Victorias Milling Company v. Ong Su

[G.R. No. L-28499. September 30, 1977.]

FACTS: The petitioner, Victorias Milling Company, Inc., a domestic corporation and engaged in the manufacture and sale of refined granulated sugar, is the owner of the trademark “VICTORIAS” and diamond design registered in the Philippines Patent Office on November 9, 1961.
The respondent ONG Su is engaged in the repacking and sale of refined sugar and is the owner of the trademark “VALENTINE” and design registered in the Philippines Patent Office on June 20, 1961.
On October 4, 1963, Victorias Milling Company, Inc. filed with the Philippines Patent Office a petition to cancel the registration of the ONG Su trademark “Valentine.”

The petitioner alleged that its trademark “Victorias” and diamond design has become distinctive of its sugar long before the respondent used its trademark; that the registration of “Valentine” and design has caused and will cause great damage to petitioner by reason of mistake, confusion, or deception among the purchasers because it is similar to its “Victorias” trademark; that registration was fraudulently obtained by respondent ONG Su; and that “Valentine” falsely suggests a connection with Saint Valentine or with an institution or belief connected therewith.
In his answer to the petition the respondent averred that he is doing business under the name and style “Valentine Packaging” and has registered the trademark “Valentine” with a design for sugar and was issued Certificate of Registration No. 8891 dated June 20, 1961; that the trademark “Victorias” with diamond design and the trademark “Valentine” with a design are two different marks; and that there is absolutely no likelihood of confusion, mistake or deception to purchasers through the concurrent use of the petitioner’s mark “Victorias” with a diamond design and the respondents’ mark “Valentine” with a design in connection with sugar.

The Director of Patents denied the petition to cancel the certificate of registration of the respondent ONG Su covering the trademark “Valentine” and design. “Herein that the petitioner failed to establish that diamond design component of its mark has acquired a secondary meaning and that the literal portion of the marks have no similarity, there is no reasonable likelihood of purchaser confusion resulting from registrant’s use of VALENTINE within a diamond and petitioner’s use of VICTORIAS within a diamond.”

ISSUE: WON RESPONDENT DIRECTOR OF PATENTS ERRED IN HOLDING PETITIONER’S DIAMOND DESIGN HAS NOT ACQUIRED A SECONDARY MEANING.

HELD: NO. The DOP is correct. Peitioner has not acquired secondary meaning.

The contention of petitioner that the diamond design in its trademark is an index of origin has no merit. The petitioner has not shown that the design portion of the mark has been so used that purchasers recognize the design, standing alone, as indicating goods coming from the registrant. As correctly stated by the Director of Patents, common geometric shapes such as diamonds ordinarily are not regarded as indicia of origin for goods to which the marks are applied unless they have acquired a secondary meaning. And there is no evidence that the diamond design in the trademark of the petitioner has acquired a secondary meaning with respect to its sugar business. The word “Victorias” is what identifies the sugar contained in the bag as the product of the petitioner. Indeed, the petitioner has advertised its sugar in bags marked “Victorias” with oval, hexagon and other designs.

The evidence is that ONG Su has been using his trademark since prior to the last World War and he obtained the registration thereof on June 20, 1961. Vijandre declared that the petitioner started to use its trademark only in 1947. Said trademark was registered on November 9, 1961. It cannot be said, therefore, that the respondent ONG Su imitated the trademark of the petitioner.

It seems clear that the words “Valentine” and “Victorias” and the names and places of business of Victorias Milling Company, Inc. and ONG Su are the dominant features of the trademarks in question. The petitioner has not established such a substantial similarity between the two trademarks in question as to warrant the cancellation of the trademark ‘Valentine’ of the respondent ONG Su.

Lyceum of the Phils. v. CA

(219 SCRA 610)

FACTS: Petitioner is an educational institution duly registered with the Securities and Exchange Commission (“SEC”). When it first registered with the SEC on 21 September 1950, it used the corporate name Lyceum of the Philippines, Inc. and has used that name ever since
On 24 February 1984, petitioner instituted proceedings before the SEC to compel the private respondents, which are also educational institutions, to delete the word “Lyceum” from their corporate names and permanently to enjoin them from using “Lyceum” as part of their respective names.

HELD: 1.CORPORATION LAW; CORPORATE NAMES; REGISTRATION OF PROPOSED NAME WHICH IS IDENTICAL OR CONFUSINGLY SIMILAR TO THAT OF ANY EXISTING CORPORATION, PROHIBITED; CONFUSION AND DECEPTION EFFECTIVELY PRECLUDED BY THE APPENDING OF GEOGRAPHIC NAMES TO THE WORD “LYCEUM”. — The Articles of Incorporation of a corporation must, among other things, set out the name of the corporation. Section 18 of the Corporation Code establishes a restrictive rule insofar as corporate names are concerned: “Section 18. Corporate name. — No corporate name may be allowed by the Securities an Exchange Commission if the proposed name is identical or deceptively or confusingly similar to that of any existing corporation or to any other name already protected by law or is patently deceptive, confusing or contrary to existing laws. When a change in the corporate name is approved, the Commission shall issue an amended certificate of incorporation under the amended name.” The policy underlying the prohibition in Section 18 against the registration of a corporate name which is “identical or deceptively or confusingly similar” to that of any existing corporation or which is “patently deceptive” or “patently confusing” or “contrary to existing laws,” is the avoidance of fraud upon the public which would have occasion to deal with the entity concerned, the evasion of legal obligations and duties, and the reduction of difficulties of administration and supervision over corporations. We do not consider that the corporate names of private respondent institutions are “identical with, or deceptively or confusingly similar” to that of the petitioner institution. True enough, the corporate names of private respondent entities all carry the word “Lyceum” but confusion and deception are effectively precluded by the appending of geographic names to the word “Lyceum.” Thus, we do not believe that the “Lyceum of Aparri” can be mistaken by the general public for the Lyceum of the Philippines, or that the “Lyceum of Camalaniugan” would be confused with the Lyceum of the Philippines.

2.ID.; ID.; DOCTRINE OF SECONDARY MEANING; USE OF WORD “LYCEUM,” NOT ATTENDED WITH EXCLUSIVITY. — It is claimed, however, by petitioner that the word “Lyceum” has acquired a secondary meaning in relation to petitioner with the result that word, although originally a generic, has become appropriable by petitioner to the exclusion of other institutions like private respondents herein. The doctrine of secondary meaning originated in the field of trademark law. Its application has, however, been extended to corporate names sine the right to use a corporate name to the exclusion of others is based upon the same principle which underlies the right to use a particular trademark or tradename. In Philippine Nut Industry, Inc. v. Standard Brands, Inc., the doctrine of secondary meaning was elaborated in the following terms: ” . . . a word or phrase originally incapable of exclusive appropriation with reference to an article on the market, because geographically or otherwise descriptive, might nevertheless have been used so long and so exclusively by one producer with reference to his article that, in that trade and to that branch of the purchasing public, the word or phrase has come to mean that the article was his product.” The question which arises, therefore, is whether or not the use by petitioner of “Lyceum” in its corporate name has been for such length of time and with such exclusivity as to have become associated or identified with the petitioner institution in the mind of the general public (or at least that portion of the general public which has to do with schools). The Court of Appeals recognized this issue and answered it in the negative: “Under the doctrine of secondary meaning, a word or phrase originally incapable of exclusive appropriation with reference to an article in the market, because geographical or otherwise descriptive might nevertheless have been used so long and so exclusively by one producer with reference to this article that, in that trade and to that group of the purchasing public, the word or phrase has come to mean that the article was his produce (Ana Ang vs. Toribio Teodoro, 74 Phil. 56). This circumstance has been referred to as the distinctiveness into which the name or phrase has evolved through the substantial and exclusive use of the same for a considerable period of time. . . . No evidence was ever presented in the hearing before the Commission which sufficiently proved that the word ‘Lyceum’ has indeed acquired secondary meaning in favor of the appellant. If there was any of this kind, the same tend to prove only that the appellant had been using the disputed word for a long period of time. . . . In other words, while the appellant may have proved that it had been using the word ‘Lyceum’ for a long period of time, this fact alone did not amount to mean that the said word had acquired secondary meaning in its favor because the appellant failed to prove that it had been using the same word all by itself to the exclusion of others. More so, there was no evidence presented to prove that confusion will surely arise if the same word were to be used by other educational institutions. Consequently, the allegations of the appellant in its first two assigned errors must necessarily fail.” We agree with the Court of Appeals. The number alone of the private respondents in the case at bar suggests strongly that petitioner’s use of the word “Lyceum” has not been attended with the exclusivity essential for applicability of the doctrine of secondary meaning. Petitioner’s use of the word “Lyceum” was not exclusive but was in truth shared with the Western Pangasinan Lyceum and a little later with other private respondent institutions which registered with the SEC using “Lyceum” as part of their corporation names. There may well be other schools using Lyceum or Liceo in their names, but not registered with the SEC because they have not adopted the corporate form of organization.

3.ID.; ID.; MUST BE EVALUATED IN THEIR ENTIRETY TO DETERMINE WHETHER THEY ARE CONFUSINGLY OR DECEPTIVELY SIMILAR TO ANOTHER CORPORATE ENTITY’S NAME. — petitioner institution is not entitled to a legally enforceable exclusive right to use the word “Lyceum” in its corporate name and that other institutions may use “Lyceum” as part of their corporate names. To determine whether a given corporate name is “identical” or “confusingly or deceptively similar” with another entity’s corporate name, it is not enough to ascertain the presence of “Lyceum” or “Liceo” in both names. One must evaluate corporate names in their entirety and when the name of petitioner is juxtaposed with the names of private respondents, they are not reasonably regarded as “identical” or “confusingly or deceptively similar” with each other