Title
Ang vs. Teodoro
Case
G.R. No. 48226
Decision Date
Dec 14, 1942
Toribio Teodoro, using "Ang Tibay" since 1910, contested Ana L. Ang's 1932 registration for pants/shirts. SC ruled "Ang Tibay" valid, with secondary meaning, causing confusion; Ana L. Ang's use infringed, constituting unfair competition.
pants
shirts
shoes

Case Summary (G.R. No. 48226)

Factual Background

Respondent Toribio Teodoro began manufacturing slippers and shoes in 1910 and continuously used the words “Ang Tibay” as a trade-mark and trade-name for those goods. He formally registered the mark in 1915 and the trade-name in 1933. Through decades of manufacture, advertising, and sales, respondent’s business grew to large proportions; aggregate gross sales from 1918 to 1938 amounted to P8,787,025.65, with sales of P1,299,343.10 in 1937 and P1,133,165.77 in 1938, and advertising expenditures aggregating P210,641.56 for 1919 to 1938. Petitioner Ana L. Ang registered the words “Ang Tibay” as a trade-mark for pants and shirts on April 11, 1932, established a factory in 1937, and reported gross sales of P422,682.09 in 1938.

Trial Court Proceedings

The Court of First Instance of Manila absolved the defendant (petitioner) from the complaint with costs against the plaintiff. The trial court found that the two trade-marks were dissimilar, that they were used on different and noncompeting goods, that the plaintiff had not exercised exclusive use of the mark, and that defendant’s use was not fraudulent because the goods were essentially different.

Court of Appeals’ Ruling

A division of the Court of Appeals reversed the trial court. The Court of Appeals held that respondent’s uninterrupted and exclusive use since 1910 had conferred a secondary meaning upon “Ang Tibay”; that the goods bearing the marks were similar or belonged to the same class for purposes of the Trade-Mark Law; and that petitioner’s use constituted violations of sections 3 and 7 of Act No. 666. The Director of Commerce, defendant below, did not appeal the Court of Appeals’ decision.

The Parties’ Contentions

Petitioner argued to the Supreme Court that the phrase “Ang Tibay” was descriptive of quality — meaning “strong, durable, lasting” — and therefore inherently unregistrable under section 2 of Act No. 666; she relied on authority that descriptive terms or geographic names cannot be appropriated as trade-marks. Petitioner alternatively argued that pants and shirts are not of the same class as shoes and slippers and that simultaneous use on noncompeting goods could not give rise to infringement or unfair competition under sections 3 and 7. Respondent contended that “Ang Tibay” was not descriptive but suggestive or fanciful and that he had long and exclusive use so that the phrase identified the origin of his goods; respondent further asserted that petitioner’s selection of the identical mark for apparel was likely an attempt to profit from respondent’s reputation and goodwill.

Issues Presented

The central issues were whether the phrase “Ang Tibay” was descriptive and therefore unregistrable, whether respondent’s use had acquired secondary meaning or proprietary connotation, and whether the use of the same mark on pants and shirts by petitioner constituted infringement or unfair competition under sections 3 and 7 of Act No. 666, given the statutory provisions requiring registration for a particular class of articles.

Ruling of the Supreme Court

The Supreme Court affirmed the judgment of the Court of Appeals, with costs against the petitioner in the three instances. The Court held that “Ang Tibay” was not a descriptive term within the meaning of the Trade-Mark Law and was therefore capable of exclusive appropriation; that respondent’s long and exclusive use had, in any event, given the phrase a proprietary connotation; and that the concurrent use by petitioner on pants and shirts was likely to cause confusion as to origin and therefore constituted infringement and unfair competition, warranting injunctive relief and cancellation where appropriate.

Legal Basis and Reasoning

The Court analyzed the Tagalog etymology and grammar of the words “Ang Tibay,” noting that “ang” functions as a definite article or exclamatory particle and that “tibay” is a root referring to strength or durability but is not adjectivally used to describe an object in the form the phrase appears. From this linguistic analysis the Court concluded that “Ang Tibay” functioned as an exclamation and a coined phrase, not as a descriptive term barred by section 2 of Act No. 666, and therefore was registrable as a trade-mark or trade-name. The Court observed that petitioner and the Director of Commerce had themselves secured registration of those words for petitioner’s products, which undercut petitioner’s present contention of descriptiveness. On the doctrine of secondary meaning the Court stated that it was unnecessary to rely solely upon it because the phrase was originally capable of exclusive appropriation; nevertheless, the Court held that respondent’s continuous and exclusive use since 1910 had in any event conferred proprietary meaning upon the mark. Concerning similarity of goods and the scope of sections 3 and 7, the Court rejected a rigid or literal classification of merchandise based solely on descriptive properties as determined at registration. The Court adopted the modern equitable doctrine that noncompeting goods may be deemed of the same class for purposes of trade-mark protection when the use of identical or closely similar marks on both would be likely to cause confusion as to the origin of the go

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