GR No. L-14761 January 28, 1961: Arce Sons and Company Vs Selecta Biscuit Company

Arce Sons and Company vs Selecta Biscuit Company
GR No. L-14761 January 28, 1961

FACTS: On August 31, 1955, Selecta Biscuit Company, Inc., filed with the Philippine
Patent Office a petition for the registration of the word "SELECTA" as trade-mark to be
use in its bakery products alleging that it is in actual use thereof for not less than two
months before said date and that "no other persons, partnership, corporation or
association ... has the right to use said trade-mark in the Philippines, either in
the identical form or in any such near resemblance thereto, as might be calculated to
deceive." Its petition was referred to an examiner for study who found that the trademark sought to be registered resembles the word "SELECTA" used by the Acre and
Sons and Company in its milk and ice cream products so that its use by respondent will
cause confusion as to the origin of their respective goods. Consequently,
he recommended that the application be refused. The Patent Office ordered
the publication of the application for purposes of opposition. The Arce Sons and
Company then filed their opposition claiming that the mark Selecta has already
become identified with the name of Ramon Arce and its business. Moreover, that the
mark was used continuously since 1933 while the respondent herein only used it during
1955.
ISSUE: Whether or not the word Selecta is registrable?
HELD: A 'trade-mark' is a distinctive mark of authenticity through which the merchandise
of a particular producer or manufacturer may be distinguished from that of others, and
its sole function is to designate distinctively the origin of the products to which it
is attached. "The word 'SELECTA', it is true, may be an ordinary or common word in the
sense that maybe used or employed by any one in promoting his business
or enterprise, but once adopted or coined in connection with one's business as an
emblem, signor device to characterize its products, or as a badge of authenticity, it may
acquire a secondary meaning as to be exclusively associated with its products and
business. In this sense, its used by another may lead to confusion in trade and cause
damage to its business. And this is the situation of petitioner when it used the word
'SELECTA' as a trade-mark. In this sense, the law gives its protection and guarantees
its used to the exclusion of all others a (G. & C. Merriam Co. v. Saal field, 198 F. 369,
373). And it is also in the sense that the law postulates that "The ownership or
possession of a trade-mark, . . . shall be recognized and protected in the same manner
and to the same extent, as are other property rights known to the law," thereby giving to
any person entitled to the exclusive use of such trade-mark the right to recover
damages in a civil action from any person who may have sold goods of similar kind
bearing such trademark.
Ang Si Heng vs Wellington

Gr No. L-4531
June 9, 2016
FACTS:
SiHeng
Facts:
Hengand
& Dee
engaged
in the
SI
Deeare
are
engaged
in abusiness
business of manufacturing shirts, pants, drawers,
and other articles of wear for men, women, and children. They have been in that
business since the year 1938, having obtained the registration for the said
articles the trademark of "Wellington."
Benjamin Chua
Department
Store"
applied
on forMay
the registration
7, 1946. ofHisthe
application
business therefor
name "Wellington
was approved
by the Bureau of Commerce, and a certificate issued in his favor.
Petitioners allege
that the use
of theaswords
"Wellington
Department
Store"
a business name and as a corporate name by
the defendant-appellee deceives the public into buying defendant corporation's
goods under the mistaken belief that the names are the plaintiff's or have the same
source as plaintiffs' goods, thereby resulting in damage to them. Defendant raises
the defense of dissimilarity of the goods that they deal in court a quo dismissed the
complaint and held that Wellington Company has not been used by any enterprise.
defense of
Defendants
raises the defense odissimilarity of the goods that they deal in
used
by any enterprise.
ISSUE:
1. Whether or not Wellington, being a geographical indication can be registered
negative
2. Whether or not there is unfair competition negative
HELD:
Mere geographical names are ordinarily regarded as common property, and it is a
general rule that the same cannot be appropriated as the subject of an exclusive
trademark of tradename.
As the term cannot be appropriated as a trademark or a tradename, no action for
violation thereof can be maintained, as none is granted by the statute in some cases.
No action may lie in favor of the plaintiffs appellants herein for damages of injunctive
relief for the use by the defendants appellees of the name Wellington.
Doctrine in Ang vs Teodoro cannot be applied because the evidence submitted by the
appellants did not prove that their business has continued for so long a time that
it has become of consequence and acquired a goodwill of considerable value,
such that its articles and products have acquired a well-known reputation,
and confusion will result by the use of the disputed name by the
defendants' department store.
Plaintiffs appellant have not been able to show the existence of a cause of action for
unfair competition against the defendants-appellees.
Lim Hoa vs Director Patent

GR No. 8072
October 31, 1956
FACTS: Lim filed and application for registration of trademark showing two midget
roosters in an attitude of combat with the word Bantam printed above them for a foods
seasoning product. Agricom Development Co., Inc., opposed the application on the
ground, that the trademark sought to be registered was confusingly similar to its
registered mark, consisting of a pictorial representation of a hen with a words Hen
Brand and Marca Manok, which mark or brand was also used on a food seasoning
product, before the use of the trademark by the applicant.
ISSUE: Whether of not there is an infringement of the trademark?
HELD: YES. The court that the trademark are similar to each other which would likely
create confusion to the ordinary buyer. Although the Hen and Rooster are of different
sexes, they still belong to the same specie which is the Manok. To the ordinary buyer,
though it may not look any different. The similarity may compel a person to buy one
product thinking that it is the other. Moreover, with all the animals in the land, ocean and
air, the court could not phantom why the plaintiff chose two roosters facing each other
knowing that a similar trademark is used by another establishment producing the same
product.

GR No. L-14761 January 28, 1961: Arce Sons and Company Vs Selecta Biscuit Company

Uploaded by

Copyright:

Available Formats

GR No. L-14761 January 28, 1961: Arce Sons and Company Vs Selecta Biscuit Company

Uploaded by

Document Information

Original Description:

Original Title

Copyright

Available Formats

Share this document

Share or Embed Document

Sharing Options

Did you find this document useful?

Is this content inappropriate?

Copyright:

Available Formats

GR No. L-14761 January 28, 1961: Arce Sons and Company Vs Selecta Biscuit Company

Uploaded by

Copyright:

Available Formats

Arce Sons and Company vs Selecta Biscuit Company

GR No. L-14761 January 28, 1961

Ang Si Heng vs Wellington

Lim Hoa vs Director Patent

October 31, 1956

You might also like