Trademark Cases
Trademark Cases
Trademark Cases
This
Prepare for oral recitations. doctrine is to the effect that a word or phrase originally
incapable of exclusive appropriation with reference to an
1. Ang Tibay v. Teodoro (74 Phil 50) article of the market, because geographically or otherwise
2. Philip Morris, Inc. v. CA 224 scra 624 descriptive, might nevertheless have been used so long and
3. Mirpuri vs. CA so exclusively by one producer with reference to his article
that, in that trade and to that branch of the purchasing public,
4. Victorias Milling Co. vs. Ong Su (79 SCRA 207) the word or phrase has come to mean that the article was his
5. Unno Commercial vs. Gen Milling Corp, 205 Phils.707 product. We have said that the phrase “Ang Tibay,” being
6. Philip Morris, Inc. v. CA (274 SCRA 576) neither geographic nor descriptive, was originally capable of
exclusive appropriation as a trade-mark. But were it not so,
7. Shangrila Hotels vs. DGCI, GR No. 159938, March 31,
the application of the doctrine of secondary meaning made by
2006 the Court of Appeals could nevertheless be fully sustained
8. Asia Brewery vs. CA, GR No. 103543, 5 July 1993 because, in any event, by respondent’s long and exclusive use
of said phrase with reference to his products and his business,
9. Sterling Products vs. Faber Farbenfabriken AG 27 SCRA
it has acquired a proprietary connotation.
1214 (3) YES. In the present state of development of the law on
10. Pag-asa Industrial Corp. vs. CA, 118 SCRA 526 Trade-Marks, Unfair Competition, and Unfair Trading, the test
11. Mc Donald's Corp. vs. LC Big Mak Burger, GR No. employed by the courts to determine whether noncompeting
goods are or are not of the same class is confusion as to the
243993 August 18, 2004 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.
ANG V. TEODORO (G.R. NO. L-48226) 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
Facts: made the second user’s goods. The Court of Appeals found in
Respondent Teodoro has long been using ‘Ang Tibay’ both as this case that by uninterrupted and exclusive use since 1910
trademark and tradename in the manufacture and sale of its of respondent’s registered trade-mark on slippers and shoes
slippers, shoes and indoor baseballs when he formally manufactured by him, it has come to indicate the origin and
registered it. Meanwhile, petitioner Ang registered the same ownership of said goods. It is certainly not farfetched to
trademark ‘Ang Tibay’ for its products of pants and shirts. surmise that the selection by petitioner of the same trade-
Respondent moved to cancel the registration of petitioner’s mark for pants and shirts was motivated by a desire to get a
mark. The trial court found for petitioner Ang. CA reversed the free ride on the reputation and selling power it has acquired at
judgment. Petitioner argues the validity of the mark being the hands of the respondent.
descriptive; that it had not acquired secondary meaning in
favor of respondent; and that there can be no
infringement/unfair competition because the goods are not
similar.
Issues:
Facts:
(1) Whether or not ‘ANG TIBAY’ is a descriptive term not
registrable.
Respondent Toribio Teodoro has continuously used "Ang Tibay," both
(2) Whether or not the trademark ‘ANG TIBAY’ has acquired a as a trade-mark and as a trade-name, in the manufacture and sale of
secondary meaning. slippers, shoes, and indoor baseballs since 1910. On September 29,
(3) Whether or not there is trademark infringement and/or 1915, he formally registered it as trade-mark and as trade-name on
unfair competition between unrelated goods. January 3, 1933.
Ruling:
(1) NO. The phrase “Ang Tibay” is an exclamation denoting Petitioner Ana Ang registered the same trade-mark "Ang Tibay" for
administration of strength or durability. For instance, one who pants and shirts on April 11, 1932, and established a factory for the
tries hard but fails to break an object exclaims, “Ang tibay!” manufacture of said articles in the year 1937.
(How strong!”) The phrase “ang tibay” is never used
adjectively to define or describe an object. One does not say, The Court of First Instance of Manila absolved the defendant (Ms. Ang)
“ang tibay sapatos” or “sapatos ang tibay” is never used on the grounds that the two trademarks are dissimilar and are used on
adjectively to define or describe an object. One does not say, different and non-competing goods; that there had been no exclusive
“ang tibay sapatos” or “sapatos ang tibay” to mean “durable use of the trade-mark by the plaintiff; and that there had been no fraud
shoes,” but “matibay na sapatos” or “sapatos na matibay.” in the use of the said trade-mark by the defendant because the goods
From all of this we deduce that “Ang Tibay” is not a on which it is used are essentially different from those of the plaintiff.
descriptive term within the meaning of the Trade-Mark Law
but rather a fanciful or coined phrase which may properly and The Court of Appeals reversed said judgment, directing the Director of
legally be appropriated as a trademark or tradename. In this Commerce to cancel the registration of the trade-mark "Ang Tibay" in
connection we do not fail to note that when the petitioner favor of petitioner, and perpetually enjoining the latter from using said
herself took the trouble and expense of securing the trade-mark on goods manufactured and sold by her.
registration of these same words as a trademark of her
products she or her attorney as well as the Director of Thus, this case, a petition for certiorari.
Commerce was undoubtedly convinced that said words (Ang
Tibay) were not a descriptive term and hence could be legally Issue:
used and validly registered as a trademark.
(2) NO. In view of the conclusion we have reached upon the
first assignment of error, it is unnecessary to apply here the
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Are the goods or articles or which the two trademarks are used similar Philip Morris, Inc. and two other petitioners are
or belong to the same class of merchandise?
ascribing whimsical exercise of the faculty
Ruling: conferred upon magistrates by Section 6, Rule 58 of
Yes, pants and shirts are goods closely similar to shoes and slippers.
the Revised Rules of Court when respondent Court
They belong to the same class of merchandise as shoes and slippers. of Appeals lifted the writ of preliminary injunction
They are closely related goods. it earlier had issued against Fortune Tobacco
The Supreme Court affirmed the judgment of the Court of Appeals and
added that “although two non-competing articles may be classified Corporation, from manufacturing and selling
under to different classes by the Patent Office because they are “MARK” cigarettes in the local market. Banking on
deemed not to possess the same descriptive properties, they would,
nevertheless, be held by the courts to belong to the same class if the the thesis that petitioners’ respective symbols
simultaneous use on them of identical or closely similar trademarks “MARK VII”, ‘MARK TEN”, and “MARK”, also
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 for cigarettes, must be protected against
under the same class only if they are so dissimilar or so foreign to each unauthorized appropriation.
other as to make it unlikely that the purchaser would think that the first
user made the second user’s goods”.
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