, it directly refers to
Salve and her bags. Moreover, whether or not it was used in the first place as a descriptor,
because it has been associated for so long for such products (bags), it can be protected by
trademark but Salve’s business practice turned outdated and so no secondary meaning
can be derived therefrom. The cat’s shadows did not come to a situation where in upon
sight, it has been identified to be one of Salve’s bags.

The cats’s shadows has not become distinctive of Salve’s products. It did not reach
a point where it automatically identifies the bags and Salve, the maker. Assuming,
arguendo, that Salve indeed registers her bags to the IPOPHIL and has been doing so for
the 15 years being a fashion designer with an established name, she cannot claim that her
bag has attained secondary meaning to justify that her bag’s design (The one for
Wanderlust) is trademark protected. Nor can Salve seek the protective layer of Sec. 123
(d), R.A. 8293 just because her cat design was trademark protected. In the case of Pearl
& Dean vs. SMI, the Supreme Court discussed the doctrine of secondary meaning,
explaining that the general rule is: Sec. 123 prohibits the registration of a mark which falls
under any of its enumerations. But, the exception would be when the mark is identifiable
to the producer, and the same has established his/her/its mark to the public and has been
in a long usage as well as registered before the IPOPHIL.

In this case, Ron clearly did not commit trademark infringement because by the
use of a cat and a dog trademark in his bags, he neither intentionally or unintentionally
caused a ruckus upon Salve’s design of the use of a cat shadow in her own bags including
the The one for the Wanderlust. Nor is this so called “trademark infringement” that Salve
claims because Ron was once her retailer. In order for Salve to prove that Ron indeed
committed trademark infringement through secondary meaning, the trademark design
must have been in established for a long period of time that would concurrently establish
her reputation or association as the maker of that specific thing. Under Sec. 123.2, the
“long period of time” referred would be at least 5 years. In application, Salve failed the
test because she only started to incorporate her drawings in the design of her bag and
registered it for copyright in 2013. Nowhere in the facts stated that she had been
registering her design and bags to the IPOPHIL for 15 years. What she had alleged is that
she had established her reputation as a fashion (bag) designer in the fashion industry for
15 years, but not the long usage of her bags. Logically speaking, it does not follow that the
registration of her incorporated design under the The one for the Wanderlust and or
similar designs is directly and automatically associated to her 15 year bag designer career,
thereby entailing her designs attaining secondary meaning.
 Salve’s accusations is answered by an old jurisprudence:
“All that the applicant declares in his statement accompanying his
application is that the said trade-name has been continuously used
by it in business in the Philippines for about seven years, without
allegation or proof that the trade-name has become distinctive of the
applicant's business or services. “ (Ong vs. Director (1955))

Second, in order to attain secondary meaning, the trademark becomes distinctive

and it identifies the product and its maker. In this case, Salve’s design is a single shadow
figure of a cat facing on the left side replicated 8 times inside a suitcase-like mark design
in the The one for the Wanderlust and beside it are 3 green circles positioned in the
middle going down. Vis-à-vis Ron’s design which features a dog facing to the left with the
right arm raised and beside it is a cat facing the person. It is impossible for Salve to claim
copyright infringement on the ground of the design as deceptively or confusingly similar
with her mark. Even if Ron will not explain the significance of the cat and dog design, it
is pretty obvious that they are different from the other. As enunciated in the case of Kellog
Co. vs. National Biscuit Corp. (1938), the Doctrine of secondary meaning demands the
primary significance of the term of the design to the consuming public.

As Ron had explained in his defense, the purpose or significance of the trademark
of the cat and dog in his bags is to give the notion that his bags are unisexual in use (both
male and female customers can use his bags). He even pointed out that his mark is
incorporated to his murse. Regardless of the designs incorporated in both parties’ bags,
their usage and meaning is strikingly different.

Further, in relation to secondary meaning, Ron cannot be judged to have

committed unfair competition as though they are both selling fashion bags, their
trademark designs, after all, are completely different, together with its purpose.
Therefore, Salve’s product has no secondary meaning.