Ang v. Teodoro (G.R. No.
L-48226) geographically or
Facts:
Respondent Teodoro has long been using ‘Ang Tibay’
both as trademark and tradename in the manufacture
and sale of its slippers, shoes and indoor baseballs
when he formally registered it. Meanwhile, petitioner Ang
registered the same trademark ‘Ang Tibay’ for its
products of pants and shirts. Respondent moved to
cancel the registration of petitioner’s mark. The trial court
found for petitioner Ang. CA reversed the judgment.
Petitioner argues the validity of the mark being
descriptive; that it had not acquired secondary meaning
in favor of respondent; and that there can be no
infringement/unfair competition because the goods are
not similar.
Issues:
(1) Whether or not ‘ANG TIBAY’ is a descriptive term not
registrable.
(2) Whether or not the trademark ‘ANG TIBAY’ has
acquired a secondary meaning.
(3) Whether or not there is trademark infringement
and/or unfair competition between unrelated goods.
Ruling:
(1) NO. The phrase “Ang Tibay” is an exclamation
denoting administration of strength or durability. For
instance, one who tries hard but fails to break an object
exclaims, “Ang tibay!” (How strong!”) The phrase “ang
tibay” is never used adjectively to define or describe an
object. One does not say, “ang tibay sapatos” or
“sapatos ang tibay” is never used adjectively to define or
describe 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 a trademark or
tradename. 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 products she or her attorney as well as
the Director of Commerce was undoubtedly convinced
that said words (Ang Tibay) were not a descriptive term
and hence could be legally used and validly registered
as a trademark.
(2) NO. 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 originally incapable of exclusive appropriation
with reference to an article of the market, because
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 the purchasing public, the
word or phrase has come to mean that the article was
his product. We have said that the phrase “Ang Tibay,”
being neither geographic nor descriptive, was originally
capable of exclusive appropriation as a trade-mark. But
were it not so, the application of the doctrine of
secondary meaning made by the Court of Appeals could
nevertheless be fully sustained because, in any event,
by respondent’s long and exclusive use of said phrase
with reference to his products and his business, it has
acquired a proprietary connotation.
(3) YES. 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 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 to possess the
same 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 cause confusion as to the
origin, or personal source, of the second user’s goods.
They would be considered as not falling under the same
class only if they are so dissimilar or so foreign to each
other as to make it unlikely that the purchaser would
think the first user made the second user’s goods. 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 shoes manufactured by him,
it has come to indicate the origin and ownership of said
goods. It is certainly not farfetched to surmise that the
selection by petitioner of the same trade-mark for pants
and shirts was motivated by a desire to get a free ride on
the reputation and selling power it has acquired at the
hands of the respondent.
Ong Ang Gui v. Director of the Philippine Patent
Office (G.R. No. L-6235)

Facts:

Ong Ai Gui applied for the registration of the trade name

‘20th Century Nylon Shirts Factory’ to be used in his
general merchandising business dealing principally with
textiles. Respondent E.I. De Pont de Nemours and
Company opposed on the ground that the word ‘nylon’ is
a generic term for a fabric material and it is descriptive
and misdescriptive of petitioner’s goods. The Director
ruled that the application must be disapproved unless
the word ‘nylon’ is disclaimed.

Issue:

Whether or not the word ‘nylon’ being generic or

descriptive can acquire a secondary meaning to be
registrable.

Ruling: NO.

Used in connection with shirt-making, “Nylon” can never

become distinctive, can never acquire secondary
meaning, because it is a generic term, like cotton, silk,
linen, or ramie. Just as no length of use and no amount
of advertising will make “cotton,” “silk,” “linen,” or “ramie,”
distinctive of shirts or of the business of making them, so
no length of use and no amount of advertising will make
“nylon” distinctive of shirts or of the business of
manufacturing them.”

It must also be noted that no claim is made in the

application that the trade-name sought to be registered
has acquired what is known as a secondary meaning
within the provisions of paragraph (f) of section 4 of
Republic Act No. 166. 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. Furthermore, the use of the term “nylon” in the
trade-name is both “descriptive” and “deceptively and
misdescriptive” of the applicant-appellant’s business, for
apparently he does not use nylon in the manufacture of
the shirts, pants and wears that he produces and sells.
How can a secondary meaning be acquired if appellant’s
products are not made of nylon? Certainly no exclusive
right can be acquired by deception of fraud.

*The claim that a combination of words may be

registered as a trade-name is no justification for not
applying the rules or principles hereinabove mentioned.
The use of a generic term in a trade-name is always
conditional, i. e., subject to the limitation that the
registrant does not acquire the exclusive right to the
descriptive or generic term or word.
Bata Industries v CA

Facts:
The respondent New Olympian Rubber Products sought
to register the mark "BATA" for casual rubber shoe
products, alleging it had used the said mark since the
1970s. The petitioner, a Canadian corporation opposed
with its allegations that it owns and has not abandoned
said trademark. The petitioner has no license to do
business in the Philippines and the trademark has never
been registered in the Philippines by any foreign entity.
Bata Industries does not sell footwear under the said
trademark in the Philippines nor does it have any
licensing agreement with any local entity to sell its
product.

Evidence show that earlier, even before the World War

II, Bata shoes made by Gerbec and Hrdina (Czech
company) were already sold in the country. Some shoes
made by the petitioner may have been sold in the
Philippines ntil 1948. On the other hand, respondent
spent money and effort to popularize the trademark
"BATA" since the 70's. Moreover, it also secures 3
copyright registrations for the word "BATA". The
Philippine Patent Office (PPO) dismissed the opposition
by the petitioner while the Court of Appeals (CA)
reversed said decision. However, a 2nd resolution by the
CA affirmed the PPO decision.

Issue: Does the petitioner have the right to protect its

goodwill alleged to be threatened with the registration of
the mark?

NO. Bata Industries has no Philippine goodwill that

would be damaged by the registration of the mark.

Any slight goodwill obtained by the product before World

War II was completely abandoned and lost in the more
than 35 years that passed since Manila's liberation from
Japan. The petitioner never used the trademark either
before or after the war. It is also not the successor-in-
interest of Gerbec & Hrdina and there there was no
privity of interest between them, Furthermore, the Czech
trademark has long been abandoned in Czechoslovakia.
Sta.Ana v. Maliwat

Facts of the Case:

In 1962, Florentino Maliwat sought to register the
trademark "FLORMANN" used on shirts, pants, jackets
and shoes for ladies men and children. He claimed its
first use in commerce in 1955. Also in the same year
(1962), Jose P. Sta. Ana (Petitioner) filed an application
for the registration of the trademark "FLORMEN" (used
in ladies and children shoes). he claimed its first use in
commerce in 1959. Due to the confusing similarity , the
Director of the Patent Office ordered an interference.
Maliwat's application was then granted due to his prior
adoption and use while that of Sta. Ana was denied. It
was stipulated by the parties that 'Flormann' was used
as a trademark in 1953 and Maliwat used it on shoes in
1962.

Issue: Was there any trademark infringement

committed?

Ruling: YES. Both products of the parties have the same

descriptive properties, thus its trademark must be
protected.

The law does not require that the goods of the previous
user and the late user of the same mark should possess
the same descriptive properties or should fall into the
same categories in order to bar the latter from
registering his amrk. The meat of the matter is the
likelyhood of confusion, mistake or deception upon the
purchase of the goods of the parties. Herein, the
similarity of the mark 'FLORMANN' and the name
'FLORMEN', as well as the likelihood of confusion is
admitted. As such, Maliwat as prior adopter has a better
right to use the mark.
Phil. Refining Co. v. Ng Sam and Director of Patents
G.R. No. L-26676, July 30, 1982
Facts of the Case:
The petitioner Philippine Refining Co. first used'Camia'
as trademark for its products in 1922. In 1949, it caused
the registration of the said trademark for its lard, butter,
cooking oil, detergents, polishing materials and soap
products. In 1960, Ng Sam filed an application for
'Camia' for its ham product (Class 47), alleging its first
use in 1959. The petitioner opposed the said application
but the Patent Office allowed the registration of Ng Sam.
Issue: Is the product of Ng Sam (Ham) and those of the
petitioner so related that the use of the trademark
'Camia' on said goods would result to confusion as to
their origin?
The Court also held that the term subject to the case is
not uncommon in view of the fact that there were two
others distinct businesses bearing the same name. A
trademark must be affirmative and definite, significant
and distinctive, capable to indicate origin. It was held
that if a mark is so commonplace that it cannot be
readily distinguished from others, then he who first
adopted it cannot be injured by any subsequent
appropriation or imitation by others, and the public will
not be deceived. What then is to be reckoned with is the
similarity of the products under the mark. The similarity
is not on the classification of the property or character of
the product but on the sameness of the actual product
sold or manufactured. Such similarity is wanting in this
case.

HELD:
NO. The businesses of the parties are non-competitive
and the products are so unrelated that the use of the
same trademark will not give rise to confusion nor cause
damage to the petitioner. The right to a trademark is a
limited one, hence, others may use the same mark on
unrelated goods if no confusion would arise.

A trademark is designed to identify the user, hence, it

should be so distinctive and sufficiently original so as to
enable those who see it to recognize instantly its source
or origin. A trademark must be affirmative and definite,
significant and distinctive and capable of indicating
origin.

'Camia' as a trademark is far from being distinctive, It in

itself does not identify the petitioner as the manufacturer
of producer of the goods upon which said mark is used.
If a mark is so commonplace, it is apparent that it can't
identify a particular business and he who adopted it first
cannot be injured by any subsequent appropriation or
imitation by others and the public will not be deceived.

Mere classification of the goods cannot serve as the

decisive factor in the resolution of whether or not the
goods a related. Emphasis should be on the similarity of
products involved and not on arbitrary classification of
general description of their properties or characteristics.

The Court held that the businesses of the parties are

non-competitive and their products so unrelated that the
identical use of the mark ‘Camia” was not likely to give
rise to confusion, much less cause damage to petitioner.
The particular goods of the parties are so unrelated that
consumers would not in any probability mistake one as
the source or origin of the product of the other.
Petitioner’s goods are basically derived from vegetable
oil and animal fats, while the product of respondent is
processed from pig's legs.Furthermore, respondent had
on his product the business name "SAM'S HAM AND
BACON FACTORY" which would place no question on
the origin of the product.