Ang v Teodoro

J. Ozaeta December
14, 1942

Facts:

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.

BG FACTS:
--

 Teodoro started with a small shop in 1910 having a capital of P210 but
with tireless industry and unlimited perseverance, Toribio Teodoro 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
--

Ana Ang 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.
o  1938  Ang advertised her factory, brought to Teodoro’s attention
who filed present infringement suit

o Neither the decision of the trial court nor that of the Court of
Appeals
shows how much petitioner has spent for advertisement.
o Teodoro claims that Ang "was unable to prove that she
had spent a single centavo advertising 'Ang Tibay' shirts
and pants prior to 1938.

RTC: Ruled for Ana Ang[NO INFRINGEMENT]

o on the grounds that the two trade--marks are dissimilar
* and are used on different and non--competing goods
o no exclusive use of the trade-- mark by Teodoro
o no fraud in the use of the said trade--mark since
different nga  goods on which it is used
are essentially different

CA: Reverses RTC[THERE WAS

INFRINGEMENT]
 o by uninterrupted and exclusive use since 1910 in the manufacture of
slippers and shoes, Teodoro's trade-- mark has acquired a
secondary meaning;
o that the goods or articles on which the two trademarks are used
are similar or belong to the same class; and
o that the use bv Ana Ang of said trade--mark constitutes a violation of
sections 3 and 7 of Act No. 666

-- Counsel for Ana Ang argues that:

o "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."
o 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
o Cites among others the case of Baxter vs. Zuazua, 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."

-- Counsel for Teodoro:

o the words "Ang Tibay" are not descriptive but merely suggestive and
may properly be regarded as fanciful or arbitrary in the legal
sense
o cited 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.

Issue/s:

1. Can “Ang Tibay” be subject of a trademark? YES

a. 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

i. Ang is an article = “The” in English OR contraction of the word “Anong”

Anong Ganda  Ang Ganda
ii. Tibay is a root word from which are derived the verb
magpatibay (to strengthen)
iii. TAKEN TOGETHER: The phrase "Ang Tibay" is an exclamation
denoting admiration of strength or durability
 iv. 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.

 phrase "ang tibay" is never used adjectively to define or

describe an object. One does not say, "ang tibay sapatos"
or "sapatos ang tibay" is never used adjectively to define
or describe an object. One does not say, "ang tibay
sapatos" or "sapatos ang tibay"

b. When Ang took the trouble and expense of securing the registration of
these same words as a trade-- mark 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. [EVEN SHE
KNEW IT WAS REGISTRABLE AS TRADE-MARK SINCE SHE TOOK THE
TROUBLE TO DO SO]
c. 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. (for 22
years)
 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.  DONE HERE

2. Is it proper to apply the “Doctrine of Secondary Meaning” in this case? NO

[assigned it as an error of CA daw]
a. 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
b. The phrase "Ang Tibay," being neither geographic nor descriptive,
was originally capable of exclusive appropriation as a trade--
mark
c. ASSUMING ARGUENDO: By Teodoro's long and exclusive use of said
phrase with reference to his products and his business, it has acquired a
proprietary connotation
3. UNFAIR COMPETITION – not similar goods daw, not same class of merchandise
(Pants/shirt vs shoes/slippers) [ACT No. 666 – TM Law]
a. 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."
b. 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
c. Section 11 requires the applicant for registration of a trade--mark to
state, among others, "the general class oj merchandise to which the
trade-- mark claimed has been appropriated."
d. Section 13 provides that no alleged trade--mark or tradename shall be
registered which is identical with a registered or known trademark
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.
e. 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."
f. COURT: 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.
i. We have to apply this law as it has grown and not as it was born
g. Since 1916, 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."

h. PRESENT INTERPRETATION: 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.
i. 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.

j. there can be unfair competition or unfair trading even if the goods

are non--competing, and that such unfair trading can cause injury or
damage to the first user of a given trade--mark:
i. by prevention of the natural expansion of his business
ii. by having his business reputation confused with and put at the
mercy of the second user
k. 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
 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
o 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.
 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.
4. Should it be allowed for Ana Ang to still use the “Ang Tibay” mark but put a
label statin, “Not manufactured by Toribio Teodoro”? NO
a. such practice would be un-- ethical and unworthy of a
reputable businessman
b. "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?"

Decision:

The judgment of the Court of Appeals is affirmed, with costs against the petitioner in
the three instances. So ordered.

Other info: