(A)

Topic: Trademarks (in general); attributes & functions

Case: ELIDAD KHO vs CA

GR no. 115758 Mar 19, 2002

Facts:
Petitioner Elidad C. Kho filed a complaint for injunction and damages with a prayer for the issuance of a
writ of preliminary injunction against Summerville alleging that petitioner is the registered owner of the
copyrights Chin Chun Su and Oval Facial Cream Container/Case; that she also has patent rights on Chin
Chun Su after purchasing the same from Quintin Cheng, the registered owner thereof; that respondent
Summerville is the exclusive and authorized importer, re-packer and distributor of Chin Chun Su products
manufactured by Shun Yi Factory of Taiwan, who advertised and sold petitioner’s cream products under
the brand name Chin Chun Su, in similar containers that petitioner uses, thereby misleading the public, and
resulting in the decline in the petitioner’s business sales and income; and, that the respondents should be
enjoined from allegedly infringing on the copyrights and patents of the petitioner.

The petitioner alleged that she is the registered owner of the copyrights Chin Chun Su and Oval
Facial Cream Container/Case as evidenced by certificates of copyright registrations and patent
rights on Chun Chun Su & Device and Chin Chun Su (medicated cream) after she purchased it from Quintin
Cheng (previous registered owner in the Philippine Patent Office [PPO]).

Meanwhile, there was a decline in the petitioner’s business income due to the advertisement and
sale made by Summerville on petitioner’s products under the same brand name and in similar containers.
According to Summerville, they are the exclusive and authorized importer, re-packer and distributor of Chin
Chun Su products manufactured by Shun Yi Factory of Taiwan and that said company authorized them to
register its trade name “Chin Chun Su Mediated Cream” with the PPO.

The application for preliminary injunction filed by petitioner was granted. Hence, respondents
moved for reconsideration, which was denied. The respondents then moved for nullification of
said preliminary injunction with the CA. The latter granted its petition.

The RTC ruled in favor of KEC.

After the denial of their motion for reconsideration, respondents filed a petition for certiorari with the CA,
praying for the nullification of the said writ of preliminary injunction issued by the trial court. The CA rendered
a Decision in favor of the respondents.

In the meantime, the trial court went on to hear petitioner’s complaint for final injunction and damages. The
trial court rendered a Decision barring the petitioner from using the trademark Chin Chun Su and upholding
the right of the respondents to use the same, but recognizing the copyright of the petitioner over the oval
shaped container of the beauty cream.

The petitioner appealed to the CA.

The CA denied the petitioner’s motions for reconsideration. Hence, this petition.

Issue:
WON the copyright and patent over the name and container of a beauty cream product would entitle the
registrant to the use and ownership over the same to the exclusion of others.

Ruling:

We rule in favor of the respondents.

Intellectual Property Law; Trademarks and Trade Names; Copyrights; Patents; Words and Phrases;
“Trademark,” “Copyright,” and “Patent,” Explained and Distinguished; Trademark, copyright and patents
are different intellectual property rights that cannot be interchanged with one another.—Trademark,
copyright and patents are different intellectual property rights that cannot be interchanged with one another.
A trademark is any visible sign capable of distinguishing the goods (trademark) or services (service mark)
of an enterprise and shall include a stamped or marked container of goods. In relation thereto, a trade name
means the name or designation identifying or distinguishing an enterprise. Meanwhile, the scope of a
copyright is confined to literary and artistic works which are original intellectual creations in the literary and
artistic domain protected from the moment of their creation. Patentable inventions, on the other hand, refer
to any technical solution of a problem in any field of human activity which is new, involves an inventive step
and is industrially applicable.

Same; Same; Same; Same; The name and container of a beauty cream product are proper subjects of a
trademark, and a party’s copyright and patent registration of the name and container would not guarantee
him or her the right to the exclusive use of the same for the reason that they are not appropriate subjects
of the said intellectual rights.—Petitioner has no right to support her claim for the exclusive use of the
subject trade name and its container. The name and container of a beauty cream product are proper
subjects of a trademark inasmuch as the same falls squarely within its definition. In order to be entitled to
exclusively use the same in the sale of the beauty cream product, the user must sufficiently prove that she
registered or used it before anybody else did. The petitioner’s copyright and patent registration of the name
and container would not guarantee her the right to the exclusive use of the same for the reason that they
are not appropriate subjects of the said intellectual rights. Consequently, a preliminary injunction order
cannot be issued for the reason that the petitioner has not proven that she has a clear right over the said
name and container to the exclusion of others, not having proven that she has registered a trademark
thereto or used the same before anyone did.

( C)
Topic: Sec 123.1: Marks w/c cannot be registered; doctrine of secondary meaning exception

Case: ANA L. ANG vs TORIBIO TEODORO

GR no L- 48226 Dec 14, 1941

Facts:
Toribio Teodoro at first in partnership with Juan Katindig and later as sole proprietor, has continuously used
“Ang Tibay” both as a trademark and as a trade-name, in the manufacture and sale of slippers, shoes and
indoor baseballs since 1910. He formally registered it as a trademark on September 29,
1915 and as a trade-name on January 3, 1933. Starting in an obscure shop in 1910 with a modest capital
of P210 but with tireless industry and unlimited perseverance, Teodoro, then an unknown young man
making slippers with his own hands but now a prominent business magnate and a manufacturer with a
large
factory operated with modern machinery by a great number of employees, has steadily grown with his
business ton which he has dedicated the best years of his life. In short, respondent Teodoro has long been
using ‘Ang Tibay’ both as trademark and tradename in the manufacture and sale of its slippers, shoes and
indoor baseballs when he formally registered it.

Meanwhile, the petitioner, Ana Ang registered the same trademark “Ang Tibay” for pants and shirts on April
11, 1932 and established a factory for the manufacture of said articles in the year 1937.

Respondent moved to cancel the registration of petitioner’s mark. The RTC ruled in favor of the petitioner,
absolving Ana Ang from the complaint on the ground that two trademarks are dissimilar and are used on
different and non-competing goods; that there had been no fraud on the use of said trademarks. However,
the CA reversed the ruling of the RTC, holding that by uninterrupted and exclusive use since 1910 in the
manufacture of slippers, shoes, Teodoro’s trademark has acquired secondary meaning; that the goods or
articles on which the two trademarks are used are similar or belong to the same class; and that the use by
Ana Ang (petitioner) of said trademark constitutes a violation of Section 3 and 7 of Act # 666. Hence, the
petition.

Issue:
1) WON ‘ANG TIBAY’ is a descriptive term not registrable.
2) WON the trademark ‘ANG TIBAY’ has acquired a secondary meaning.

Ruling:
1) NO. The phrase “Ang Tibay” is an exclamation denoting administration of strength or durability. For
instance, one who tries hard but fails to break an object exclaims, “Ang tibay!” (How strong!”) 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” 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 trademark or tradename. 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 trademark.
2) NO. 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 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
and to that branch of the purchasing public, the word or phrase has come to mean that the article
was his product. 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.

1.Trade-Marks and Trade-Names; Act No. 666.—Respondent 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. Pe-titioner 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. Held: That petitioner's
registration of the trade-mark "Ang Tibay" should be cancelled, and that she should be perpet-ually enjoined
from using said trade-mark on goods manufactured and sold by her.

2.Id.; Id.; Term "Ang Tibay," not Being Geographic or Descriptive, is Capable of Exclusive Appropriation as
a Trade Mark.—An inquiry into the etymology and meaning of the Tagalog words "Ang Tibay," made in the
decision, shows that the phrase is never used adjectively to define or describe an object. It is, there-fore,
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. Hence, it was originally
capable of exclusive appro-priation as a trade-mark by the respondent.

3.Id.; Id.; Id.; Function op a Trade-Mark; Doctrine of "Secondary Meaning."—The function of a trade-mark
is to point dis-tinctively, either by its own meaning or by association, to the origin or ownership of the wares
to which it is applied. "Ang Tibay," as used by the respondent to des-ignate 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 oper-ated by the respondent. Even if "Ang Tibay," therefore, were not
capable of ex-clusive appropriation as a trade-mark, the application of the doctrine of secondary meaning
could nevertheless be fully sus-tained 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. 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 geo-graphically or otherwise descriptive, might nevertheless have been
used so long and so exclusively by one producer with ref-erence to his article that, in that trade and to that
branch of the purchasing- pub-lic, the word or phrase has come to mean that the article was his product.