Professional Documents
Culture Documents
Pigeons of THW Ghohael
Pigeons of THW Ghohael
The State shall recognize, respect, and protect the rights of indigenous
• ARTICLE XII National Economy and Patrimony cultural communities to preserve and develop their cultures, traditions, and institutions.
SECTION 6. The use of property bears a social function, and all economic agents shall It shall consider these rights in the formulation of national plans and policies.
contribute to the common good. Individuals and private groups, including corporations, SECTION 18. (1) The State shall ensure equal access to cultural opportunities through the
cooperatives, and similar collective organizations, shall have the right to own, establish, educational system, public or private cultural entities, scholarships, grants and other
and operate economic enterprises, subject to the duty of the State to promote incentives, and community cultural centers, and other public venues.
distributive justice and to intervene when the common good so demands. (2) The State shall encourage and support researches and studies on the arts and culture.
SECTION 14. The sustained development of a reservoir of national talents consisting of
Filipino scientists, entrepreneurs, professionals, managers, high-level technical B. Definition of trademarks
manpower and skilled workers and craftsmen in all fields shall be promoted by the State. Section 121.1, IPC - "Mark" means any visible sign capable of distinguishing the goods
The State shall encourage appropriate technology and regulate its transfer for the (trademark) or services (service mark) of an enterprise and shall include a stamped or
national benefit. marked container of goods.
The practice of all professions in the Philippines shall be limited to Filipino citizens, save
in cases prescribed by law. 1. Distilleria Washington v. CA, 263 SCRA 303, G.R. No. 120961 [17 October 1996]
• ARTICLE XIV Education, Science and Technology, Arts, Culture, and Sports Science and ISSUE: WON replevin can prosper? (NO)
Technology
SECTION 10. Science and technology are essential for national development and progress. La Tondeña Distillers, Inc. ("LTDI") filed a complaint against Distilleria Washington
The ("Washington") for replevin with damages. La Tondena sought to seize 350 c.c. white
State shall give priority to research and development, invention, innovation, and their flint bottles bearing the blown-in marks of "La Tondeña Inc." and "Ginebra San
utilization; and to science and technology education, training, and services. It shall Miguel" it allegedly owned. These bottles were allegedly being used by Washington
support indigenous, appropriate, and self-reliant scientific and technological capabilities, for its own "Gin Seven" products without the consent of LTDI.
and their application to the country’s productive systems and national life. LTDI asserted that, being the owner and registrant of the bottles, it was entitled to
SECTION 11. The Congress may provide for incentives, including tax deductions, to the protection so extended by R.A. 623, notwithstanding its sale of the gin product 1
encourage private participation in programs of basic and applied scientific research. contained in said bottles.
Scholarships, grants in aid, or other forms of incentives shall be provided to deserving Washington countered that R.A. No. 623 should not apply to gin, an alcoholic
science students, researchers, scientists, inventors, technologists, and specially gifted beverage which is unlike that of "soda water, mineral or aerated water, ciders, milks,
citizens. cream, or other lawful beverages" mentioned in the law, and in any case, ownership
SECTION 12. The State shall regulate the transfer and promote the adaptation of of the bottles should be held lawfully transferred to the buyers upon the sale of the
technology from all sources for the national benefit. It shall encourage the widest gin and containers at a single price. It asserts that it is the lawful owner of the
participation of private groups, local governments, and community-based organizations personal properties (18,157 empty bottles) involved in the petition.
in the generation and utilization of science and technology.
SECTION 13. The State shall protect and secure the exclusive rights of scientists, inventors, It is a fact that R.A. No. 623 extends trademark protection in the use of containers
artists, and other gifted citizens to their intellectual property and creations, particularly duly registered with the Philippine Patent Office. The pertinent provisions of R.A. 623
when beneficial to the people, for such period as may be provided by law. reads:
Arts and Culture Sec. 1. Persons engaged or licensed to engage in the manufacture, bottling,
SECTION 14. The State shall foster the preservation, enrichment, and dynamic evolution or selling of soda water, mineral or aerated waters, cider, milk, cream or
of a other lawful beverages in bottles, boxes, casks, kegs, or barrels, and other
Filipino national culture based on the principle of unity in diversity in a climate of free similar containers…with their names or the names of their principals or
artistic and intellectual expression. products, or other marks of ownership stamped or marked thereon, may
SECTION 15. Arts and letters shall enjoy the patronage of the State. The State shall register with the Philippine Patent Office a description of the names or
conserve, promote, and popularize the nation’s historical and cultural heritage and marks, and the purpose for which the containers so marked are used by
resources, as well as artistic creations. them, under the same conditions, rules, and regulations, made applicable
SECTION 16. All the country’s artistic and historic wealth constitutes the cultural treasure by law or regulation to the issuance of trademarks.
of the nation and shall be under the protection of the State which may regulate its Sec. 2. It shall be unlawful for any person, without the written consent of
disposition. the manufacturer, bottler, or seller, who has successfully registered the
marks of ownership in accordance with the provisions of the next
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO H. TAN, 2018
preceding section, to fill such bottles, boxes, kegs, barrels, steel cylinders, comprising that ownership. The incorporeal right, however, is distinct from the
tanks, flasks, accumulators, or other similar containers so marked or property in the material object subject to it. Ownership in one does not necessarily
stamped, for the purpose of sale, or to sell, dispose of, buy or traffic in, or vest ownership in the other. Thus, the transfer or assignment of the intellectual
wantonly destroy the same, whether filled or not to use the same for property will not necessarily constitute a conveyance of the thing it covers, nor
drinking vessels or glasses or drain pipes, foundation pipes, for any other would a conveyance of the latter imply the transfer or assignment of the intellectual
purpose than that registered by the manufacturer, bottler or seller. Any right.
violation of this section shall be punished by a fine of not more than one
thousand pesos or imprisonment of not more than one year or both. R.A. No. 623 evidently does not disallow the sale or transfer of ownership of the
Sec. 3. The use by any person other than the registered manufacturer, marked bottles or containers. In fact, the contrary is implicit in the law. Ownership
bottler or seller, without written permission of the latter of any such of the containers passes to the consumer albeit subject to the statutory limitation
bottle, cask, barrel, keg, box, steel cylinders, tanks, flask, accumulators, or on the use of the registered containers and to the trademark right of the registrant.
other similar containers, or the possession thereof without written
permission of the manufacturer, by any junk dealer or dealer in casks, While it may be unwarranted then for LTDI to simply seize the empty containers, this
barrels, kegs, boxes, steel cylinders, tanks, flasks, accumulators or other Court finds it to be legally absurd, however, to still allow petitioner to recover the
similar containers, the same being duly marked or stamped and registered possession thereof. The fact of the matter is that R.A. 623, as amended, in affording
as herein provided, shall give rise to a prima facie presumption that such trademark protection to the registrant, has additionally expressed a prima facie
use or possession is unlawful. presumption of illegal use by a possessor whenever such use or possession is without
the written permission of the registered manufacturer, a provision that is neither
HELD: arbitrary nor without appropriate rationale. Indeed, the appellate court itself has
Citing Cagayan Valley Enterprises, Inc., vs. Court of Appeals, the court held that the made a finding of such unauthorized use by petitioner. The Court sees no other
mere use of registered bottles or containers without the written consent of the logical purpose for petitioner's insistence to keep the bottles, except for such
manufacturer is prohibited, the only exceptions being when they are used as continued use. The practical and feasible alternative is to merely require the
containers for "sisi," "bagoong," "patis" and similar native products. The contention payment of just compensation to petitioner for the bottles seized from it by LTDI.
that the aforementioned bottles without the words "properly of" indicated thereon Conventional wisdom, along with equity and justice to both parties, dictates it. 2
are not the registered bottles of LTI, since they do not conform with the statement
or description in the supporting affidavits attached to the original registration C. Functions of trademarks
certificate and renewal, is untenable. 2. Ang v. Teodoro, 74 Phil. 50 [14 December 1942]
ISSUE:
Republic Act No. 623 which governs the registration of marked bottles and 1) WON the words “Ang Tibay” is a descriptive word and hence cannot be
containers merely requires that the bottles, in order to be eligible for registration, registered as a trademark? (NO)
must be stamped or marked with the names of the manufacturers or the names of 2) WON the doctrine of secondary meaning applies? (NO)
their principals or products, or other marks of ownership. No drawings or labels are 3) WON pants and shirts are similar goods? (YES)
required.
Toribio Teodoro has continuously used "Ang Tibay," both as a trade-mark and as a
The law clearly shows the legislative intent to give protection to all marked bottles trade-name, in the manufacture and sale of slippers, shoes, and indoor baseballs
and containers of all lawful beverages regardless of the nature of their contents. The since 1910. He formally registered it as trade-mark and as trade-name and spent for
words "other lawful beverages" is used in its general sense, referring to all beverages advertisement from 1919 to 1938. Ang registered the same trade-mark "Ang Tibay"
not prohibited by law. Beverage is defined as a liquor or liquid for drinking. Hard for pants and shirts and established a factory for the manufacture of said articles.
liquor, although regulated, is not prohibited by law, hence it is within the purview The records do not shows how much Ang has spent or advertisement. But Toribio in
and coverage of Republic Act No. 623. his brief says that Ang "was unable to prove that she had spent a single centavo
advertising "Ang Tibay" shirts and pants prior to 1938.
A trademark refers to a word, name, symbol, emblem, sign or device or any
combination thereof adopted and used by a merchant to identify, and distinguish Ang contends that the phrase "Ang Tibay" is a descriptive term because it means
from others, his goods of commerce. It is basically an intellectual creation that is "strong, durable, lasting."
susceptible to ownership and gives rise to its own elements of jus posidendi, jus
utendi, jus fruendi, jus disponendi, and jus abutendi, along with the applicable jus lex,
The word "tussin" figures as a component of both trademarks. It is "the common In the solution of a trademark infringement problem, regard too should be given to
practice in the drug and pharmaceutical industries to 'fabricate' marks by using the class of persons who buy the particular product and the circumstances ordinarily
syllables or words suggestive of the ailments for which they are intended and adding attendant to its acquisition.
thereto distinctive prefixes or suffixes."The "tussin” was derived from the Latin root- • The medicinal preparation clothed with the trademarks in question, are
word "tussis" meaning cough. unlike articles of everyday use which may be freely obtained by anyone,
anytime, anywhere. Cough syrups are to be dispensed upon medical
"Tussin" is merely descriptive; it is generic; it furnishes to the buyer no indication prescription. The respective labels say so.
of the origin of the goods; it is open for appropriation by anyone. It is accordingly • An intending buyer must have to go first to a licensed doctor of medicine;
barred from registration as trademark. While "tussin" by itself cannot thus be used he knows what he is to buy. He is not of the unsuspecting type; he
exclusively to identify one's goods, it may properly become the subject of a examines the product sold to him; he checks to find out whether it
trademark "by combination with another word or phrase". And this union of words conforms to the medical prescription.
is reflected in petitioner's Pertussin and respondent's Atussin, the first with prefix • Similarly, the pharmacist or druggist verifies the medicine sold. The margin
"Per" and the second with Prefix "A." of error in the acquisition of one for the other is quite remote.
Section 3. Application by non-residents. - Any person filing an application for the 5. Unno Commercial Enterprises v. General Milling Corp., 120 SCRA 904, G.R. No. L-
registration of a mark or trade-name, who is not a resident of the Philippines, must 28554 [28 February 1983]
appoint an agent or representative in the Philippines upon whom notice or process
relating to the application or registration of the mark or trade-name may be served. In Doctrine: Only the owner of a trademark, trade name or service mark may applly
the event of death, absence or inability of the agent or representative, a new agent or for its registration and an importer, broker, indentor or distributor acquires no
representative must be appointed, and notice thereof must be filed in the Patent Office. rights to the trademark of the goods he is dealing with in the absence of a valid
Upon failure to maintain an agent or representative of record in the Patent Office, transfer or assignment of the trade mark.
service on the Director shall be deemed sufficient.
ISSUE: WON right to register is based on ownership? (YES)
Section 4. Registration of trade-marks, trade-names and service-marks. - The owner of
a trade-mark, trade-name or service-mark used to distinguish his goods, business or General Milling filed an application for the registration of the trademark "All
services from the goods, business or services of others shall have the right to register Montana" to be used in the sale of wheat flour. But the same trademark was
the same, unless it: previously registered in favor of Unno Commercial, hence the Chief Trademark
(a) Consists of or comprises immoral, deceptive or scandalous matter; or matter which Examiner declared an interference proceeding, to determine which party has
may disparage or falsely suggest a connection with persons, living or dead, previously adopted and used the trademark "All Montana".
institutions, beliefs, or national symbols, or bring them into contempt or disrepute;
(b) Consists of or comprises the flag or coat of arms or other insignia of the Philippines General Milling, in its application for registration, alleged that it started using the
or any of its political subdivisions, or of any foreign nation, or any simulation trademark "All Montana" in 1955 and subsequently was licensed to use the same by
thereof; Centennial Mills by virtue of a deed of assignment. On the other hand Unno
(c) Consists of or comprises a name, portrait, or signature identifying a particular living Commercial argued that the same trademark had been registered in its favor in 1962
individual except by his written consent, or the name, signature, or portrait of a 7
asserting that it started using the trademark in 1956, as indentor or broker for S.H.
deceased President of the Philippines, during the life of his widow, if any, except Huang Bros, a local firm.
by the written consent of the widow ;
(d) Consists of or comprises a mark or trade-name which so resembles a mark or trade- The Director of Patents ruled in favor of respondent General Milling as the prior-user
name registered in the Philippines or a mark or trade-name previously used in the of the trademark ALL MONTANA.
Philippines by another and not abandoned, as to be likely, when applied to or used
in connection with the goods, business or services of the applicant, to cause Unno based its claim of ownership over the trademark in question by the fact that it
confusion or mistake or to deceive purchases; or acted as an indentor or broker for S. H. Huang, a local importer of wheat flour,
(e) Consists of a mark or trade-name which, when applied to or used in connection offering as evidence the various shipments, documents, invoices and other
with the goods, business or services of the applicant is merely descriptive or correspondence of Centennial Mills, shipping bags of All Montana to the Philippines.
deceptively misdescriptive of them, or when applied to or used in connection with It maintained that anyone, whether he is only an importer, broker or indentor can
the goods, business or services of the applicant is primarily geographically appropriate, use and own a particular mark of its own choice although he is not the
descriptive or deceptively misdescriptive of them, or is primarily merely a surname. manufacturer of the goods he deals with. Petitioner insists that "the appropriation
and ownership of a particular trademark is not merely confined to producers or
Except as expressly excluded in paragraphs (a), (b), (c) and (d) of this section, nothing manufacturers but likewise to anyone who lawfully deals in merchandise who
herein shall prevent the registration of a mark or trade-name used by the applicant renders any lawful service in commerce, like petitioner in the case at bar.
which has become distinctive of the applicant's goods, business or services.
HELD:
The Director may accept as PRIMA FACIE EVIDENCE that the mark or trade-name has The right to register trademark is based on ownership. The term owner does not
become distinctive, as applied to or used in connection with the applicant's goods, include the importer of the goods bearing the trademark, trade name, service
business or services, proof of SUBSTANTIALLY EXCLUSIVE AND CONTINUOUS USE mark, or other mark of ownership, unless such importer is actually the owner
thereof as a mark or trade-name by the applicant in connection with the sale of goods, thereof in the country from which the goods are imported. A local importer,
however, may make application for the registration of a foreign trademark, trade
The respondent registered its trademark in 1979. It has continuously used that name To sustain a successful prosecution of their suit for infringement, petitioners, as
in commerce. It has established a goodwill through extensive advertising. The people foreign corporations not engaged in local commerce, rely on section 21-A of the
who buy at Isetann Store do so because of Isetann's efforts. There is no showing that Trademark Law reading as follows:
the Japanese firm's registration in Japan or Hongkong has any influence whatsoever Sec. 21-A. Any foreign corporation or juristic person to which a mark or trade-name 10
on the Filipino buying public. has been registered or assigned under this act may bring an action hereunder for
infringement, for unfair competition, or false designation of origin and false
7. Philip Morris v. CA, 224 SCRA 576, G.R. No. 91332 [16 July 1993] description, whether or not it has been licensed to do business in the Philippines
under the Corporation Law, at the time it brings complaint:
ISSUE:
Provided, That the country of which the said foreign corporation or juristic person
1) WON preliminary injunction should be granted? (NO, no clear right) is a citizen or in which it is domiciled, by treaty, convention or law, grants a similar
2) WON there has been an invasion of plaintiffs' right of property to such privilege to corporate or juristic persons of the Philippines.
trademark or trade name.
to drive home the point that they are not precluded from initiating a cause of action
Philip Morris is a US corporation not doing business in the Philippines but is suing on in the Philippines on account of the principal perception that another entity is
an isolated transaction. As registered owners "MARK VII", "MARK TEN", and "LARK" pirating their symbol without any lawful authority to do so. Judging from a perusal
per certificates of registration issued by the Philippine Patent Office, Philip Morris of the aforequoted Section 21-A, the conclusion reached by petitioners is certainly
asserted that Fortune Tobacco has no right to manufacture and sell cigarettes correct. The foreign corporation is allowed thereunder to sue "whether or not it has
bearing the allegedly identical or confusingly similar trademark "MARK" in been licensed to do business in the Philippines" pursuant to the Corporation Law.
contravention of Section 22 of the Trademark Law, and should, therefore, be
precluded during the pendency of the case from performing the acts complained of However, the provision was qualified to the effect that a foreign corporation not
via a preliminary injunction. doing business in the Philippines may have the right to sue before Philippine Courts,
but it is not sufficient for a foreign corporation suing under Section 21-A to simply
Fortune Tobacco alleged that allege its alien origin. Rather, it must additionally allege its personality to sue.
1) it has been authorized by the BIR to manufacture and sell cigarettes Relative to this condition precedent, it may be observed that petitioners were not
bearing the trademark "MARK", and that "MARK" is a common word remiss in averring their personality to lodge a complaint for infringement especially
which cannot be exclusively appropriated so when they asserted that the main action for infringement is anchored on an
isolated transaction.
HELD: Considering that R.A. No. 166 mandates actual use of the marks and/or 9. Shangrila v. DGCI, G.R. 159938, 31 March 2006
emblems in local commerce and trade before they may be registered and ISSUE:
ownership thereof acquired, the petitioners cannot, therefore, dispense with the 1. WON DGCI had the right to file an application for registration of the "Shangri-
element of actual use. Their being nationals of member-countries of the Paris La" mark and "S" logo although it never had any prior actual commercial use
Union does not alter the legal situation. thereof; (NO)
2. WON SHANG should be prohibited from continuing their use of the mark and
Following universal acquiescence and comity, our municipal law on trademarks logo in question. (NO)
regarding the requirements of actual use in the Philippines must subordinate an
international agreement inasmuch as the apparent clash is being decided by a At the core of the controversy are the "Shangri-La" mark and "S" logo.
municipal tribunal. Withal, the fact that international law has been made part of the
law of the land does not by any means imply the primacy of international law over Developers Group of Companies, Inc. (DGCI) claims ownership of said mark and logo
national law in the municipal sphere. Under the doctrine of incorporation as applied in the Philippines on the strength of its prior use thereof within the country. As DGCI
in most countries, rules of International Law are given a standing equal, not superior, stresses at every turn, it filed in 1982 an application for registration covering the
to national legislative enactments. subject mark and logo. The BPTTT (Bureau of Patents, Trademarks and Technology 12
Transfer) issued in favor of DGCI the corresponding certificate of registration
In other words, (a foreign corporation) may have the capacity to sue for infringement therefor. Since then, DGCI started using the "Shangri-La" mark and "S" logo in its
… but the question of whether they have an exclusive right over their symbol as to restaurant business.
justify issuance of the controversial writ will depend on actual use of their
trademarks in the Philippines in line with Sections 2 and 2-A of the same law. It is On the other hand, the Kuok family owns and operates a chain of hotels with interest
thus incongruous for petitioners to claim that when a foreign corporation not in hotels and hotel-related transactions since 1969. It adopted the name "Shangri-
licensed to do business in the Philippines files a complaint for infringement, the La" as part of the corporate names of all companies organized under the aegis of the
entity need not be actually using its trademark in commerce in the Philippines. Such Kuok Group of Companies. The Kuok Group has used the name "Shangri-La" in all
a foreign corporation may have the personality to file a suit for infringement but it Shangri-La hotels and hotel-related establishments around the world which they
may not necessarily be entitled to protection due to absence of actual use of the owned. All hotels owned, operated and managed by the aforesaid SLIHM Group of
emblem in the local market. Companies adopted and used the distinctive lettering of the name "Shangri-La" as
part of their trade names.
Contrary to what petitioners suggest, the registration of trademark cannot be
deemed conclusive as to the actual use of such trademark in local commerce. As it From the records, it appears that Shangri-La Singapore commissioned a Singaporean
were, registration does not confer upon the registrant an absolute right to the design artist, a certain Mr. William Lee, to conceptualize and design the logo of the
registered mark. The certificate of registration merely constitutes prima facie Shangri-La hotels. Since 1975 and up to the present, the "Shangri-La" mark and "S"
evidence that the registrant is the owner of the registered mark. Evidence of non- logo have been used consistently and continuously by all Shangri-La hotels and
usage of the mark rebuts the presumption of trademark ownership, as what companies in their paraphernalia, such as stationeries, envelopes, business forms,
happened here when petitioners no less admitted not doing business in this country. menus, displays and receipts. The Kuok Group and/or SLIHM caused the registration
of, and in fact registered, the "Shangri-La" mark and "S" logo in the patent offices in
Most importantly, we stress that registration in the Philippines of trademarks does different countries around the world.
not ipso facto convey an absolute right or exclusive ownership thereof… trademark
Admittedly, the CA was not amiss in saying that the law requires the actual use in However, while the Philippines was already a signatory to the Paris Convention, the
commerce of the said trade name and S logo in the Philippines. Hence, consistent IPC only took effect on January 1, 1988, and in the absence of a retroactivity clause,
with its finding that the bulk of the petitioners' evidence shows that the alleged use R.A. No. 166 still applies. Under the prevailing law and jurisprudence at the time, the
of the Shangri-La trade name was done abroad and not in the Philippines, it CA had not erred in ruling that:
is understandable for that court to rule in respondents favor. Unfortunately, what The Paris Convention mandates that protection should be afforded to
the CA failed to perceive is that there is a crucial difference between the internationally known marks as signatory to the Paris Convention, without
aforequoted Section 2 and Section 2-A of R.A. No. 166. For, while Section 2 provides regard as to whether the foreign corporation is registered, licensed or
for what is registrable, Section 2-A, on the other hand, sets out how ownership is doing business in the Philippines. It goes without saying that the same
acquired. These are two distinct concepts. runs afoul to Republic Act No. 166, which requires the actual use in
commerce in the Philippines of the subject mark or devise. The apparent
Under Section 2, in order to register a trademark, one must be the owner thereof conflict between the two (2) was settled by the Supreme Court in this wise
and must have actually used the mark in commerce in the Philippines for 2 months –
prior to the application for registration. Since ownership of the trademark is Following universal acquiescence and comity, our municipal law on
required for registration, Section 2-A of the same law sets out to define how one trademarks regarding the requirement of actual use in the Philippines
goes about acquiring ownership thereof. Under Section 2-A, it is clear that actual use must subordinate an international agreementinasmuch
in commerce is also the test of ownership but the provision went further by as the apparent clash is being decided by a municipal tribunal. Withal, the
We agree, however, that the ownership of the trade-mark "Agua de Kananga" did The defendant appealed. That motion was denied and the defendant later made the
not give the plaintiffs a right to the exclusive use of the word "Kananga." same motion to the Supreme Court, which was also denied.
• The defendant alleged in his answer that the word "Kananga" could not be
used as a trade-mark because it was the name of a flower. In spite of the existence of the injunction the defendant continued to use the words
• RTC held the word "Kananga" represents the name of a well-known tree in "Alhambra Isabelas" on its cigarettes; and plaintiff began a proceeding in the trial
the Philippines. This finding has not been disputed by the plaintiffs, who court to punish the defendant for a violation of the injunction. Defendant was found
simply allege that the spelling of the said word indicates that it is foreign guilty of competent of court for the violation of the injunction referred to. Thereafter
to the Spanish language. the defendant placed on its cigarettes the words, "Alhambra Isabela," simply
• It is apparent, therefore, that the said word could not be used exclusively changing the word "Isabelas" to "Isabela." It also placed on the back of the packages
as a trade-mark, any more than could the words "sugar," "tobacco," or the words "Blue Ribbon Cigarillos" as a distinctive name or brand for its cigarettes.
"coffee."
• "A designation or part of a designation which relates only to the name, Believing that defendant was still violating the injunction, plaintiff began another
quality, or description of the merchandise ... cannot be the subject of a proceeding to punish it for contempt. Defendant was found guilty of violating the
trade-mark." The denominations generally used in commerce for the injunction. From that judgment defendant appealed to this court and that is the
purpose of designating a class of goods could not be the subject of labels appeal we are now considering.
or trade-marks.
The appellant contends here:
The finding of the court that the plaintiffs have no right to the exclusive use of the word 1) The injunction is indefinite and uncertain to such an extent that a person
"Kananga" is sustained. of ordinary intelligence would be unable to comply with it and still protect
his acknowledged rights;
"Ang Tibay" is not a descriptive term within the meaning of the Trade-Mark Law but There can be unfair competition or unfair trading even if the goods are non-
rather a fanciful or coined phrase which may properly and legally be appropriated as competing, and that such unfair trading can cause injury or damage to the first user
a trade-mark or trade-name. In this connection we do not fail to note that when the of a given trade-mark,
petitioner herself took the trouble and expense of securing the registration of these 1) by prevention of the natural expansion of his business and,
same words as a trademark of her products she or her attorney as well as the 2) by having his business reputation confused with and put at the mercy of
Director of Commerce was undoubtedly convinced that said words (Ang Tibay) were the second user.
not a descriptive term and hence could be legally used and validly registered as a
trade-mark. Experience has demonstrated that when a well-known trade-mark is adopted by
another even for a totally different class of goods, it is done to get the benefit of the
The function of a trade-mark is to point distinctively, either by its own meaning or reputation and advertisements of the originator of said mark, to convey to the public
by association, to the origin or ownership of the wares to which it is applied. "Ang a false impression of some supposed connection between the manufacturer of the
Tibay," as used by Toribio to designate his wares, had exactly performed that article sold under the original mark and the new articles being tendered to the public
function for 22 years before the Ang adopted it as a trade-mark in her own business. under the same or similar mark. The owner of a trade-mark or trade-name has a
Ang Tibay shoes and slippers are, by association, known throughout the Philippines property right in which he is entitled to protection, since there is damage to him
as products of the Ang Tibay factory owned and operated by the respondent Toribio from confusion of reputation or goodwill in the mind of the public as well as from
Teodoro. confusion of goods. The modern trend is to give emphasis to the unfairness of the
acts and to classify and treat the issue as a fraud.
92