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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 Appeals
reversing that of the Court of First Instance of Manila and directing the Director of Commerce to
cancel the registration of the trademar! "Ang #ibay" in favor of said petitioner, and perpetually
enjoining the latter from using said trademar! on goods manufactured and sold by her.
$espondent #oribio #eodoro, at first in partnership %ith &uan 'atindig and later as sole
proprietor, has continuously used "Ang #ibay," both as a trademar! and as a tradename, in the
manufacture and sale of slippers, shoes, and indoor baseballs since ()(*. +e formally registered
it as trademar! on ,eptember -), ()(., and as tradename on &anuary /, ()//. #he gro%th of
his business is a thrilling epic of Filipino industry and business capacity. ,tarting in an obscure
shop in ()(* %ith a modest capital of P-(* but %ith tireless industry and unlimited perseverance,
#oribio #eodoro, then an un!no%n young man ma!ing slippers %ith his o%n hands but no% a
prominent business magnate and manufacturer %ith a large factory operated %ith modern
machinery by a great number of employees, has steadily gro%n %ith his business to %hich he has
dedicated the best years of his life and %hich he has e0panded to such proportions that his gross
sales from ()(1 to ()/1 aggregated P1,212,*-..3.. +is sales in ()/2 amounted to P(,-)),/4/.(*
and in ()/1, P(,(//,(3..22. +is e0penses for advertisement from ()() to ()/1 aggregated
P-(*,34(..3.
Petitioner 5defendant belo%6 registered the same trademar! "Ang #ibay" for pants and shirts on
April ((, ()/-, and established a factory for the manufacture of said articles in the year ()/2. In
the follo%ing year 5()/16 her gross sales amounted to P4--,31-.*). 7either the decision of the
trial court nor that of the Court of Appeals sho%s ho% much petitioner has spent or
advertisement. 8ut respondent in his brief says that petitioner "%as unable to prove that she had
spent a single centavo advertising "Ang #ibay" shirts and pants prior to ()/1. In that year she
advertised the factory %hich she had just built and it %as %hen this %as brought to the attention
of the appellee that he consulted his attorneys and eventually brought the present suit."
#he trial court 5&udge 9uirico Abeto6 presiding absolved the defendant from the complaint, %ith
costs against the plaintiff, on the grounds that the t%o trademar!s are dissimilar and are used on
different and noncompeting goods: that there had been no e0clusive use of the trademar! by the
plaintiff: and that there had been no fraud in the use of the said trademar! by the defendant
because the goods on %hich it is used are essentially different from those of the plaintiff. #he
second division of the Court of Appeals, composed of &ustices 8engson, Padilla, ;ope< =ito,
#uason, and Ale0 $eyes, %ith &ustice Padilla as ponente, reversed that judgment, holding that by
uninterrupted an e0clusive use since ()( in the manufacture of slippers and shoes, respondent>s
trademar! has ac?uired a secondary meaning: that the goods or articles on %hich the t%o trade
mar!s are used are similar or belong to the same class: and that the use by petitioner of said
trademar! constitutes a violation of sections / and 2 of Act 7o. 333. #he defendant Director of
Commerce did not appeal from the decision of the Court of Appeals.
First. Counsel for the petitioner, in a %ell%ritten brief, ma!es a frontal sledgehammer attac! on
the validity of respondent>s trademar! "Ang #ibay." +e contends that the phrase "Ang #ibay" as
employed by the respondent on the articles manufactured by him is a descriptive term because,
"freely translate in @nglish," it means "strong, durable, lasting." +e invo!es section - of Act 7o.
333, %hich provides that %ords or devices %hich related only to the name, ?uality, or description
of the merchandise cannot be the subject of a trademar!. +e cites among others the case of
Baxter vs. Zuazua 5. Phil., (36, %hich involved the trademar! "Agua de 'ananga" used on toilet
%ater, and in %hich this Court held that the %ord "'ananga," %hich is the name of a %ell!no%n
Philippine tree or its flo%er, could not be appropriated as a trademar! any more than could the
%ords "sugar," "tobacco," or "coffee." An the other hand, counsel for the respondent, in an
e?ually %ellprepared and e0haustive brief, contend that the %ords "Ang #ibay" are not
descriptive but merely suggestive and may properly be regarded as fanciful or arbitrary in the
legal sense. #he cite several cases in %hich similar %ords have been sustained as valid trade
mar!s, such as "+oleproof" for hosiery,
(
"ideal for tooth brushes,
-
and "Fashion!nit" for nec!ties
and s%eaters.
/
Be find it necessary to go into the etymology and meaning of the #agalog %ords "Ang #ibay" to
determine %hether they are a descriptive term, i.e., %hether they relate to the ?uality or
description of the merchandise to %hich respondent has applied them as a trademar!. #he %ord
"ang" is a definite article meaning "the" in @nglish. It is also used as an adverb, a contraction of
the %ord "anong" 5%hat or ho%6. For instance, instead of saying, "Anong gandaC" 5"+o%
beautifulC"6, %e ordinarily say, "Ang gandaC" Tiba is a root %ord from %hich are derived the
verb ma!patiba 5to strenghten: the nouns pa!"amatiba 5strength, durability6, "atibaan 5proof,
support, strength6, "atiba#tibaan 5superior strength6: and the adjectives matibay 5strong,
durable, lasting6, napa"atiba 5very strong6, "asintiba or ma!"asintiba 5as strong as, or of
e?ual strength6. #he phrase "Ang #ibay" is an e0clamation denoting administration of strength or
durability. For instance, one %ho tries hard but fails to brea! an object e0claims, "Ang tibayC"
5+o% strongC"6 It may also be used in a sentence thus, "$n! tiba n! sapatos moC" 5+o% durable
your shoes areC"6 #he phrase "an! tiba" is never used adjectively to define or describe an object.
Ane does not say, "an! tiba sapatos" or "sapatos an! tiba" is never used adjectively to define
or describe an object. Ane does not say, "an! tiba sapatos" or "sapatos an! tiba" to mean
"durable shoes," but "matiba na sapatos" or "sapatos na matiba."
From all of this %e deduce that "Ang #ibay" is not a descriptive term %ithin the meaning of the
#radeMar! ;a% but rather a fanciful or coined phrase %hich may properly and legally be
appropriated as a trademar! or tradename. In this connection %e do not fail to note that %hen
the petitioner herself too! the trouble and e0pense of securing the registration of these same
%ords as a trademar! of her products she or her attorney as %ell as the Director of Commerce
%as undoubtedly convinced that said %ords 5Ang #ibay6 %ere not a descriptive term and hence
could be legally used and validly registered as a trademar!. It seems stultifying and puerile for
her no% to contend other%ise, suggestive of the story of sour grapes. Counsel for the petitioner
says that the function of a trademar! is to point distinctively, either by its o%n meaning or by
association, to the origin or o%nership of the %ares to %hich it is applied. #hat is correct, and %e
find that "Ang #ibay," as used by the respondent to designate his %ares, had e0actly performed
that function for t%entyt%o years before the petitioner adopted it as a trademar! in her o%n
business. Ang #ibay shoes and slippers are, by association, !no%n throughout the Philippines as
products of the Ang #ibay factory o%ned and operated by the respondent #oribio #eodoro.
%econd. In her second assignment of error petitioner contends that the Court of Appeals erred in
holding that the %ords "Ang #ibay" had ac?uired a secondary meaning. In vie% of the
conclusion %e have reached upon the first assignment of error, it is unnecessary to apply here the
doctrine of "secondary meaning" in trademar! parlance. #his doctrine is to the effect that a %ord
or phrase originally incapable of e0clusive appropriation %ith reference to an article of the
mar!et, because geographically or other%ise descriptive, might nevertheless have been used so
long and so e0clusively by one producer %ith reference to his article that, in that trade and to that
branch of the purchasing public, the %ord or phrase has come to mean that the article %as his
product. 5D. E C. Merriam Co. vs. ,alfield, ()1 F., /3), /2/.6 Be have said that the phrase "Ang
#ibay," being neither geographic nor descriptive, %as originally capable of e0clusive
appropriation as a trademar!. 8ut %ere 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 e0clusive use of said phrase %ith reference to his products and
his business, it has ac?uired a proprietary connotation. 5;anders, Frary, and Clar! vs. Fniversal
Cooler Corporation, 1. F. G-dH, 43.6
Third. Petitioner>s third assignment of error is, that the Court of Appeals erred in holding that
pants and shirts are goods similar to shoes and slippers %ithin the meaning of sections / and 2 of
Act 7o. 333. ,he also contends under her fourth assignment of error 5%hich %e deem convenient
to pass upon together %ith the third6 that there can neither be infringement of trademar! under
section / nor unfair competition under section 2 through her use of the %ords "Ang #ibay" in
connection %ith pants and shirts, because those articles do not belong to the same class of
merchandise as shoes and slippers.
#he ?uestion raised by petitioner involve the scope and application of sections /,2, ((, (/, and
-* of the #radeMar! ;a% 5Act 7o. 333.6 ,ection / provides that "any person entitled to the
e0clusive use of a trademar! to designate the origin or o%nership of goods he has made or deals
in, may recover damages in a civil actions from any person %ho has sold goods of a similar !ind,
bearing such trademar! . . . #he complaining party . . . may have a preliminary injunction, . . .
and such injunction upon final hearing, if the complainant>s property in the trademar! and the
defendant>s violation thereof shall be fully established, shall be made perpetual, and this
injunction shall be part of the judgment for damages to be rendered in the same cause." ,ection 2
provides that any person %ho, in selling his goods, shall give them the general appearance of the
goods of another either in the %rapping of the pac!ages, or in the devices or %ords thereon, or in
any other feature of their appearance, %hich %ould be li!ely to influence purchasers to believe
that the goods offered are those of the complainant, shall be guilty of unfair competition, and
shall be liable to an action for damages and to an injunction, as in the cases of trademar!
infringement under section /. ,ection (( re?uires the applicant for registration of a trademar! to
state, among others, "the !eneral class of merchandise to %hich the trademar! claimed has been
appropriated." ,ection (/ provides that no alleged trademar! or trade name shall be registered
%hich is identical %ith a registered or !no%n trademar! o%ned by another and appropriate to
the same class of merchandise, or %hich to nearly resembles another person>s la%ful trademar!
or tradename as to be li!ely to cause confusion or mista!e in the mind of the public, or to
deceive purchasers. And section - authori<es the Director of Commerce to establish classes of
merchandise for the purpose of the registration of trademar!s and to determine the particular
description of articles included in each class: it also provides that "an application for registration
of a trademar! shall be registered only for one class of articles and only for the particular
description of articles mentioned in said application."
Be have underlined the !ey %ords used in the statuteI "goods of a similar !in," "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. #hese phrases, %hich refer
to the same thing, have the same meaning as the phrase "merchandise of the same descriptive
properties" used in the statutes and jurisprudence of other jurisdictions.
#he burden of petitioner>s argument is that under sections (( and -* the registration by
respondent of the trademar! "Ang #ibay" for shoes and slippers is no safeguard 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
mar! under section / because respondent>s mar! is not a valid trademar!, nor has it ac?uired 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 2 because the
use by her of the trademar! "Ang #ibay" upon pants and shirts is not li!ely to mislead the
general public as to their origin or o%nership: and that there is no% sho%ing that she in unfairly
or fraudulently using that mar! "Ang #ibay" against the respondent. If %e %ere interpreting the
statute for the first time and in the first decade of the t%entieth century, %hen it %as enacted, and
%ere to construe it strictly and literally, %e might uphold petitioner>s contentions. 8ut la% and
jurisprudence must !eep abreast %ith the progress of man!ind, and the courts must breathe life
into the statutes if they are to serve their purpose. Aur #rademar! ;a%, enacted nearly forty
years ago, has gro%n in its implications and practical application, li!e 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 the civili<ed %orld from %hose jurisprudence it has also received vitali<ing
nourishment. Be have to apply this la% as it has gro%n and not as it %as born. Its gro%th or
development abreast %ith that of sister statutes and jurisprudence in other jurisdictions is
reflected in the follo%ing observation of a %ell!no%n authorI
#his fundamental change in attitude first manifested itself in the year ()(.()(2. Fntil
about then, the courts had proceeded on the theory that the same trademar!, used on un
li!e goods, could not cause confusion in trade and that, therefore, there could be no
objection to the use and registration of a %ell!no%n mar! by a third party for a different
class of goods. ,ince ()(3 ho%ever, a gro%ing sentiment began to arise that in the
selection of a famous mar! by a third party, there %as generally the hidden intention to
"have a free ride" on the trademar! o%ner>s reputation and good %ill. 5Derenberg, #rade
Mar! Protection E Fnfair #rading, ()/3 edition, p. 4*).6
In the present state of development of the la% on #radeMar!s, Fnfair Competition, and Fnfair
#rading, the test employed by the courts to determine %hether noncompeting goods are or are
not of the same class is confusion as to the origin of the goods of the second user. Although t%o
noncompeting articles may be classified under t%o different classes by the Patent Affice because
they are deemed not to possess the same descriptive properties, they %ould, nevertheless, be held
by the courts to belong to the same class if the simultaneous use on them of identical or closely
similar trademar!s %ould be li!ely to cause confusion as to the origin, or personal source, of the
second user>s goods. #hey %ould be considered as not falling under the same class only if they
are so dissimilar or so foreign to each other as to ma!e it unli!ely that the purchaser %ould thin!
the first user made the second user>s goods.
,uch construction of the la% is induced by cogent reasons of e?uity and fair dealing. #he courts
have come to reali<e that there can be unfair competition or unfair trading even if the goods are
noncompeting, and that such unfair trading can cause injury or damage to the first user of a
given trademar!, first, by prevention of the natural e0pansion of his business and, second, by
having his business reputation confused %ith and put at the mercy of the second user. #hen
noncompetitive products are sold under the same mar!, the gradual %hittling a%ay or dispersion
of the identity and hold upon the public mind of the mar! created by its first user, inevitably
results. #he original o%ner is entitled to the preservation of the valuable lin! bet%een him and
the public that has been created by his ingenuity and the merit of his %ares or services.
@0perience has demonstrated that %hen a %ell!no%n trademar! is adopted by another even for
a totally different class of goods, it is done to get the benefit of the reputation and advertisements
of the originator of said mar!, to convey to the public a false impression of some supposed
connection bet%een the manufacturer of the article sold under the original mar! and the ne%
articles being tendered to the public under the same or similar mar!. As trade has developed and
commercial changes have come about, the la% of unfair competition has e0panded to !eep pace
%ith the times and the element of strict competition in itself has ceased to be the determining
factor. #he o%ner of a trademar! or tradename has a property right in %hich he is entitled to
protection, since there is damage to him from confusion of reputation or good%ill in the mind of
the public as %ell as from confusion of goods. #he modern trend is to give emphasis to the
unfairness of the acts and to classify and treat the issue as a fraud.
A fe% of the numerous cases in %hich the foregoing doctrines have been laid do%n in one form
or another %ill no% be citedI 5(6 In Teodoro &ala' (! &he vs. Level Brothers Compan 5D.$.
7o. 431(26, decided by this Court on April (1, ()4(, the respondent company 5plaintiff belo%6
%as granted injunctive relief against the use by the petitioner of the trademar! ";u0" and
";ifebuoy" for hair pomade, they having been originally used by the respondent for soap: #he
Court held in effect that although said articles are noncompetitive, they are similar or belong to
the same class. 5-6 In Lincoln Motor Co. vs. Lincoln $utomobile Co. 544 F. G-dH, 1(-6, the
manufacturer of the %ell!no%n ;incoln automobile %as granted injunctive relief against the use
of the %ord ";incoln" by another company as part of its firm name. 5/6 #he case of $unt )emima
Mills Co. vs. *i!ne + Co. 5-42 F., 4*26, involved the trademar! "Aunt &emima," originally
used on flour, %hich the defendant attempted to use on syrup, and there the court held that the
goods, though different, are so related as to fall %ithin the mischief %hich e?uity should prevent.
546 In Tiffan + Co., vs. Tiffan Productions, -nc. 5-34 7.J.,., 4.): -/ #rademar! $eporter,
(1/6, the plaintiff, a je%elry concern, %as granted injunctive relief against the defendant, a
manufacturer of motion pictures, from using the name "#iffany." Ather famous cases cited on the
margin, %herein the courts granted injunctive relief, involved the follo%ing trademar!s or trade
namesI "'oda!," for cameras and photographic supplies, against its use for bicycles.
4
"Penslar,"
for medicines and toilet articles, against its use for cigars:
.
"$olls$oyce," for automobiles.
against its use for radio tubes:
3
"=ogue," as the name of a maga<ine, against its use for hats:
2
"'ote0," for sanitary nap!ins, against the use of "$ote0" for vaginal syringes:
1
",unMaid," for
raisins, against its use for flour:
)
"Jale," for loc!s and !eys, against its use for electric
flashlights:
(*
and "Baterman," for fountain pens, against its use for ra<or blades.
((
la'phil.net
Against this array of famous cases, the industry of counsel for the petitioner has enabled him to
cite on this point only the follo%ing casesI 5(6 Moha'" Mil" Products vs. .eneral /istilleries
Corporation 5). F. G-dH, //46, %herein the court held that gin and canned mil! and cream do not
belong to the same class: 5-6 Fa'cett Publications, -nc. vs. Popular Mechanics Co. 51* F. G-dH,
()46, %herein the court held that the %ords "Popular Mechanics" used as the title of a maga<ine
and duly registered as a trademar! %ere not infringed by defendant>s use of the %ords "Modern
Mechanics and Inventions" on a competitive maga<ine, because the %ord "mechanics" is merely
a descriptive name: and 5/6 0xford Boo" Co. vs. Colle!e 1ntrance Boo" Co. 5)1 F. G-dH, 3116,
%herein the plaintiff unsuccessfully attempted to enjoin the defendant from using the %ord
"=isuali<ed" in connection %ith history boo!s, the court holding that said %ord is merely
descriptive. #hese cases cites and relied upon by petitioner are obviously of no decisive
application to the case at bar.
Be thin! reasonable men may not disagree that shoes and shirts are not as unrelated as fountain
pens and ra<or blades, for instance. #he mere relation or association of the articles is not
controlling. As may readily be noted from %hat %e have heretofore said, the proprietary
connotation that a trademar! or tradename has ac?uired is of more paramount consideration.
#he Court of Appeals found in this case that by uninterrupted and e0clusive use since ()(* of
respondent>s registered trademar! on slippers and shoes manufactured by him, it has come to
indicate the origin and o%nership of said goods. It is certainly not farfetched to surmise that the
selection by petitioner of the same trademar! for pants and shirts %as motivated by a desire to
get a free ride on the reputation and selling po%er it has ac?uired at the hands of the respondent.
As observed in another case,
(-
the field from %hich a person may select a trademar! is
practically unlimited, and hence there is no e0cuse for impinging upon or even closely
approaching the mar! of a business rival. In the unlimited field of choice, %hat could have been
petitioner>s purpose in selecting "Ang #ibay" if not for its fameK
;astly, in her fifth assignment of error petitioner seems to ma!e a frantic effort to retain the use
of the mar! "Ang #ibay." +er counsel suggests that instead of enjoining her from using it, she
may be re?uired to state in her labels affi0ed to her products the inscriptionI "7ot manufactured
by #oribio #eodoro." Be thin! such practice %ould be unethical and un%orthy of a reputable
businessman. #o the suggestion of petitioner, respondent may say, not %ithout justice though
%ith a tinge of bitternessI "Bhy offer a perpetual apology or e0planation as to the origin of your
products in order to use my trademar! instead of creating one of your o%nK" An our part may
%e add, %ithout meaning to be harsh, that a selfrespecting person does not remain in the shelter
of another but builds one of his o%n.
#he judgment of the Court of Appeals is affirmed, %ith costs against the petitioner in the three
instances. ,o ordered.