Case Digest (G.R. No. L-14761)
Facts:
On August 31, 1955, Selecta Biscuit Company, Inc. filed with the Philippine Patent Office an application to register the word SELECTA as a trade-mark for bakery products; Arce Sons and Company opposed, alleging prior and continuous use of SELECTA since 1933 by its predecessor Ramon Arce in milk, ice cream, bakery and related products and filed a separate unfair competition suit in the Court of First Instance of Manila. The CFI, on September 28, 1958, enjoined respondent from using SELECTA and awarded damages and attorney's fees; the Director of Patents, after receiving the CFI record, dismissed the opposition on December 7, 1958; the cases (G.R. Nos. L-14761 and L-17981) were consolidated and brought for review to this Court.
Issues:
- Did the Director of Patents err in dismissing petitioner’s opposition and allowing registration of SELECTA?
- Did respondent’s adoption and use of SELECTA amount to unfair competition and infringe petitioner’s rights given petitioner’s asserted prior use and alleged secondary meaning?
Ruling:
The Court reversed the Director of Patents’ decision and affirmed the judgment of the Court of First Instance in favor of Arce Sons and Company. The injunction against Selecta Biscuit Company, Inc. and the monetary awards ordered by the CFI were sustained; the Patent Office’s registration in favor of respondent was set aside.
Ratio:
The Court found that Ramon Arce and thereafter Arce Sons and Company used SELECTA continuously since 1933 on bottles, containers, signboards, delivery vehicles and product packaging, thus using it as a mark of origin and authenticity rather than merely a locality or business name. Such long and exclusive use gave SELECTA a proprietary connotation or secondary meaning warranting protection under the trade-mark law; the Director erred in treating the word as merely a trade-name and in concluding that registration would not cause confusion. The Court relied on the statutory definition of trade-mark and the protection afforded by Republic Act No. 166 to prevent appropriation of a mark that would likely deceive the purchasing public.
Doctrine:
- Trade-mark denotes a sign or device affixed to goods to designate their origin and merits exclusive protection once it has acquired proprietary significance.
- (Get Pro to unlock 3 more doctrines)