Ang v. Teodoro

4. Ang vs. Teodoro, No.
48226, December 14, 1942

Facts:
Petitioner Ang appealed by certiorari to reverse the judgment of the Court of
Appeals reversing that of the Court of First Instance and directing the Director of
Commerce to cancel the registration of the trademark "Ang Tibay" in favor of petitioner,
and perpetually enjoining the latter from using said trademark on goods manufactured
and sold by her.
Respondent Teodoro has continuously used "Ang Tibay," both as a trademark
and as a trade-name, in the manufacture and sale of slippers, shoes, and indoor base
balls since 1910. He formally registered it as a trademark on September 29, 1915, and
as a trade-same on January 3, 1933.
Petitioner registered the same trademark "Ang Tibay" for pants and shirts on
April 11, 1932, and established a factory for the manufacture of said articles in the year
1937.
The trial court ruled in favor of Ang, on the grounds that the two trademarks are
dissimilar and are used on different and non-competing goods; that there had been no
exclusive use of the trademark by the plaintiff; and that there had been no fraud in the
use of the said trademark by the defendant because the goods on which it is used are
essentially different from those of the plaintiff.
The Court of Appeals, reversed the judgment, holding that by uninterrupted and
exclusive use since 1910 in the manufacture of slippers and shoes, respondent's
trademark has acquired a secondary meaning; that the goods or articles on which the
two trademarks are used are similar or belong to the same class; and that the use by
petitioner of said trademark constitutes a violation of sections 3 and 7 of Act No. 666.
Petitioner attacks on the validity of respondent's trademark "Ang Tibay." He
contends that the phrase "Ang Tibay" as employed by the respondent on the articles
manufactured by him is a descriptive term because, "freely translated in English," it
means "strong, durable, lasting." He invokes section 2 of Act No. 666, which provides
that words or devices which relate only to the name, quality, or description of the
merchandise cannot be the subject of a trademark.
Respondent contends that the words "Ang Tibay" are not descriptive but merely
suggestive and may properly be regarded as fanciful or arbitrary in the legal sense.
Petitioner's also argues that under sections 11 and 20 the registration by
respondent of the trademark "Ang Tibay" for shoes and slippers is no safeguard against
its being used by petitioner for pants and shirts because the latter do not belong to the
same class of merchandise or articles as that of respondent.
Issue:
Whether or not “Ang Tibay” is a descriptive term within the meaning of the
Trademark Law which cannot be appropriated as a trademark or trade name.
Whether or not the Court of Appeals erred in holding that the words "Ang Tibay"
had acquired a secondary meaning.
Held:
The term "Ang Tibay," not being geographic or descriptive, is capable of
exclusive appropriation as a trade mark. An inquiry into the etymology and meaning of
the Tagalog words "Ang Tibay," made in the decision, shows that the phrase is never
used adjectively to define or describe an object. The phrase "Ang Tibay" is an
exclamation denoting admiration of strength or durability. For instance, one who tries
hard but fails to break an object exclaims, "Ang tibay!" ("How strong!") It may also be
used in a sentence thus, "Ang tibay ng sapatos mo!" ("How durable your shoes are!")
The phrase "ang tibay" is never used adjectively to define or describe an object. One
does not say, "Ang tibay sapatos" or "sapatos ang tibay" to mean "durable shoes," but
"matibay na sapatos" or "sapatos na matibay."
It is, therefore, not a descriptive term within the meaning of the Trademark Law
but rather a fanciful or coined phrase which may properly and legally be appropriated as
a trademark or trade name.
The application of the doctrine of secondary meaning was fully sustained
because, in any event, by respondent's long and exclusive use of said phrase with
reference to his products and his business, it has acquired a proprietary connotation.
Ratio Decidendi:
The function of a trademark is to point distinctively, either by its own meaning or
by association, to the origin or ownership of the wares to which it is applied. "Ang
Tibay," as used by the respondent to designate his wares, had exactly performed that
function for twenty-two years before the petitioner adopted it as a trademark in her own
business.
Doctrine of "Secondary Meaning”. This doctrine is to the effect that 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.

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4. Ang vs. Teodoro, No.

48226, December 14, 1942

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