Dy Buncio v. Tan Tiao Bok, G.R. No. 16397, October 3, 1921

Dy Buncio v.
Tan Tiao Bok,
G.R. NO.: G.R. No. 16397
DATE OF October 3, 1921

JUDGMENT:
PARTIES DY BUNCIO VS
INVOLVED:
TAN TIAO BOK
GENERAL TOPIC The mere fact that some resemblance can be pointed out between the
DISCUSSED/KEYWO marks used by two competitors in marketing a particular article does
RD: not of itself prove unfair competition on the part of either
OVERVIEW: This action was initiated in the Court of First Instance of the City of
Manila by the plaintiff, Dy Buncio, who is a tea merchant, to enjoin
the defendant, Tan Tiao Bok, from selling tea in this market in
packages and with wrappers of a design described in the complaint, it
being alleged that said packages were put up in such manner as to
resemble closely those long sold by the plaintiff
FACTS OF THE It appears in evidence that since the year 1903 the plaintiff, Dy
CASE: Buncio, has been engaged in Manila as a merchant in importing
Formosan tea and has during that time been distributing and selling
the same in the Philippine market in original packages containing
about 5 ounces.
It may be stated here that other persons in the Philippine Islands

besides Dy Buncio have in the past, and are now, engaged in the
importation of tea from Formosa; and it is admitted that all tea from
that source comes to this market in packages with the same form of
wrapper.
In the year 1918, the defendant Tan Tiao Bok, a native of Formosa and
subject of Japan, who had formerly been employed by Dy Buncio as a
bookeeper, began to import tea from Formosa on his own account
with a view to selling it in the Philippine market; and in order to
identify his tea, he adopted a trade-mark, which he duly registered in
the Bureau of Commerce and Industry.
All the tea which has been imported and actually sold by the
defendant has been put up in wrappers bearing the trade-mark just
described;
The action is evidently based on section 7 of Act No. 666, of the

Philippine Commission, which reads as follows:
Any person who in selling his goods shall give them the general
appearance of goods of another manufacturer dealer, either in
the wrapping of the packages in which they are contained, or
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 a manufacturer or
dealer other than the actual manufacturer or dealer, and who
clothes the goods with such appearance for the purpose of
deceiving the public and defrauding another of his legitimate
trade, or any subsequent vendor of such goods or any agent of
any vendor engaged in selling such goods with a like purpose,
shall be guilty of unfair competition. . . . This section applies in
cases where the deceitful appearance of the goods, misleading
as to origin or ownership, is effected not by means of technical
trade-marks, emblems, signs, or devices, but by the general
appearance of the package containing the goods, or by the
devices or words thereon, even though such packages, devices,
or words are not by law capable of appropriation as trade-
marks; and in order that the action shall lie under this section,
actual intent to deceive the public and defraud a competitor
shall affirmatively appear on the part of the person sought to
be made liable, but such intent may be inferred from similarity
in the appearance of the goods as packed or offered for sale to
those of the complaining party.
At the hearing the trial judge found that the defendant was engaged in
illegal competition with the plaintiff and made the preliminary
injunction perpetual. At the same times he awarded P860 as damages
to the plaintiff and absolved him from the cross-complaint. From this
judgment the defendant appealed.
ISSUE/S: Whether the design on defendant’s product constitutes

unfair competition (NO)
RULING/S: The first and principal question, therefore, to be decided is whether

the wrapper, mark, and designs used on the defendant's packages of
tea are so far similar to those of the plaintiff that the use thereof
constitutes of law above petition and is obnoxious to the provision of
law above quoted.
Upon this question we have no hesitancy is saying, after a careful

comparison of the two packages, with the designs printed thereon,
that objectionable simulation is not made out.
Some resemblance there undoubtedly is, but in our opinion it is not

such as would naturally lead intending purchasers to believe that the
goods offered by the defendant are the same as are sold by the
plaintiff.
As to this it is agreed that the form of package used by both plaintiff

and defendant is the same as that adopted by all merchants engaged
in selling tea in this country; and it is a matter of common
observation that the articles supplying the simplest human needs,
such as matches, cigarettes, and certain foodstuffs, are marketed in
conventional containers of appropriate size and of a design made
almost uniform in the case of each article by immemorial custom.
Nobody can acquire any exclusive right in these standardized forms

and styles.
Coming now to a comparison of the plaintiff's design (Exhibit A) with

the trade-mark (Exhibit C) used by the defendant, the differences
between the two, viewed either as a whole or in detail, are very
marked.
It is probable that the mind of the artist who drew the sketch for
defendant's trade-mark may have gotten suggestions from the
plaintiff's design, but the general result is so different that we
consider it unlikely that a person whose eye is accustomed to the lines
of the plaintiff's design would for a moment mistake the defendants
trade-mark for it.
The superior finish, grace, and symmetry of the latter readily

distinguishes it from the other; and there is one other difference
which seems to us decisive. This is found in the fact that the well-
defined lines of the double-decked jar, so conspicuous in the
plaintiff's design, are entirely wanting in the defendant's trade-mark.
Instead the latter is formed of a combination of the figures of two

peacocks, whose ascending tails enclose at the top a pot filled with
flowers, giving the general effect of a lyre.
In whatever aspect the rival marks be viewed, we are of the opinion

that the resemblance between the two designs is not sufficiently
marked to afford just cause for complaint on the part of the plaintiff;
and we do not think that the case is altered by the circumstance that
the reading matter in both is in the usual red Chinese characters,
while the body of both designs is in green, though of differing shades.
In order that there may be deception of the buying public in the sense
necessary to constitute unfair competition, it is necessary to suppose a
public accustomed to buy, and therefore to some extent familiar with,
the goods in question.
The test of fraudulent simulation is to be found in the likelihood of

the deception of persons in some measure acquainted with an
established design and desirous of purchasing the commodity with
which that design has been associated.
The test is not found in the deception, or possibility of the deception,

of the person who knows nothing about the design which has been
counterfeited, and who must be indifferent as between that and the
other.
The simulation, in order to be objectionable, must be such as appears

likely to mislead the ordinarily intelligent buyer who has a need to
supply and is familiar with the article that he seeks to purchase.
In the case under consideration, the resemblances that have been

pointed out between the designs of the two litigants in this case are
not in our opinion sufficient to mislead such a person.
The judgment is reversed and the cause remanded for the

assessment of the damages incident to the wrongful suing
out of the injunction, without special pronouncement as to
costs of either instance. So ordered.
OTHER NOTES:

Dy Buncio v. Tan Tiao Bok, G.R. No. 16397, October 3, 1921

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Dy Buncio v.

Tan Tiao Bok,

G.R. NO.: G.R. No. 16397

DATE OF October 3, 1921

It may be stated here that other persons in the Philippine Islands

The action is evidently based on section 7 of Act No. 666, of the

ISSUE/S: Whether the design on defendant’s product constitutes

RULING/S: The first and principal question, therefore, to be decided is whether

Upon this question we have no hesitancy is saying, after a careful

Some resemblance there undoubtedly is, but in our opinion it is not

As to this it is agreed that the form of package used by both plaintiff

Nobody can acquire any exclusive right in these standardized forms

Coming now to a comparison of the plaintiff's design (Exhibit A) with

The superior finish, grace, and symmetry of the latter readily

Instead the latter is formed of a combination of the figures of two

In whatever aspect the rival marks be viewed, we are of the opinion

The test of fraudulent simulation is to be found in the likelihood of

The test is not found in the deception, or possibility of the deception,

The simulation, in order to be objectionable, must be such as appears

In the case under consideration, the resemblances that have been

The judgment is reversed and the cause remanded for the

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