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Case 1

Republic of the Philippines


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 cancellation of the
registration of the trademark "Adagio" for brassieres manufactured by respondent Maiden Form Brassiere 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 was first used by it in the United States on
October 26, 1937, and in the Philippines on August 31, 1946; that it had 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, classified according 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 the Official Gazette said
trademark of respondent company, in accordance with Section 7 of Republic Act No. 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 that the mark as used by respondent company convincingly shows that it identifies and
distinguishes respondent 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 said trademark, on the
grounds that it is a common descriptive name of an article or substance on which the patent has expired; that its
registration was obtained fraudulently or contrary to the provisions of Section 4, Chapter II of Republic Act No. 166; and
that the application for its registration was not filed in accordance with the provisions of Section 37, Chapter XI of the
same Act. Petitioner also alleged that said trademark has not become distinctive of respondent company's goods or
business; that it has been used by respondent company to classify the goods (the brassieres) manufactured by it, in the
same manner as petitioner uses the same; that said trademark has been used by petitioner for almost 6 years; that it
has become 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.

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Petitioner filed a motion for reconsideration of said decision, on the grounds that (1) it is contrary to the evidence, 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 particular style of brassiere
and is, therefore, unregistrable. It is urged that said trademark had been used by local brassiere 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 (the Rosenthals of Maiden Form Co.,
New York) because they are musically inclined. Being a musical term, it is used in an arbitrary (fanciful) sense as a
trademark for brassieres manufactured by respondent company. 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. As
respondent 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 other local brassiere
manufacturers. The records show that respondent company's agent, Mr. Schwartz, warned the Valleson Department
Store to desist from the sale of the "Adagio" Royal Form brassieres manufactured 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 the public against unlawful use of said trademark (t.s.n., p. 15, Aug. 17, 1959). The
advertisement (Exh. U) in the 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, on February 26, 1958.

On the other hand, respondent company's long and continuous use of the trademark "Adagio" has not rendered it merely
descriptive of the product. In Winthrop Chemical Co. v. Blackman (268 NYS 653), it was 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 been sold since 1919.
This is a consequence of the long and continued use by the plaintiff of this trademark 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 this argument 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 become generic in this way. Jacobs v. Beecham, 221 U.S. 263, 31 S. Ct. 555, 55 L. Ed. 729; Coca-Cola
Co. 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) on October 17, 1957,
had long been used by respondent company, only "to designate a particular style or quality of brassiere and, therefore,
is unregistrable as a trademark. In support of the contention, he alleges that the sentence "Maidenform bras are packaged
for your quick shopping convenience. For other popular Maidenform 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 to designate a particular style or quality of brassiere. He also cites portions of the testimonies of his
witnesses 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 not conclusively
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 every type of figure'.
As you stated you are very familiar with these bras manufacture by Maidenform Brassiere Company, what are
these types of figures this Exhibit W refer to?

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A. This is a product sold primarily in the United States they have cold climate there, and a style to suit 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 expensive an 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 when Bautista 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, will you 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 the style: 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 customers come 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 Ideal Form, 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 the validity of such word as a trademark. In. the
case of Kiekhaefer Corp. v. Willys-Overland Motors, 111 USPQ 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. Motloid Co., 74 USPQ 235, the applicant sought to register the letters "MM" in diagonal relationship within
a circle. 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 the fact that it is
used on only one of several types or grades does not affect its registrability as a trade mark.

Appellant also claims that respondent Director erred in registering the trademark in question, despite appellee'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. 166 as amended by Section 1
of Republic Act 865 which reads as follows:

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

Section 37 of Republic Act No. 166 can be availed of only where the Philippines is a party to an international convention
or treaty relating to trademarks, in which the trade-mark sought to be registered need not be use in the Philippines. The
applicability of Section 37 has been commented on by the Director of 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 or countries. 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 the eventual entrance of the Philippines into such convention treaty. It is provided in

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said section that applications filed thereunder need not allege use in the Philippines of the trade mark sought to
be registered. 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 and allegation in the application of
such fact, will be required in all applications for original or renewal registration submitted to the Philippine Patent
Office. (Circular Release No. 8.)

Appellant, likewise, contends that the registration the trademark in question was fraudulent or contrary Section 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 the trademark "Adagio" was first exclusively
in the Philippines by a appellee in the year 1932. There being no evidence of use of the mark by others before 1932, or
that appellee abandoned use thereof, the registration of the mark was made in accordance with the Trademark Law.
Granting that appellant used the mark when appellee stopped using it during the period of time that the Government
imposed restrictions 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 not permanent, intentional,
and voluntary.

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

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

"The instances of the use by others of the term 'Budweiser, cited by the defendant, fail, even when liberally
construed, to indicate an intention upon the part of the complainant to abandon its rights to that name. 'To
establish the defense of abandonment, it is necessary to show not only acts 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. Budweiser Malt Products Corp., 287 F. 245.)

Appellant next argues that respondent Director erred in declaring illegal the appropriation in the Philippines 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-compliance by appellee of Section 37 of Republic Act No. 166. But we have
already shown that Section 37 is not the provision invoked by respondent because the Philippines is not as yet a party
to any international convention 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 government restrictions on certain importations, such fact did
not, as heretofore stated, constitute abandonment of the trademark 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 their ancient trade-
mark and the adoption of new marks by the Carthusian Monks after they had been compelled to leave France
was consistent with an intention to retain their right to use their old mark. Abandonment will not be inferred from
a disuse over a period of years occasioned by statutory 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 the appellant. 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.

Page 4 of 13
Case 2

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 Appeals reversing that of the
Court of First Instance of Manila and directing the Director of Commerce to cancel the registration of the trade-mark
"Ang Tibay" in favor of said petitioner, and perpetually enjoining the latter 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, has continuously
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 on September 29, 1915, and as trade-name on
January 3, 1933. The growth of his business is a thrilling epic of 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 young man making slippers with his own hands but now a prominent business magnate
and manufacturer with a large factory operated with modern machinery by a great number of employees, has steadily
grown with his business to which he has dedicated the best years of his life and which he has expanded to such
proportions that his gross sales from 1918 to 1938 aggregated P8,787,025.65. His sales in 1937 amounted to
P1,299,343.10 and in 1938, P1,133,165.77. His expenses for advertisement from 1919 to 1938 aggregated
P210,641.56.

Petitioner (defendant below) registered the same trade-mark "Ang Tibay" for pants and shirts on April 11, 1932, and
established a factory for the manufacture of said articles in the year 1937. In the following year (1938) her gross sales
amounted to P422,682.09. Neither the decision of the trial court nor that of the Court of Appeals shows how much
petitioner has spent or advertisement. But respondent in his brief 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 was when this was brought to the attention of the appellee that he consulted his
attorneys and eventually brought the present suit."

The trial court (Judge Quirico Abeto) presiding absolved the defendant from the complaint, with costs against the
plaintiff, on the grounds that the two trademarks are dissimilar and are used on different and non-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 it is 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 Padilla as ponente, reversed that judgment, holding that by uninterrupted an exclusive use
since 191 in the manufacture of slippers and shoes, respondent's trade-mark has acquired a secondary meaning; that
the goods 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. The defendant Director of
Commerce did not appeal from the decision of the Court of Appeals.

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First. Counsel for the petitioner, in a well-written brief, makes a frontal sledge-hammer attack on the validity of
respondent's trade-mark "Ang Tibay." He contends that the phrase "Ang Tibay" as employed by the respondent on the
articles manufactured by him is a descriptive term because, "freely translate in English," it means "strong, durable,
lasting." He invokes section 2 of Act No. 666, which provides that words or devices which related only to the name,
quality, or description of the merchandise cannot be the subject of a trade-mark. He cites among others the case
of Baxter vs. Zuazua (5 Phil., 16), which involved the 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 as a 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 the legal sense. The cite
several cases in which similar words have been sustained as valid trade-marks, such as "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 article meaning "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, "Ang ganda!" Tibay is a root word from which are derived the verb magpatibay (to
strenghten; the nouns 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 denoting
administration of strength or durability. For instance, one who tries hard but fails to break an object exclaims, "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 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 trade-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 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 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 own meaning 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 performed
that 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 the Ang 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 originally incapable 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 the purchasing 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 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. (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 and shirts are goods
similar to shoes and slippers within the meaning of sections 3 and 7 of Act No. 666. She also contends under her fourth
assignment of error (which we deem convenient to pass upon together with the third) that there can neither be
infringement of trade-mark under section 3 nor unfair competition under section 7 through her use of the words "Ang

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Tibay" in connection with pants and shirts, because those 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 the Trade-Mark
Law (Act No. 666.) Section 3 provides that "any person entitled to the exclusive use of a trade-mark to designate the
origin or ownership of goods he has made or deals in, may recover damages in a civil actions from any person who
has sold goods of a similar kind, bearing such trade-mark . . . The complaining 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 fully established, shall be made perpetual, and this injunction shall be part of the
judgment for damages to be rendered in the same cause." Section 7 provides that any person who, in selling his
goods, shall give them the general appearance of the goods of another either in the wrapping of the packages, or in the
devices or words thereon, or in any other feature of their appearance, which would be likely 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 trade-mark infringement under 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 13 provides that no alleged trade-mark or trade name
shall be registered which is identical with a registered or known trade-mark owned by another and appropriate to
the same class of merchandise, or which to nearly 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 to
determine the particular description of articles included in each class; it also provides that "an application for
registration of a trade-mark shall be registered only for one class of articles and only for the particular description 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 statutes and 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 were
interpreting the statute for the first time and in the first decade of the twentieth century, when it was enacted, and were
to construe it strictly and literally, we might uphold petitioner's contentions. But law and jurisprudence must keep
abreast with the progress of mankind, and the courts must breathe life into the statutes if they are to serve their
purpose. Our Trade-mark Law, enacted nearly forty years ago, has grown 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 the civilized world from whose jurisprudence it has also received vitalizing
nourishment. We have to apply this law as it has grown and not as it was born. Its growth or development abreast with
that of sister statutes and jurisprudence in other jurisdictions is reflected in the following observation of a well-known
author:

This fundamental change in attitude first manifested itself in the year 1915-1917. Until about then, 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 and registration of a well-known mark by a third
party for a different class of goods. Since 1916 however, a growing sentiment began to arise that in the
selection of a famous mark by a third party, 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 class is confusion as to

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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.

Such construction of the law is induced by cogent reasons of equity and fair dealing. The courts have come 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, by prevention of the natural expansion of his
business and, second, by having his business reputation confused with and put at the mercy of the second user. Then
noncompetitive products are sold under the same mark, the gradual whittling away or dispersion of the identity and
hold upon the public mind of the mark 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
wares or services. 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 reputation and advertisements of the originator of said
mark, to convey to the public a false impression of some supposed connection between the manufacturer of the article
sold under the original mark and the new articles being tendered to 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 strict competition in itself has ceased to be the determining factor. The owner of a
trade-mark or trade-name has a 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 is to
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 or another 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 injunctive relief against the use by the petitioner of the
trade-mark "Lux" and "Lifebuoy" for hair pomade, they having been originally used by the respondent for soap; The
Court held in effect that although said articles 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 was granted injunctive relief against the use of the word "Lincoln" by another company as part of its firm
name. (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 the court held that the goods, though
different, are so related as to fall within the mischief which equity should 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, a manufacturer 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
toilet articles, against its use for cigars; 5 "Rolls-Royce," for automobiles. against its use for radio tubes; 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 its use for razor blades. 11lawphil.net

Against this array of famous cases, the industry of counsel for the petitioner has enabled him to cite on this 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 that the words "Popular Mechanics" used as the title of a
magazine and duly registered as a trade-mark were not infringed by defendant's use of the words "Modern Mechanics
and Inventions" on a competitive magazine, 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 said word
is merely descriptive. These cases cites and relied upon by petitioner are obviously of no decisive application to the
case at bar.

We think reasonable men may not disagree that shoes and shirts are not as unrelated as fountain pens and razor
blades, for instance. The mere relation or association of the articles is not controlling. As may readily be noted from
what we have heretofore said, the proprietary connotation that a trade-mark or trade-name has acquired is of more

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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 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. As observed in another case, 12 the field from which a person may select a
trade-mark is practically 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 in selecting "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 the mark "Ang
Tibay." Her counsel suggests that instead of enjoining her from using it, she may be required to state in her labels
affixed to her products the inscription: "Not manufactured by Toribio Teodoro." We think 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 a perpetual apology or explanation as to the origin of your products
in order to use my trade-mark instead of 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.

Footnotes

1 Holeproof Hosiery Co. vs. Wallach Bros. (167 F., 373).

2 Hughes vs. Smith Co. (205 F., 302).

3 Franklin Knitting Mills vs. Fashionit Sweater Mills (297 F., 247).

4 Eastman Co. vs. Kodak Cycle Co. (15 R. P C., 105).

5 Peninsular Chemical Co. vs. Levinson (247 f., 658).

6 Wall vs. Rolls-Royce of America (4 F. [2d], 333).

7 Vogue Co. vs. Thompson-Hudson Co. (300 F., 509).

8 Kotex Co. vs. McArthur (45 F. [2d], 256).

9 Sun-Maid Raisin Growers of California vs. American Grocer Co. (40 F. [2d], 116).

10 Yale Electric Corporation vs. Robertson and The Yale & Towne Co. (21 F. [2d], 467); affirmed in 26 F. [2d],
9722.

11 L. E. Waterman Co. vs. Benjamin Gordon (8F. Supp., 351; 24 Trade-mark Reporter, 347); affirmed in 72 F.
[2d], 272.

12 Kassman & Kessner, Inc., vs. Rosenberg Bros. Co. (10 F. [2d], 904).

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CASE 5

Republic of the Philippines


SUPREME COURT
Manila

EN BANC

G.R. No. L-20635 March 31, 1966

ETEPHA, A.G., petitioner,


vs.
DIRECTOR OF PATENTS and WESTMONT PHARMACEUTICALS, INC., respondents.

McClure, Salas and Gonzalez, for petitioner.


Sycip, Salazar, Manalo, Luna and Associates, for respondent.

SANCHEZ, J.:

To the question: May trademark ATUSSIN be registered, given the fact that PERTUSSIN, another trademark, had been
previously registered in the Patent Office? — the Director of Patents answered affirmatively. Hence this appeal.

On April 23, 1959, respondent Westmont Pharmaceuticals, Inc., a New York corporation, sought registration of trademark
"Atussin" placed on its "medicinal preparation of expectorant antihistaminic, bronchodilator sedative, ascorbic acid
(Vitamin C) used in the treatment of cough". The trademark is used exclusively in the Philippines since January 21,
1959.1

Petitioner, Etepha, A. G., a Liechtenstin (principality) corporation, objected. Petitioner claims that it will be damaged
because Atussin is so confusedly similar to its Pertussin (Registration No. 6089, issued on September 25, 1957) used
on a preparation for the treatment of coughs, that the buying public will be misled into believing that Westmont's product
is that of petitioner's which allegedly enjoys goodwill.

1. The objects of a trademark are "to point out distinctly the origin or ownership of the articles to which it is affixed,
to secure to him who has been instrumental in bringing into market a superior article or merchandise the fruit of
his industry and skill, and to prevent fraud and imposition."2 Our over-all task then is to ascertain whether or not
Atussin so resembles Pertussin "as to be likely, when applied to or used in connection with the goods ... of the
applicant, to cause confusion or mistake or to deceive purchasers".3 And, we are to be guided by the rule that
the validity of a cause for infringement is predicated upon colorable imitation. The phrase "colorable imitation"
denotes such a "close or ingenious imitation as to be calculated to deceive ordinary persons, or such a
resemblance to the original as to deceive an ordinary purchaser, giving such attention as a purchaser usually
gives, and to cause him to purchase the one supposing it to be the other."4

2. That the word "tussin" figures as a component of both trademarks is nothing to wonder at. The Director of
Patents aptly observes that it is "the common practice in the drug and pharmaceutical industries to 'fabricate'
marks by using syllables or words suggestive of the ailments for which they are intended and adding thereto
distinctive prefixes or suffixes".5 And appropriately to be considered now is the fact that, concededly, the "tussin"
(in Pertussin and Atussin) was derived from the Latin root-word "tussis" meaning cough.6

"Tussin" is merely descriptive; it is generic; it furnishes to the buyer no indication of the origin of the goods; it is
open for appropriation by anyone. It is accordingly barred from registration as trademark. With jurisprudence
holding the line, we feel safe in making the statement that any other conclusion would result in "appellant having
practically a monopoly"7 of the word "tussin" in a trademark.8

While "tussin" by itself cannot thus be used exclusively to identify one's goods, it may properly become the subject
of a trademark "by combination with another word or phrase".9 And this union of words is reflected in
petitioner's Pertussin and respondent's Atussin, the first with prefix "Per" and the second with Prefix "A". 1äw phï1.ñët

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3. A practical approach to the problem of similarity or dissimilarity is to go into the whole of the two trademarks
pictured in their manner of display. Inspection should be undertaken from the viewpoint of a prospective buyer.
The trademark complained of should be compared and contrasted with the purchaser's memory (not in
juxtaposition) of the trademark said to be infringed. 10 Some such factors as "sound; appearance; form, style,
shape, size or format; color; ideas connoted by marks; the meaning, spelling, and pronunciation, of words used;
and the setting in which the words appear" may be considered. 11 For, indeed, trademark infringement is a form
of unfair competition. 12

We take a casual look at the two labels — without spelling out the details — bearing in mind the easy-to-
remember earmarks thereof. Respondent's label underscores the trademark Atussin in bold, block letters
horizontally written. In petitioner's, on the other hand, Pertussin is printed diagonally upwards and across in
semiscript style with flourishes and with only the first letter "P" capitalized. Each label plainly shows the source
of the medicine: petitioner's at the foot bears "Etepha Ltd. Schaan Fl", and on top, "Apothecary E. Taeschner's";
respondent's projects "Westmont Pharmaceuticals, Inc. New York, USA" at the bottoms, and on the lower left
side the word "Westmont" upon a white diamond shaped enclosure and in red ink — a color different from that
of the words above and below it. Printed prominently along the left, bottom and right edges of petitioner's label
are indications of the use: "for bronchial catarrh — whopping-cough — coughs and asthma". Respondent's for
its part briefly represents what its produce actually is - a "cough syrup". The two labels are entirely different in
colors, contents, arrangement of words thereon, sizes, shapes and general appearance. The contrasts in pictorial
effects and appeals to the eye is so pronounced that the label of one cannot be mistaken for that of the other,
not even by persons unfamiliar with the two trademarks. 13

On this point the following culled from a recent decision of the United States Court of Customs and Patent Appeals
(June 15, 1956) is persuasive: 14

Confusion is likely between trademarks, however, only if their over-all presentations in any of the
particulars of sound, appearance, or meaning are such as would lead the purchasing public into believing
that the products to which the marks are applied emanated from the same source. In testing this issue,
fixed legal rules exist — if not in harmony, certainly in abundance — but, in the final analysis, the
application of these rules in any given situation necessarily reflects a matter of individual judgment largely
predicated on opinion. There is, however, and can be no disagreement with the rule that the purchaser
is confused, if at all, by the marks as a whole.

4. We now consider exclusively the two words — Pertussin and Atussin — as they appear on the respective
labels. As previously adverted to, these words are presented to the public in different styles of writing and
methods of design. The horizontal plain, block letters of Atussin and the diagonally and artistically upward writing
of Pertussin leave distinct visual impressions. One look is enough to denude the mind of that illuminating similarity
so essential for a trademark infringement case to prosper.

5. As we take up Pertussin and Atussin once again, we cannot escape notice of the fact that the two words do
not sound alike — when pronounced. There is not much phonetic similarity between the two. The Solicitor
General well-observed that in Pertussin the pronunciation of the prefix "Per", whether correct or incorrect,
includes a combination of three letters P, e and r; whereas, in Atussin the whole starts with the single letter A
added to suffix "tussin". Appeals to the ear are disimilar. And this, because in a word combination, the part that
comes first is the most pronounced. An expositor of the applicable rule here is the decision in the Syrocol-
Cheracol controversy. 15 There, the ruling is that trademark Syrocol (a cough medicine preparation) is not
confusedly similar to trademark Cheracol (also a cough medicine preparation). Reason: the two words "do not
look or sound enough alike to justify a holding of trademark infringement", and the "only similarity is in the last
syllable, and that is not uncommon in names given drug compounds".

6. In the solution of a trademark infringement problem, regard too should be given to the class of persons who
buy the particular product and the circumstances ordinarily attendant to its acquisition. 16 The medicinal
preparation clothed with the trademarks in question, are unlike articles of everyday use such as candies, ice
cream, milk, soft drinks and the like which may be freely obtained by anyone, anytime, anywhere. Petitioner's
and respondent's products are to be dispensed upon medical prescription. The respective labels say so. An
intending buyer must have to go first to a licensed doctor of medicine; he receives instructions as to what to
purchase; he reads the doctor's prescription; he knows what he is to buy. He is not of the incautious, unwary,

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unobservant or unsuspecting type; he examines the product sold to him; he checks to find out whether it conforms
to the medical prescription. The common trade channel is the pharmacy or the drugstore. Similarly, the
pharmacist or druggist verifies the medicine sold. The margin of error in the acquisition of one for the other is
quite remote.

We concede the possibility that buyers might be able to obtain Pertussin or Attusin without prescription. When this
happens, then the buyer must be one throughly familiar with what he intends to get, else he would not have the temerity
to ask for a medicine — specifically needed to cure a given ailment. In which case, the more improbable it will be to palm
off one for the other. For a person who purchases with open eyes is hardly the man to be deceived.

For the reasons given, the appealed decision of the respondent Director of Patents — giving due course to the application
for the registration of trademark ATTUSIN is hereby affirmed. Costa against petitioner. So ordered.

Bengzon, C.J., Bautista Angelo, Concepcion, Reyes, J.B.L., Barrera, Regala, Makalintal, Bengzon, J. P., and Zaldivar,
JJ., concur.
Dizon, J., took no part.

Footnotes

1Section 2 of the Trademark Law requires actual use in the Philippines of not less than two months before
application may be filed.

2 52 Am. Jur., p. 508, citing cases.

3 Section 4(d), Trade Mark Law.

4 87 Corpuz Juris Secundum, p. 287.

5The Director of Patents cites the following: "NUMOTOZINE" (Reg. No. 1990-S, renewed under Reg. No. 7461-
R) for treatment of pneumonia, bronchitis, pleurisy, etc.; "ASCARICIDOL" (Reg. No. 6090) and "ASCAROL" (Reg.
No. 4114), both for expelling intestinal worms such as ascaris; "DIARROL" (Reg. No. 5864) for treatment of
diarrhea, dysentery and intestinal disorders; "ASMAKOL" (Reg. No. SR-104), "ASMADREN" (Reg. No. 4353),
"ASMOL" (Reg. No. 5379), all for treatment of asthma.

6Webster's Third International Dictionary, 1964 ed., p. 2470.

7Miles Laboratories, Inc. vs. Pepsodent Co., 104 F(2d), 205, 207. Here the marks pepso-seltzer and alka-seltzer
were involved. The U.S. Court of Customs and Patent Appeals held that "seltzer" was descriptive, and could not
be appropriated.

8In Dixi-Cola Laboratories, Inc., et al. vs. Coca-Cola Co., 117 F (2d), 352, 360, the Circuit Court of Appeals in
refusing to enjoin use of Dixi-Cola, held that "Cola" is descriptive and generic. See also Coca-Cola Co. vs. Carlisle
Bottling Works, 43 F (2d) 101, 103, where "Cola" was held to be descriptive, so that "Roxa Kola" is not an
infringement of "Coca-Cola".

9 Annotations, Lawyers' Reports, Annotated, 1918 A, p. 966.

10 87 Corpus Juris Secundum, pp. 288-291.

11 87 Corpus Juris Secundum, pp. 291-292.

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