Ana Ang vs. Toribio Teodoro GR L-48226, December 14, 1942 Ozaeta, J.

FACTS: Teodoro in partnership with Katindig and later as sole proprietor had continuously used Ang Tibay both as trademark and trade name in the manufacture and sale of slippers, shoes, and indoor baseballs since 1911. On September 29, 1915, the trademark was formally registered and as a trade name on January 3, 1933. Sometime in 1932, Ang registered same trademark for pants and shirts and established a factory for the manufacture of said articles in 1937. Teodoro filed a complaint against Ang. Trial Court Ruling (In favor of Ang): Two trademarks are dissimilar and are used on different and non-competing goods; there had been no exclusive use of trademark by Teodoro; there had been no fraud in the use of said trademark by Ang because goods on which it is used are essentially different from those of Teodoro. 2nd Division CA Ruling (reversed the judgment): Held that by an uninterrupted and exclusive use since 1910 in the manufacture of slippers and shoes, Teodoros trademark has acquired a secondary meaning; that the goods or articles on which the two trademarks are used are similar or belong to the same class; and that Angs use constitute violation of Act No. 666 Sec 3 and 7. Petitioners contention: the phrase Ang Tibay as employed by the respondent on the articles manufactured by him is a descriptive term because it would mean strong, durable, lasting. Words or devices which relates only to the name, quality, or description of the merchandise cannot be the subject of a trademark. The use of the trademark Ang Tibay for shoes and slippers is no safeguard as against its being used for pants and shirts by petitioner. She cannot be held guilty of trademark infringement because respondents mark is not a valid trademark nor it acquired a secondary meaning. Neither can she be held guilty of unfair competition because her use of the trademark is not likely to mislead the general public as to their origin or ownership. Respondents contention: The words Ang Tibay are not descriptive but merely suggestive and may properly be regarded as fanciful or arbitary in the legal sense. ISSUES: 1. Whether Ang Tibay can be validly registered as a trademark. 2. Whether Teodoro is the lawful registrant HELD: 1. YES. Ang Tibay is not a descriptive term within the meaning of the Trademark law but rather a fanciful or coined phrases which may be properly and legally be appropriated as a trademark or trade name. It is an exclamation denoting admiration of strength or durability. It is never used as an adjective to define or describe an object.

An application for registration of a trademark shall be registered only for one class of articles and only for the particular description of articles mentioned in said application. 2. YES. Even if Ang Tibay were not capable of exclusive appropriation as a trademark, the application of the doctrine of secondary meaning could be fully sustained because respondents long and exclusive use of said phrase with reference to his products and business, acquired a proprietary connotation. Doctrine of Secondary Meaning: a word or phrase originally incapable of exclusive appropriation with reference to an article of 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, the word or phrase has come to mean that the article was his product. The same trademark used on unlike goods, could not cause confusion in trade and that, 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. Although two non-competing 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 still be held by the courts to belong to the same class if the simultaneous use on them of identical similar marks would be likely to cause confusion as to the origin. The selection of petition of same trademark 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.