G.R. No.

L-48226         December 14, 1942 to the attention of the appellee that he consulted his attorneys and eventually brought the
present suit."
ANA L. ANG, petitioner,
vs. The trial court (Judge Quirico Abeto) presiding absolved the defendant from the complaint,
TORIBIO TEODORO, respondent. 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-
Cirilo Lim for petitioner.
mark by the plaintiff; and that there had been no fraud in the use of the said trade-mark by the
Marcial P. Lichauco and Manuel M. Mejia for respondent.
defendant because the goods on which it is used are essentially different from those of the
OZAETA, J.: 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,
Petitioner has appealed to this Court by certiorari to reverse the judgment of the Court of holding that by uninterrupted an exclusive use since 191 in the manufacture of slippers and
Appeals reversing that of the Court of First Instance of Manila and directing the Director of shoes, respondent's trade-mark has acquired a secondary meaning; that the goods or articles
Commerce to cancel the registration of the trade-mark "Ang Tibay" in favor of said petitioner, on which the two trade-marks are used are similar or belong to the same class; and that the
and perpetually enjoining the latter from using said trade-mark on goods manufactured and use by petitioner of said trade-mark constitutes a violation of sections 3 and 7 of Act No. 666.
sold by her. The defendant Director of Commerce did not appeal from the decision of the Court of Appeals.
Respondent Toribio Teodoro, at first in partnership with Juan Katindig and later as sole First. Counsel for the petitioner, in a well-written brief, makes a frontal sledge-hammer attack
proprietor, has continuously used "Ang Tibay," both as a trade-mark and as a trade-name, in on the validity of respondent's trade-mark "Ang Tibay." He contends that the phrase "Ang
the manufacture and sale of slippers, shoes, and indoor baseballs since 1910. He formally Tibay" as employed by the respondent on the articles manufactured by him is a descriptive
registered it as trade-mark on September 29, 1915, and as trade-name on January 3, 1933. The term because, "freely translate in English," it means "strong, durable, lasting." He invokes
growth of his business is a thrilling epic of Filipino industry and business capacity. Starting in an section 2 of Act No. 666, which provides that words or devices which related only to the name,
obscure shop in 1910 with a modest capital of P210 but with tireless industry and unlimited quality, or description of the merchandise cannot be the subject of a trade-mark. He cites
perseverance, Toribio Teodoro, then an unknown young man making slippers with his own among others the case of Baxter vs. Zuazua (5 Phil., 16), which involved the trade-mark "Agua
hands but now a prominent business magnate and manufacturer with a large factory operated de Kananga" used on toilet water, and in which this Court held that the word "Kananga," which
with modern machinery by a great number of employees, has steadily grown with his business is the name of a well-known Philippine tree or its flower, could not be appropriated as a trade-
to which he has dedicated the best years of his life and which he has expanded to such mark any more than could the words "sugar," "tobacco," or "coffee." On the other hand,
proportions that his gross sales from 1918 to 1938 aggregated P8,787,025.65. His sales in 1937 counsel for the respondent, in an equally well-prepared and exhaustive brief, contend that the
amounted to P1,299,343.10 and in 1938, P1,133,165.77. His expenses for advertisement from words "Ang Tibay" are not descriptive but merely suggestive and may properly be regarded as
1919 to 1938 aggregated P210,641.56. fanciful or arbitrary in the legal sense. The cite several cases in which similar words have been
Petitioner (defendant below) registered the same trade-mark "Ang Tibay" for pants and shirts sustained as valid trade-marks, such as "Holeproof" for hosiery, 1 "ideal for tooth brushes, 2 and
on April 11, 1932, and established a factory for the manufacture of said articles in the year "Fashionknit" for neckties and sweaters. 3
1937. In the following year (1938) her gross sales amounted to P422,682.09. Neither the We find it necessary to go into the etymology and meaning of the Tagalog words "Ang Tibay"
decision of the trial court nor that of the Court of Appeals shows how much petitioner has to determine whether they are a descriptive term, i.e., whether they relate to the quality or
spent or advertisement. But respondent in his brief says that petitioner "was unable to prove description of the merchandise to which respondent has applied them as a trade-mark. The
that she had spent a single centavo advertising "Ang Tibay" shirts and pants prior to 1938. In word "ang" is a definite article meaning "the" in English. It is also used as an adverb, a
that year she advertised the factory which she had just built and it was when this was brought 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, exclusive appropriation as a trade-mark. But were it not so, the application of the doctrine of
durability), katibayan  (proof, support, strength), katibay-tibayan  (superior strength); and the secondary meaning made by the Court of Appeals could nevertheless be fully sustained
adjectives matibay (strong, durable, lasting), napakatibay  (very strong), kasintibay or because, in any event, by respondent's long and exclusive use of said phrase with reference to
magkasintibay  (as strong as, or of equal strength). The phrase "Ang Tibay" is an exclamation his products and his business, it has acquired a proprietary connotation. (Landers, Frary, and
denoting administration of strength or durability. For instance, one who tries hard but fails to Clark vs. Universal Cooler Corporation, 85 F. [2d], 46.)
break an object exclaims, "Ang tibay!" (How strong!") It may also be used in a sentence thus,
Third. Petitioner's third assignment of error is, that the Court of Appeals erred in holding that
"Ang tibay ng sapatos mo!" (How durable your shoes are!") The phrase "ang tibay" is never
pants and shirts are goods similar to shoes and slippers within the meaning of sections 3 and 7
used adjectively to define or describe an object. One does not say, "ang tibay sapatos" or
of Act No. 666. She also contends under her fourth assignment of error (which we deem
"sapatos ang tibay" is never used adjectively to define or describe an object. One does not say,
convenient to pass upon together with the third) that there can neither be infringement of
"ang tibay sapatos" or "sapatos ang tibay" to mean "durable shoes," but "matibay na sapatos"
trade-mark under section 3 nor unfair competition under section 7 through her use of the
or "sapatos na matibay."
words "Ang Tibay" in connection with pants and shirts, because those articles do not belong to
From all of this we deduce that "Ang Tibay" is not a descriptive term within the meaning of the the same class of merchandise as shoes and slippers.
Trade-Mark Law but rather a fanciful or coined phrase which may properly and legally be
The question raised by petitioner involve the scope and application of sections 3,7, 11, 13, and
appropriated as a trade-mark or trade-name. In this connection we do not fail to note that
20 of the Trade-Mark Law (Act No. 666.) Section 3 provides that "any person entitled to the
when the petitioner herself took the trouble and expense of securing the registration of these
exclusive use of a trade-mark to designate the origin or ownership of goods he has made or
same words as a trademark of her products she or her attorney as well as the Director of
deals in, may recover damages in a civil actions from any person who has sold goods of a
Commerce was undoubtedly convinced that said words (Ang Tibay) were not a descriptive
similar kind, bearing such trade-mark . . . The complaining party . . . may have a preliminary
term and hence could be legally used and validly registered as a trade-mark. It seems
injunction, . . . and such injunction upon final hearing, if the complainant's property in the
stultifying and puerile for her now to contend otherwise, suggestive of the story of sour
trade-mark and the defendant's violation thereof shall be fully established, shall be made
grapes. Counsel for the petitioner says that the function of a trade-mark is to point
perpetual, and this injunction shall be part of the judgment for damages to be rendered in the
distinctively, either by its own meaning or by association, to the origin or ownership of the
same cause." Section 7 provides that any person who, in selling his goods, shall give them the
wares to which it is applied. That is correct, and we find that "Ang Tibay," as used by the
general appearance of the goods of another either in the wrapping of the packages, or in the
respondent to designate his wares, had exactly performed that function for twenty-two years
devices or words thereon, or in any other feature of their appearance, which would be likely to
before the petitioner adopted it as a trade-mark in her own business. Ang Tibay shoes and
influence purchasers to believe that the goods offered are those of the complainant, shall be
slippers are, by association, known throughout the Philippines as products of the Ang Tibay
guilty of unfair competition, and shall be liable to an action for damages and to an injunction,
factory owned and operated by the respondent Toribio Teodoro.
as in the cases of trade-mark infringement under section 3. Section 11 requires the applicant
Second. In her second assignment of error petitioner contends that the Court of Appeals erred for registration of a trade-mark to state, among others, "the general class of merchandise to
in holding that the words "Ang Tibay" had acquired a secondary meaning. In view of the which the trade-mark claimed has been appropriated." Section 13 provides that no alleged
conclusion we have reached upon the first assignment of error, it is unnecessary to apply here trade-mark or trade name shall be registered which is identical with a registered or known
the doctrine of "secondary meaning" in trade-mark parlance. This doctrine is to the effect that trade-mark owned by another and appropriate to the same class of merchandise, or which to
a word or phrase originally incapable of exclusive appropriation with reference to an article of nearly resembles another person's lawful trade-mark or trade-name as to be likely to cause
the market, because geographically or otherwise descriptive, might nevertheless have been confusion or mistake in the mind of the public, or to deceive purchasers. And section 2
used so long and so exclusively by one producer with reference to his article that, in that trade authorizes the Director of Commerce to establish classes of merchandise for the purpose of the
and to that branch of the purchasing public, the word or phrase has come to mean that the registration of trade-marks and to determine the particular description of articles included in
article was his product. (G. & C. Merriam Co. vs. Salfield, 198 F., 369, 373.) We have said that each class; it also provides that "an application for registration of a trade-mark shall be
the phrase "Ang Tibay," being neither geographic nor descriptive, was originally capable of
registered only for one class of articles and only for the particular description of articles mark owner's reputation and good will. (Derenberg, Trade-Mark Protection & Unfair Trading,
mentioned in said application." 1936 edition, p. 409.)

We have underlined the key words used in the statute: "goods of a similar kin," "general class In the present state of development of the law on Trade-Marks, Unfair Competition, and Unfair
of merchandise," "same class of merchandise," "classes of merchandise," and "class of Trading, the test employed by the courts to determine whether noncompeting goods are or
articles," because it is upon their implications that the result of the case hinges. These phrases, are not of the same class is confusion as to the origin of the goods of the second user.
which refer to the same thing, have the same meaning as the phrase "merchandise of the Although two noncompeting articles may be classified under two different classes by the
same descriptive properties" used in the statutes and jurisprudence of other jurisdictions. 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
The burden of petitioner's argument is that under sections 11 and 20 the registration by
on them of identical or closely similar trade-marks would be likely to cause confusion as to the
respondent of the trade-mark "Ang Tibay" for shoes and slippers is no safe-guard against its
origin, or personal source, of the second user's goods. They would be considered as not falling
being used by petitioner for pants and shirts because the latter do not belong to the same class
under the same class only if they are so dissimilar or so foreign to each other as to make it
of merchandise or articles as the former; that she cannot be held guilty of infringement of
unlikely that the purchaser would think the first user made the second user's goods.
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 Such construction of the law is induced by cogent reasons of equity and fair dealing. The courts
properties as shoes and slippers; that neither can she be held guilty of unfair competition have come to realize that there can be unfair competition or unfair trading even if the goods
under section 7 because the use by her of the trade-mark "Ang Tibay" upon pants and shirts is are non-competing, and that such unfair trading can cause injury or damage to the first user of
not likely to mislead the general public as to their origin or ownership; and that there is now a given trade-mark, first, by prevention of the natural expansion of his business and, second,
showing that she in unfairly or fraudulently using that mark "Ang Tibay" against the by having his business reputation confused with and put at the mercy of the second user. Then
respondent. If we were interpreting the statute for the first time and in the first decade of the noncompetitive products are sold under the same mark, the gradual whittling away or
twentieth century, when it was enacted, and were to construe it strictly and literally, we might dispersion of the identity and hold upon the public mind of the mark created by its first user,
uphold petitioner's contentions. But law and jurisprudence must keep abreast with the inevitably results. The original owner is entitled to the preservation of the valuable link
progress of mankind, and the courts must breathe life into the statutes if they are to serve between him and the public that has been created by his ingenuity and the merit of his wares
their purpose. Our Trade-mark Law, enacted nearly forty years ago, has grown in its or services. Experience has demonstrated that when a well-known trade-mark is adopted by
implications and practical application, like a constitution, in virtue of the life continually another even for a totally different class of goods, it is done to get the benefit of the reputation
breathed into it. It is not of merely local application; it has its counterpart in other jurisdictions and advertisements of the originator of said mark, to convey to the public a false impression of
of the civilized world from whose jurisprudence it has also received vitalizing nourishment. We some supposed connection between the manufacturer of the article sold under the original
have to apply this law as it has grown and not as it was born. Its growth or development mark and the new articles being tendered to the public under the same or similar mark. As
abreast with that of sister statutes and jurisprudence in other jurisdictions is reflected in the trade has developed and commercial changes have come about, the law of unfair competition
following observation of a well-known author: 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
This fundamental change in attitude first manifested itself in the year 1915-1917. Until about
right in which he is entitled to protection, since there is damage to him from confusion of
then, the courts had proceeded on the theory that the same trade-mark, used on un-like
reputation or goodwill in the mind of the public as well as from confusion of goods. The
goods, could not cause confusion in trade and that, therefore, there could be no objection to
modern trend is to give emphasis to the unfairness of the acts and to classify and treat the
the use and registration of a well-known mark by a third party for a different class of goods.
issue as a fraud.
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- 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) connotation that a trade-mark or trade-name has acquired is of more paramount
was granted injunctive relief against the use by the petitioner of the trade-mark "Lux" and consideration. The Court of Appeals found in this case that by uninterrupted and exclusive use
"Lifebuoy" for hair pomade, they having been originally used by the respondent for soap; The since 1910 of respondent's registered trade-mark on slippers and shoes manufactured by him,
Court held in effect that although said articles are noncompetitive, they are similar or belong to it has come to indicate the origin and ownership of said goods. It is certainly not farfetched to
the same class. (2) In Lincoln Motor Co. vs. Lincoln Automobile Co.  (44 F. [2d], 812), the surmise that the selection by petitioner of the same trade-mark for pants and shirts was
manufacturer of the well-known Lincoln automobile was granted injunctive relief against the motivated by a desire to get a free ride on the reputation and selling power it has acquired at
use of the word "Lincoln" by another company as part of its firm name. (3) The case of Aunt the hands of the respondent. As observed in another case, 12 the field from which a person may
Jemima Mills Co. vs. Rigney & Co. (247 F., 407), involved the trade-mark "Aunt Jemima," select a trade-mark is practically unlimited, and hence there is no excuse for impinging upon or
originally used on flour, which the defendant attempted to use on syrup, and there the court even closely approaching the mark of a business rival. In the unlimited field of choice, what
held that the goods, though different, are so related as to fall within the mischief which equity could have been petitioner's purpose in selecting "Ang Tibay" if not for its fame?
should prevent. (4) In Tiffany & Co., vs. Tiffany Productions, Inc.  (264 N.Y.S., 459; 23 Trade-
Lastly, in her fifth assignment of error petitioner seems to make a frantic effort to retain the
mark Reporter, 183), the plaintiff, a jewelry concern, was granted injunctive relief against the
use of the mark "Ang Tibay." Her counsel suggests that instead of enjoining her from using it,
defendant, a manufacturer of motion pictures, from using the name "Tiffany." Other famous
she may be required to state in her labels affixed to her products the inscription: "Not
cases cited on the margin, wherein the courts granted injunctive relief, involved the following
manufactured by Toribio Teodoro." We think such practice would be unethical and unworthy
trade-marks or trade-names: "Kodak," for cameras and photographic supplies, against its use
of a reputable businessman. To the suggestion of petitioner, respondent may say, not without
for bicycles. 4 "Penslar," for medicines and toilet articles, against its use for cigars; 5 "Rolls-
justice though with a tinge of bitterness: "Why offer a perpetual apology or explanation as to
Royce," for automobiles. against its use for radio tubes; 6 "Vogue," as the name of a magazine,
the origin of your products in order to use my trade-mark instead of creating one of your
against its use for hats; 7 "Kotex," for sanitary napkins, against the use of "Rotex" for vaginal
own?" On our part may we add, without meaning to be harsh, that a self-respecting person
syringes; 8 "Sun-Maid," for raisins, against its use for flour; 9 "Yale," for locks and keys, against its
does not remain in the shelter of another but builds one of his own.
use for electric flashlights; 10 and "Waterman," for fountain pens, against its use for razor
blades. 11 The judgment of the Court of Appeals is affirmed, with costs against the petitioner in the three
instances. So ordered.
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 Yulo, C.J., Moran, Paras and Bocobo, JJ., concur.
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