[G.R. No. 48226.
December 14, 1942.]
ANA L. ANG, petitioner, vs.
TORIBIO TEODORO, respondent.
D E C I S I O N
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 a trade-mark on September 29, 1915, and as a 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 for 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 trade-marks 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 and exclusive use since 1910 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.
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
translated in English," it means "strong, durable lasting." He
invokes section 2 of Act No. 666, which provides that words or devices
which relate 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., 160), 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. They cite several cases in which similar words have been sustained
as valid trade-marks such as "Holeproof" for hosiery,
"Ideal" for tooth brushes, and "Fashionknit" for
neckties and sweaters.
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 strengthen);
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
admiration 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" 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 on 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. Saalfield, 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
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 action 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 so 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 20 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 kind," "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 no showing that she is unfairly or fraudulently using the 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 unlike 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 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 noncompeting, 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. When 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. Lever 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; "Penslar," for
medicines and toilet articles, against its use for cigars; "Rolls-
Royce," for automobiles, against its use for radio tubes;
"Vogue," as the name of a magazine, against its use for hats; "Kotex,"
for sanitary napkins, against the use of "Rotex" for vaginal
syringes; "Sun-Maid," for raisins, against its use for flour; "Yale,"
for locks and keys, against its use for electric flashlights; and
"Waterman," for fountain pens, against its use for razor blades.
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 cited 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 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, 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.