Facts:
E. Spinner & Company filed Civil Case in the Court of First Instance of Manila on November 23, 1926 against
Neuss Hesslein Corporation to restrain the latter from using the word
“Wigan” on khaki textiles sold in the Philippines and to recover damages for violation of plaintiff’s trademark rights and for
unfair competition. The plaintiff was a copartnership with head offices in Manchester, England, and Bombay, India, represented in the Philippines by
Wise & Co., a domestic corporation in Manila. The defendant was a Philippine corporation organized in December 1922, acting as selling agent in the Philippines for its parent
Neuss Hesslein & Co., Inc. of New York. The plaintiff had long manufactured and sold textile fabrics, including khaki cloth, exporting to the Philippines through local firms beginning around 1900 after the American occupation. The plaintiff marketed multiple khaki grades, using a common trademark consisting of a rectangular label with two elephant-head profiles, leaves, and flags, with the words
“LEEMANN & GATTY’S ORIGINAL PATENTED FAST KHAKI DRILL”, and with a blank space where the grade name (including
“Wigan,” “Stockport,” “Jackton,” and
“Ashford”) was inserted after
“Quality.” This trademark was registered in 1905. In 1924, the plaintiff learned that the defendant was selling khaki in the Philippines with
“Wigan” stenciled on bolts below defendant’s own trademark, ostensibly to indicate color, though it was used for khaki of different shades. In April 1925, the plaintiff caused its trademark (identical in essential features with the 1905 mark) to be re-registered in a way that incorporated
“Wigan” as an integral part of the registered trade-mark, inserting the word
“Wigan” after
“Quality.” Before defendant’s incorporation in December 1922, the New York house had already marketed khaki in the Philippines under the
“Five Soldiers” and
“Four Soldiers” brands. After defendant assumed agency in the Philippines, its manager began, at the request of Chinese customers, to order the New York house to print
“Wigan” conspicuously on the bolts intended for sale in the Philippines, and
“Wigan” began to appear on the defendant’s khaki in late 1923 or early 1924. The trial court absolved the defendant from the complaint with costs against the plaintiff, and the plaintiff appealed.
Issues:
- Whether the defendant’s use of the word “Wigan” on khaki sold in the Philippines constituted unfair competition under Act No. 666.
- Whether the defendant’s use of “Wigan” infringed the plaintiff’s registered trademark after April 1925.
- Whether the plaintiff was entitled to damages for the alleged wrongful acts.
Ruling:
Ratio:
Doctrine: