[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.