Case Summary (G.R. No. 48226)
Petitioner
Ana L. Ang registered “Ang Tibay” on April 11, 1932 for pants and shirts, opened a factory in 1937, and reported 1938 sales of ₱422,682.09. No evidence was offered of prior advertising expenditures for her mark.
Respondent
Toribio Teodoro first used “Ang Tibay” in 1910 on slippers, shoes, and related goods. He registered it as a trademark on September 29, 1915 and as a trade-name on January 3, 1933. From 1918–1938 his gross sales exceeded ₱8.7 million, with advertising outlays of ₱210,641.56.
Key Dates
• 1910: Initial use of “Ang Tibay.”
• September 29, 1915: Trademark registration (respondent).
• April 11, 1932: Trademark registration (petitioner).
• January 3, 1933: Trade-name registration (respondent).
• 1937–1938: Petitioner’s factory operations.
• December 14, 1942: Supreme Court decision.
Applicable Law
Commonwealth Act No. 666 (Trade-Mark Law) under the 1935 Constitution:
– §2: Descriptive terms.
– §3: Trademark infringement and remedies.
– §7: Unfair competition.
– §11, 13, 20: Registration classes and prohibitions on confusing marks.
Procedural History
The trial court dismissed respondent’s infringement and unfair competition claims, finding dissimilar marks and non-competing goods. The Court of Appeals reversed, recognizing respondent’s exclusive use, secondary meaning of “Ang Tibay,” and similarity of goods under §§ 3 and 7. The Director of Commerce did not appeal; petitioner sought certiorari relief before the Supreme Court.
Issues Presented
- Is “Ang Tibay” merely descriptive and therefore unregistrable?
- Has the phrase acquired secondary meaning?
- Do pants and shirts constitute “goods of a similar kind” to shoes and slippers under §§ 3 and 7?
- Does petitioner’s use amount to infringement or unfair competition?
Descriptive vs. Fanciful Character of “Ang Tibay”
Section 2 excludes only truly descriptive marks—those used adjectively to denote quality. Linguistic analysis shows “Ang Tibay” is an exclamatory phrase (“How durable!”), never adjectively modifying the product. It is therefore a suggestive or fanciful mark eligible for exclusive appropriation.
Secondary Meaning
Even if initially descriptive, respondent’s continuous and exclusive use since 1910 has bestowed upon “Ang Tibay” a proprietary significance in the marketplace, satisfying the doctrine of secondary meaning and reinforcing its protectability.
Similarity of Goods and Statutory Interpretation
While Act 666 classifies goods by descriptive properties, modern jurisprudence extends protection to prevent consumer confusion even for non-competing products. The focus is whether concurrent use of a famous mark on different goods would mislead purchasers as to origin.
Evolution of Unfair Competition Doctrine
Since the mid-1910s, courts worldwide have recognized that adopting a renowned mark for
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Factual Background
- Toribio Teodoro began manufacturing and selling slippers, shoes, and indoor baseballs in 1910, first in partnership and then as sole proprietor.
- He formally registered “Ang Tibay” as a trade-mark on September 29, 1915, and as a trade-name on January 3, 1933.
- From a P210 capital in 1910, respondent’s business grew into a modern factory with aggregate sales of P8,787,025.65 (1918–1938) and advertising expenses of P210,641.56 (1919–1938).
- Petitioner Ana L. Ang registered “Ang Tibay” for pants and shirts on April 11, 1932, opened a factory in 1937, and achieved gross sales of P422,682.09 in 1938.
- Petitioner offered no proof of advertising expenditure for “Ang Tibay” shirts and pants prior to 1938; respondent learned of her use only after her factory and ads surfaced that year and then instituted suit.
Procedural History
- Court of First Instance of Manila (Judge Quirico Abelo) dismissed respondent’s complaint, finding the marks dissimilar, goods non-competing, no exclusive use by respondent, and no fraud by petitioner.
- Second Division, Court of Appeals (Justices Bengson, Padilla, Lopez Vito, Tuason, Reyes; Padilla, ponente) reversed, holding:
- Respondent’s mark had acquired secondary meaning through long, exclusive use.
- Goods on which both parties used “Ang Tibay” were similar or in the same class.
- Petitioner’s use violated Sections 3 and 7 of Act No. 666 (Trade-Mark Law).
- Director of Commerce did not appeal; petitioner filed certiorari with the Supreme Court.
Issues Presented
- Whether the phrase “Ang Tibay” is a descriptive term barred from trade-mark registration under Section 2 of Act No. 666.
- Whether “Ang Tibay” acquired secondary meaning such that respondent enjoys exclusive use.
- Whether pants and shirts are goods similar to shoes and slippers for purposes of Sections 3 and 7 (infringement and unfair competition).
- Whether petitioner’s use of “Ang Tibay” constitutes trade-mark infringement or unfair competition.
Descriptive Term vs. Fanciful Mark
- Petitioner contended “Ang Tibay” (“strong, dura