Case Digest (G.R. No. 31380)
Facts:
E. Spinner & Company v. Neuss Hesslein Corporation, G.R. No. 31380, January 13, 1930, the Supreme Court, Street, J., writing for the Court.
This action was filed in the Court of First Instance of Manila on November 23, 1926, by E. Spinner & Co. (a partnership with offices in Manchester and Bombay, represented in the Philippines by Wise & Co.) against Neuss Hesslein Corporation (a Philippine corporation organized December 1922 and acting as selling agent for Neuss Hesslein & Co., Inc. of New York). The plaintiff sought (1) an injunction restraining the defendant from using the word “Wigan” on khaki textiles sold in the Philippines and (2) damages (claimed at P15,000) for alleged infringement of the plaintiff’s trademark and for unfair competition.
The material facts are largely undisputed. Beginning about 1900 the plaintiff exported khaki to the Philippines and marketed several grades under a common pictorial trademark first registered in 1905 — a label depicting two elephant heads with a blank “Quality: ______” space where the grade name (e.g., Wigan, Stockport, Jackton, Ashford) was stenciled. In April 1925 the plaintiff re-registered essentially the same trademark but incorporated the word “Wigan” into the registered device, thereby making that term part of its registered mark.
The defendant (marketing New York-made khaki in the Philippines since 1923) had long used its own marks (“Five Soldiers” registered 1916; “Four Soldiers/Wide Awake” registered 1923). At the request of customers the New York house printed “Wigan” on some bolts supplied to the defendant, and during 1923–1924 the defendant began selling bolts bearing the word “Wigan” (allegedly to indicate color) alongside its own trademark. Prices for defendant’s goods were markedly lower than plaintiff’s Wigan grade.
At trial the Court of First Instance absolved the defendant from the complaint with costs against the plaintiff. The plaintiff appealed to the Supreme Court. The Supreme Court reviewed the statutory law (Act No. 666), the historical use of “Wigan” by the plaintiff as an arbitrary trade name associated with quality, evidence that the defendant stamped “Wigan” at customers’ request, and prior authorities concerning unfair competition and partial appropriation of marks. The Supreme Court modified the lower-court judgment by enjoining the defendant from using the wor...(Pro-only)
Issues:
- Did the defendant’s use of the word “Wigan” on its khaki in the Philippine market constitute unlawful unfair competition or an infringement of the plaintiff’s trade-mark?
- Is the plaintiff entitled to damages or other monetary relief for the defendant’s wrong...(Pro-only)
Ruling:
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Ratio:
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Doctrine:
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