ARCE SONS AND COMPANY, PETITIONER VS. SELECTA BISCUIT COMPANY, INC., ET AL., RESPONDENTS. ARCE SONS AND COMPANY, PLAINTIFF AND APPELLEE, VS. SELECTA BISCUIT COMPANY, INC., DEFEN…

On August 31, 1955, Selecta Biscuit Company, Inc., hereinafter referred
to as respondent, filed with the Philippine Patent Office a petition
for the registration of the word “SELECTA” as trade-mark to be used on
its bakery products alleging that it is in actual use thereof for not
less than two months before said date and that “no other person,
partnership, corporation, or association * * * has the right to use
said trade-mark in the Philippines, either in the identical form or in
any such near resemblance thereto, as might be calculated to deceive.”
Its petition was referred to an examiner for study who found that the
trade-mark sought to be registered resembles the word “SELECTA” used by
Arce Sons and Company, hereinafter referred to as petitioner, in its
milk and ice cream products so that its very use by respondent will
cause confusion as to the origin of their respective goods.
Consequently, he recommended that the application be refused. However,
upon reconsideration, the Patent Office ordered the publication of the
application for purposes of opposition.

In due time,
petitioner filed its opposition thereto on several grounds, among which
are: (1) that the mark “SELECTA” had been continuously used by
petitioner in the manufacture and sale of its products, including
cakes, bakery products, milk and ice cream, from the time of its
organization and even prior thereto by its predecessor-in-interest,
Ramon Arce; (2) that the mark “SELECTA” has already become identified
with the name of petitioner and its business; (3) that petitioner had
warned respondent not to use said mark because it was already being
used by the former, but that the latter ignored said warning; (4) that
respondent is using the word “SELECTA” as a trade-mark in bakery
products in unfair competition with the products of petitioner thus
resulting in confusion in trade; (5) that the mark to which the
application of respondent refers has striking resemblance, both in
appearance and meaning, to petitioner’s mark as to be mistaken
therefore by the public and cause respondent’s goods to be sold as
petitioner’s; and (6) that actually a complaint has been filed by
petitioner against respondent for unfair competition in the Court of
First Instance of Manila asking for damages and for the issuance of a
writ of injunction against respondent enjoining the latter from
continuing with the use of said mark.

On September 28, 1958,
the Court of First Instance of Manila rendered decision in the unfair
competition case perpetually enjoining respondent from using the name
“SELECTA” as a trade-mark on the goods manufactured and/or sold by it
and ordering it to pay petitioner by way of damages all the profits it
may have realized by the use of said name, plus the sum of P15,000.00
as attorney’s fees and costs of suit. From this decision, respondent
brought the matter on appeal to the Court of Appeals wherein the case
was docketed as CA-G. R. No. 24017-R.

Inasmuch as the issues
of facts in the case for unfair competition are substantially identical
with those raised before the Patent Office, the parties, at the hearing
thereof, agreed to submit the evidence they have introduced before the
Court of First Instance of Manila to said office, and on the strength
thereof, the Director of Patents, on December 7, 1958, rendered
decision dismissing petitioner’s opposition and stating that the
registration of the trademark “SELECTA” in favor of applicant Selecta
Biscuit Company, Inc., will not cause confusion or mistake nor will
deceive the purchasers as to cause damage to petitioner. Hence,
petitioner interposed the present petition for review.

On September 7, 1960, this Court issued a resolution of the following tenor:

“In G. R. No. L-14761 (Arce Sons and Company vs.
Selecta Biscuit Company, Inc., et al.), considering that the issues
raised and evidence presented in this appeal are the same as those
involved and presented in Civil Case No. 32907, entitled Arce Sons and
Company vs. Selecta Biscuit Company, Inc. of the Court of First
Instance of Manila, presently pending appeal in the Court of Appeals,
docketed as CA-G. R. No. 24017-R, the Court resolved to require the
parties, or their counsel; to inform this Court why the appeal pending
before the Court of Appeals should not be forwarded to this Court in
order that the two cases may be considered and jointly decided, to
avoid any conflicting decision, pursuant to the provisions of sections
17, paragraph 5, of the Judiciary Act of 1948 (Republic Act No. 296).”

And having both petitioner and respondent manifested in writing that
they do not register any objection that the case they submitted on
appeal to the Court of Appeals be certified to this Court so that it
may be consolidated with the present case, the two cases are now before
us for consolidated decision.

The case for petitioner is narrated in the decision of the court a quo as follows:

“In
1933, Ramon Arce, predecessor in interest of the plaintiff, started a
milk business in Novaliches, Rizal, using the name ‘SELECTA’ as a trade
name as well as a trade-mark. He began selling and distributing his
products to different residences, restaurants and offices, in bottles
on the caps of which were inscribed the words ‘SELECTA FRESH MILK’. As
his business prospered, he thought of expanding and, in fact, he
expanded his business by establishing a store at Nos. 711-713 Lepanto
Street. While there, he began to cater, in addition to milk, ice cream,
sandwiches and other food products. As his catering and ice cream
business prospered in a big way, he placed a big signboard in his
establishment with the name ‘SELECTA’ inscribed thereon. The signboard
was placed right in front of the said store. For the sake of
efficiency, the Novaliches place was made the pasteurizing plant and
its products were distributed through the Lepanto store. Special
containers made of tin cans with the word ‘SELECTA’ written on their
covers and ’embossed or blown’ on the bottles themselves were used.
Similarly, exclusive bottles for milk products were ordered from Getz
Brothers with the word ‘SELECTA’ blown on them. The sandwiches which
were sold and distributed were wrapped in carton boxes with covers
bearing the name ‘SELECTA’. To the ordinary cars being used for the
delivery of his products to serve outside orders were added to a fleet
of five (5) delivery trucks with the word ‘SELECTA’ prominently painted
on them. Sales were made directly at the Lepanto store or by means of
deliveries to specified addresses, restaurants and offices inside
Manila and its suburbs and sometimes to customers in the provinces. As
time passed, new products were produced for sale, such as cheese
(cottage cheese) with special containers especially ordered from the
Philippine Education Company with the name ‘Selecta’ written on their
covers.

“The war that broke out on December 8, 1941, did
not stop Ramon Arce from continuing with his business. After a brief
interruption of about a month, that is, during the end of January,
1942, and early February, 1942, he resumed his business using the same
trade-name and trade-mark, but this time, on a larger scale. He entered
the restaurant business. Dairy products, ice cream, milk, sandwiches
continued to be sold and distributed by him. However, Ramon Arce was
again forced to discontinue the business on October, 1944, because time
was beginning to be precarious. American planes started to bomb Manila
and one of his sons Eulalio Arce, who was/is managing the business, was
seized and jailed by the Japanese. Liberation came and immediately
thereafter, Ramon Arce once more resumed his business, even more
actively, by adding another store located at the corner of Lepanto and
Azcarraga Streets. Continuing to use the name ‘Selecta’, he added
bakery products to his line of business. With a firewood type of oven,
about one-half the size of the courtroom, he made his own bread,
cookies, pastries and assorted bakery products. Incidentally, Arce’s
bakery was transferred to Balintawak, Quezon City—another expansion of
his business—where the bakery products are now being baked thru the use
of firewood, electric and gas oven. These bakery products, like his
other products, are being sold at the store itself and/or delivered to
people ordering them in Manila and its suburbs, and even Baguio. Like
the other products, special carton boxes in different sizes, according
to the sizes of the bakery products, with the name ‘Selecta’ on top of
the covers are provided for these bakery products. For the cakes,
special boxes and labels reading ‘Selecta Cakes for all occasions’ are
made. For the milk products, special bottle caps and bottles with the
colored words ‘Quality Always Selecta Fresh Milk, One Pint’ inscribed
and blown on the sides of the bottles—an innovation from the old
bottles and caps used formerly. Similar, special boxes with the name
‘Selecta’ are provided for fried chicken sold to customers.

”Business being already well established, Ramon Arce decided to
retire, so that his children can go on with the business. For this
purpose, he transferred and leased to them all his rights, interests
and participations in the business, including the use of the name
‘Selecta’ sometime in the year 1950, at a monthly rental of P10,000.00,
later reduced to P6,500.00. He further wrote the Bureau of Commerce a
letter dated February 10, 1950, requesting cancellation of the business
name ‘Selecta Restaurant’ to give way to the registration of the name
‘Selecta’ and asked that the same be registered in the name of Arce
Sons & Company, a co-partnership entered into by and among his
children on February 10, 1950. Said co-partnership was organized, so
its articles of co-partnership state, ‘to conduct a first class
restaurant business; to engage in the manufacture and sale of ice
cream, milk, cakes and other dairy and bakery products; and to carry on
such other legitimate business as may produce profit’; Arce Sons &
Company has thus continued the lucrative business of their predecessor
in interest. It is now, and has always been, engaged in the restaurant
business, the sale of milk, and the production and sale of cakes, dairy
products and bakery products. Arce Sons & Company are now making
bakery products like bread rolls, pan de navarro, pan de sal, and other
new types of cookies and biscuits of the round, hard and other types,
providing therefor special boxes with the name ‘Selecta’.

“Pursuing
the policy of expansion adopted by their predecessor, Arce Sons &
Company established another store—the now famous ‘Selecta Dewey
Boulevard’, with seven (7) delivery; trucks with “the name ‘Selecta’
conspicuously painted on them, to serve, deliver and cater to customers
in and outside of Manila.”

The case for respondent, on the other hand, is expressed as follows:

“Defendant
was organized and registered as a corporation under the name and style
of Selecta Biscuit Company, Inc. on March 2, 1955 (Exhibit 2; Exhibit
2-A; t.s.n., p. 3, April 17, 1958) but which started operation as a
biscuit factory on June 20, 1955 (t.s.n,, p. 3, id). The name ‘Selecta’
was chosen by the organizers of defendant who are Chinese citizens as a
translation of the Chinese word “Ching Suan’ which means ‘mapili’ in
Tagalog, and ‘Selected’ in English (t.s.n. p. 4, id.). Thereupon, the
Articles of Incorporation of Selecta Biscuit Company, Inc. were
registered with the Securities and Exchange Commission (t.s.n., p. 5,
id), and at the same time registered as a business name with the Bureau
of Commerce which issued certificate of registration No. 55594 (Exhibit
3; Exhibit 3-A). The same name Selecta Biscuit Company, Inc., was also
subsequently registered with the Bureau of Internal Revenue which
issued Registration Certificate No. 35764 (Exhibit 4, t.s.n., p. 6
Id.). Inquiries were also made with the Patent Office of the
Philippines in connection with the registration of the name ‘Selecta’;
after an official of the Patent referred to index cards information was
furnished to the effect that defendant could register the name
‘Selecta’ with the Bureau of Patents (t.s.n., p. 7 id.). Accordingly,
the corresponding petition for registration of trade-mark was filed
(Exh. 5. 5-A, Exhibit 5-B). Defendant actually operated its business
factory on June 20, 1955, while the petition for registration of
trade-mark ‘Selecta’ was filed with the Philippine Patent Office only
on September 1, 1955, for the reason that the Patent Office informed
the defendant that the name should first be used before registration
(t.s.n., p. 8, id.). The factory of defendant is located at Tuason
Avenue, Northern Hills, Malabon, Rizal, showing plainly on its wall
facing the streets the name ‘SELECTA BISCUIT COMPANY, INC (Exh. 6, 6-A,
6-B, t.s.n., p. 9, id.). It is significant to note that Eulalio Arce,
Managing Partner of the plaintiff resided and resides near the
defendant’s factory, only around 150 meters away; in fact, Eulalio Arce
used to pass in front of the factory of defendant while still under
construction and up to the present time (t.s.n., pp. 9, 10, id.).
Neither Eulalio Arce nor any other, person in representation of the
plaintiff complained to the defendant about the use: of the name
‘Selecta Biscuit’ until the filing of the present complaint.

“There
are other factories using ‘Selecta’ as trade-mark for biscuits t.s.n.,
p. 12; Exh. 7, 7-A, 7-B; Exhibits 8, 8-A, 8-B; Exhibits 9, 9-A; 9-B);
defendant in fact uses different kinds of trade-marks (Exhibits 10,
10-A, to 10-W, t.s.n., p. 17).

“The biscuits, cookies, and
crackers manufactured and sold by defendant are wrapped in cellophane
pouches and placed inside tin can (Exh. 11; t.s.n., p. 19); the
products of defendant are sold through the length and breadth of the
Philippines through agents with more than 600 stores as customers
buying on credit (t.s.n., pp. 19, 20, Exh. 12; t.s.n., p. 10, June 20,
1958). Defendant employs more than one hundred (100) laborers and
employees presently although it started with around seventy (70)
employees and laborers (t.s.n., p. 24); its present capitalization
fully paid for is Two Hundred Thirty Four Thousand Pesos (P234,000.00)
additional capitalizations were duly authorized by the Securities and
Exchange Commission (Exhs. 13, 13-A); there was no complaint whatsoever
from plaintiff until plaintiff saw defendant’s business growing bigger
and bigger and flourishing (t.s.n., p. 21) when plaintiff filed its
complaint.

“Defendant advertises its products through radio
broadcasts and spot announcements (Exhs. 14, 14-A to 14-L; inclusive;
Exhs. 15, 15-A, 15-B, 15-C; Exhs. 16, 16-A, 16-B to 16-E, inclusive;
Exhs. 17, 17-A to 117-L, inclusive); the broadcasts scripts announced
therein through the radio clearly show, among others, that Selecta
Biscuits are manufactured by Selecta Company, Inc. at Tuason Avenue,
Northern Hills, Malabon, Rizal, with Telephone No. 2-13-27 (Exhs. 23-A,
23-B, 23-C, 23-D, 23-E, 23-F).

“Besides the signboard,
Selecta Biscuit Company, Inc.’ on the building itself, defendant has
installed signboards along the highways to indicate the location of the
factory, of defendant (Exhs. 18, 18-A); delivery trucks of defendant
are plainly carrying signboards Selecta Biscuit Company, Inc., Tuason
Avenue, Northern Hills, Malabon, Rizal, Telephone No. 2-13-27 (Exhs.
19, 19-A, 19-B, 19-C, 19-D, 19-E, 19-F). Defendant is using modern
machineries in its biscuits factory (Exhs. 20, 20-A, 20-B, 20-C, 20-D,
20-E). The defendant sells its products throughout the Philippines,
including Luzon, Visayas, and Mindanao; its customers count, among
others, 600 stores buying on credit; its stores buying on cash number
around 50 (t.s.n., p. 10). Sales in Manila and suburbs are minimal
(Exh. 12). Defendant is a wholesaler and not a retailer of biscuits,
cookies, and crackers. This is the nature of the operation of the
business of the defendant.”

At the outset
one cannot but note that in the two cases appealed before us which
involves the same parties and the same issues of fact and law, the
court a quo and the Director of Patents have rendered
contradictory decisions. While the former is of the opinion that the
word “SELECTA” has been used by petitioner, or its
predecessor-in-interest, as a trade-mark in the sale and distribution
of its dairy and bakery products as early as 1933 to the extent that it
has acquired a proprietary connotation so that to allow respondent to
use it now as a trade-mark in its business would be a usurpation of
petitioner’s goodwill and an infringement of its property right, the
Director of Patents entertained a contrary opinion. He believes that
the word as used by petitioner functions only to point to the place of business or location of its restaurant while the same word as used by respondent points to the origin
of the products it manufactures and sells and he predicates the
distinction upon the fact that while the goods of petitioner are only
served within its restaurant or sold only on special orders in the City
of Manila, respondent’s goods are ready-made and are for sale
throughout the length and breadth of the country. He is of the opinion
that the use of said trade-mark by respondent has not resulted in
confusion in trade contrary to the finding of the court a quo. Which of these opinions is correct is the issue now for determination.

It appears that Ramon Arce, predecessor-in-interest of petitioner,
started his milk business as early as 1933. He sold his milk products
in bottles covered by caps on which the words “SELECTA FRESH MILK” were
inscribed. Expanding his business, he established a store at Lepanto
Street, City of Manila, where he sold, in addition to his milk
products, ice cream, sandwiches and other food products, placing right
in front of his establishment a signboard with the name “SELECTA”
inscribed thereon. Special containers made of tin cans with the word
“selecta” written on their covers were used for his products. Bottles”
with the same word embossed on their sides were used for his milk
products. The sandwiches he sold and distributed were wrapped in carton
boxes with covers bearing the same name. He used several cars and
trucks for delivery purposes on the sides of which were written the
same word. As new products were produced for sale, the same were placed
in containers with the same name written on their covers. After the
war, he added to his business such items as cakes, bread, cookies,
pastries and assorted bakery products. Then his business was acquired
by petitioner, a co-partnership organized by his sons, the purposes of
which are “to conduct a first class restaurant business; to engage in
the manufacture and sale of ice cream, milk, cakes and other dairy and
bakery products; and to carry on such other legitimate business as may
produce profit.”

The foregoing unmistakably show that
petitioner, through its predecessor-in-interest, had made use of the
location of the restaurant where it manufactures and sells its
products, but as a trade-mark to indicate the goods it offers for sale
to the public. No other conclusion can be drawn. This is the very
meaning or essence in which a trade-mark is used. This is not only in
accordance with its general acceptance but with our law on the matter.

”
‘Trade-mark’ or “trade-name”, distinction being highly technical, is
sign, device, or mark by which articles produced are dealt in by
particular person or organization are distinguished or distinguishable
from those produced or dealt in by others.” (Church of God vs. Tomlinson Church of God, 247 SW 2d. 63, 64)

“A
‘trade-mark’ is a distinctive mark of authenticity through which the
merchandise of a particular producer or manufacturer may be
distinguished from that of others, and its sole function is to
designate distinctively the origin of the products to which it is
attached.” Reynolds & Reynolds Co. vs. Norick, et al., 114 F 2d, 278)

“The
term ‘trade-mark’ includes any word, name, symbol, emblem, sign or
device or any combination thereof adopted and used by a manufacturer or
merchant to identify his goods and distinguished them from those
manufactured, sold or dealt in by others”. (Section 38, Republic Act
No. 166)

Verily, the word “SELECTA” has
been chosen by petitioner and has been inscribed on all its products to
serve not only as a sign or symbol that may indicate that they are
manufactured and sold by it but as a mark of authenticity that may
distinguish them from the products manufactured and sold by other
merchants or businessmen. The Director of Patents, therefore, erred in
holding that petitioner made use of that word merely as a trade-name and not as trade-mark within the meaning of the law.^[1]

The word “SELECTA”, it is true, may be an ordinary or common word
in the sense that it may be used or employed by any one in promoting
his business or enterprise, but once adopted or coined in connection
with one’s business as an emblem, sign or device to characterize its
products, or as a badge of authenticity, it may acquire a secondary
meaning as to be exclusively associated with its products and business.^[2]
In this sense, its use by another may lead to confusion in trade and
cause damage to its business. And this is the situation of petitioner
when it used the word “SELECTA” as a trade-mark. In this sense, the law
gives it protection and guarantees its use to the exclusion of all
others (G. & C. Merrian Co. vs. Saalfield, 198 F. 369,
373). And it is also in this sense that the law postulates that “The
ownership or possession of a trade-mark, * * * shall be recognized and
protected in the same manner and to the same extent, as are other
property rights known to the law,” thereby giving to any person
entitled to the exclusive use of such trade-mark the right to recover
damages in a civil action from any person who may have sold goods of
similar kind bearing such trade-mark (Sections 2-A and 23, Republic Act
No. 166, as amended).

The term “SELECTA” may be placed at par with the words “Ang Tibay” which this Court has considered not merely as a descriptive term within the meaning of the Trade-mark Law but as a fanciful or coined phrase,
or a trade-mark. In that case, this Court found that respondent has
consistently used the term “Ang Tibay”, both as a trade-mark and a
trade-name, in the manufacture and sale of slippers, shoes, and indoor
baseballs for twenty-two years before petitioner registered it as a
trade-name for pants and shirts so that it has performed during that
period the function of a trade-mark to point distinctively, or by its
own meaning or by association, to the origin or ownership of the wares
to which it applies. And in holding that respondent was entitled to
protection in the use of that trade-mark, this Court made the following
comment:

“The function of a trade-mark 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 trade-mark in her own business. ‘Ang Tibay’ shoes and
slippers are, by association, known throughout the Philippines as
products of the ‘Ang Tibay’ factory owned and operated by the
respondent. Even if ‘Ang Tibay, therefore, were not capable of
exclusive appropriation as a trade-mark, the application of the
doctrine of secondary meaning could nevertheless be fully sustained
because, in any event, by respondent’s long and exclusive use of said
phrase with reference to his products and business, it has acquired a
proprietary connotation. This doctrine is to the effect that a ward 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.” (Ang vs. Teodono, supra.)

The rationale in the Ang Tibay case applies on all fours to the case of petitioner.

But respondent claims that it adopted the trade-mark “SELECTA” in good
faith and not precisely to engage in unfair competition with
petitioner. It tried to establish that respondent was organized as a
corporation under the name of Selecta Biscuit Company, Inc. on March 2,
1955 and started operations as a biscuit factory on June 20, 1955; that
the name “SELECTA” was chosen by the organizers of respondent who are
Chinese citizens as a translation of the Chinese word “Ching Suan”
which means “mapili” in Tagalog, and “Selected” in English; that,
thereupon, it registered its articles of incorporation with the
Securities and Exchange Commission and the name “SELECTA” as a business
name with the Bureau of Commerce which issued to it Certificate of
Registration No. 55594; and that it also registered the same trade-name
with the Bureau of Internal Revenue and took steps to obtain a patent
from the Patent Office by filing with it an application for the
registration of said trade-name.

The suggestion that the
name “SELECTA” was chosen by the organizers of respondent merely as a
translation from a Chinese word “Ching Suan” meaning “mapili” in the
dialect is betrayed by the very manner of its selection, for if the
only purpose is to make an English translation of that word and not to
compete with the business of petitioner, why choose the word “SELECTA”,
a Spanish word, and not “Selected”, the English equivalent thereof, as
was done by other well-known enterprises? In the words of petitioner’s
counsel, “Why with all the words in the English dictionary and all the
words in the Spanish dictionary and all the phrases that could be
coined, should defendant-appellant (respondent) chose ‘SELECTA’ if its
purpose was not and is not to fool the people and to damage
plaintiff-appellee?”. In this respect, we find appropriate the
following comment of the trial court:

“Eventually,
like the plaintiff, one is tempted to ask as to why with the richness
in words of the English language and with the affluence of the Spanish
vocabulary or, for that matter, of our own dialects, should the
defendant choose the controverted word ‘Selecta’, which has already
acquired a secondary meaning by virtue of plaintiff’s prior and
continued use of the same as a trademark or tradename for its products?
The explanation given by Sy Hap, manager of the defendant, that the
word ‘Selecta’ was chosen for its bakery products by the organizers of
said company from the Chinese Word ‘Ching Suan’ meaning ‘mapili’, which
in English means ‘Selected’, and that they chose ‘selecta’, being the
English translation, is, to say the least, very weak and untenable. Sy
Hap himself admitted that he had known Eulalio Arce, the person
managing plaintiff’s business since 1954; that since he begun to reside
at 10th Avenue, Grace Park, he had known the Selecta Restaurant on
Azcarraga street; that at the time he established the defendant
company, he knew that the word ‘Selecta’ was being employed in
connection with the business of Eulalio Arce; that he had seen
signboards of ‘Selecta on Azcarraga Street and Dewey Boulevard and that
he even had occasion to eat in one of the restaurants of the plaintiff.
All of these circumstances lend to conspire in inducing one to doubt
defendant’s motive for using the same word ‘Selecta’ for its bakery
products. To allow the defendant here to use the word ‘Selecta’ in
spite of the fact that this word has already been adopted and exploited
by Ramon Arce and by his family thru the organization of Arce Sons and
Company, for the maintenance of its goodwill, for which said plaintiff
and its predecessor have spent time, effort, and fortune, is to permit
business pirates and buccaneers to appropriate for themselves and to
their profit and advantage the trade names and trade marks of well
established merchants with all their attendant goodwill and commercial
benefit. Certainly, this cannot be allowed, and it becomes the duty of
the court to protect the legitimate owners of said trade-names and
trade-marks, for under the law, the same constitute one kind of
property right entitled to the necessary legal protection.”

Other points raised by respondent to show that the trial court erred in
holding that the adoption by it of the word “SELECTA” is tantamount to
unfair competition are: (1) that its products are biscuits, crackers
and cookies, wrapped in cellophane packages, placed in tin containers,
and that its products may last a year without spoilage, while the ice
cream, milk, cakes and other bakery products which petitioner
manufactures last only for two or three days; (2) that the sale and
distribution of petitioner’s products are on retail basis, limited to
the City of Manila and suburbs, and its place of business is localized
at Azcarraga, corner Lepanto Street and at Dewey Boulevard, Manila,
while that of respondent is on a wholesale basis, extending throughout
the length and breadth of the Philippines; (3) that petitioner’s
signboard on its place of business reads, “SELECTA” and on its delivery
trucks “Selecta, Quality Always, Restaurant and Caterer, Azcarraga,
Dewey Boulevard, Balintawak and Telephone number” in contrast with
respondent’s signboard on its factory which reads “Selecta Biscuit
Company, Inc., and on its delivery trucks “Selecta Biscuit Company,
Inc., Tuason Avenue, Malabon, Rizal, Telephone No. 2-13-27; (4) that
the business name of petitioner is different from the business name of
respondent; (5) that petitioner has only a capital investment of
P25,000.00 whereas respondent has a fully paid-up stock in the amount
of P234,000.00 out of the P500,000.00 authorized capital, and (6) that
the use of the name “SELECTA” by respondent cannot lead to confusion in
the business operation of the parties.

We have read
carefully the reasons advanced in support of the points raised by
counsel in an effort to make inroads into the findings of the court a quo
on unfair competition, but we believe them to be insubstantial and
untenable. They appear to be well answered and refuted by counsel for
petitioner in his brief, which refutation we do not need to repeat
here. Suffice it to state that we agree with the authorities and
reasons advanced therein which incidentally constitute the best support
of the decision of the court a quo.

With regard to
the claim that petitioner failed to present sufficient evidence on the
contract of lease of the business from its predecessor-in-interest, we
find that under the circumstances secondary evidence is admissible.

In view of the foregoing, we hold that the Director of Patents
committed an error in dismissing the opposition of petitioner and in
holding that the registration of the trade-mark “SELECTA” in favor of
respondent will not cause damage to petitioner, and, consequently, we
hereby reverse his decision.

Consistently with this finding, we hereby affirm the decision of the court rendered in G. R. No. L-17981.

No costs.

Paras, C. J., Bengzon, Labrador, Reyes, J. B. L., Barrera, Gutierrez David, Paredes, and Dizon, JJ., concur.

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^[1] A
trade-mark is generally described as a sign, device or mark by which
the articles produced or dealt in by a particular person or
organization are distinguished or distinguishable from those produced
or dealt in by others, and must be affixed to the goods or articles;
while a trade-name is descriptive of the manufacturer or dealer himself
as much as his own name is, and frequently includes the name of the
place where the business is located; it involves the individuality of
the maker or dealer for the protection in trade, and to avoid confusion
in business, and to secure the advantages of a good reputation; it is
more popularly applied to the good will of a business, and need not be
affixed to the goods sold. In other words, it is not regarded as a
trade-mark in the strict technical sense. 52 Am. Jur., p. 507, et seq.;
63 C.J., p. 322, et seq.” (Katz Drug Co vs. Katz, 217 2d, 286, 289)

^[2]
“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. (G. & C. Merriam Co. vs. Saalfield, 198 F. 369, 373.)” (Ang vs. Teodoro, 74 Phil., 50, 53)