Fredco Manufacturing Corporation v.

President and Fellows of Harvard College

G.R. No. 185917, 1 June 2011

Fredco Manufacturing Corporation (Fredco) filed before the Bureau of Legal Affairs of the Philippine Intellectual
Property Office a Petition for Cancellation of Registration No. 56561 issued to President and Fellows of Harvard
College (Harvard University) for the mark “Harvard Veritas Shield Symbol” under classes 16, 18, 21, 25 and 28.

Fredco claimed that Harvard University had no right to register the mark in class 25, since its Philippine registration
was based on a foreign registration. Thus, Harvard University could not have been considered as a prior adopter and
user of the mark in the Philippines.

Fredco explained that the mark was first used in the Philippines by its predecessor-in-interest New York Garments as
early as 1982, and a certificate of registration was issued in 1988 for goods under class 25. Although the registration
was cancelled for the non-filing of an affidavit of use, the fact remained that the registration preceded Harvard
University’s use of the subject mark in the Philippines.

Harvard University, on the other hand claimed that the name and mark “Harvard” was adopted in 1639 as the name
of Harvard College of Cambridge, Massachusetts, USA. The marks “Harvard” and “Harvard Veritas Shield Symbol,”
had been used in commerce since 1872, and was registered in more than 50 countries.

The Bureau of Legal Affairs ruled in favor of Fredco and ordered the cancellation of Registration No. 56561. It found
Fredco to be the prior user and adopter of the mark “Harvard” in the Philippines. On appeal, the Office of the Director
General of the Intellectual Property Office reversed the BLA ruling on the ground that more than the use of the
trademark in the Philippines, the applicant must be the owner of the mark sought to be registered. Fredco, not being
the owner of the mark, had no right to register it.

The Court Appeals affirmed the decision of the Office of the Director General. Fredco appealed the decision with the
Supreme Court. In its appeal, Fredco insisted that the date of actual use in the Philippines should prevail on the issue
of who had a better right to the mark.

The Supreme Court ruled:

“The petition has no merit.

Under Section 2 of Republic Act No. 166, as amended (R.A. No. 166), before a trademark can be registered, it must
have been actually used in commerce for not less than two months in the Philippines prior to the filing of an
application for its registration. While Harvard University had actual prior use of its marks abroad for a long time, it did
not have actual prior use in the Philippines of the mark "Harvard Veritas Shield Symbol" before its application for
registration of the mark "Harvard" with the then Philippine Patents Office. However, Harvard University's registration
of the name "Harvard" is based on home registration which is allowed under Section 37 of R.A. No. 166. As pointed
out by Harvard University in its Comment:

Although Section 2 of the Trademark law (R.A. 166) requires for the registration of trademark that the applicant
thereof must prove that the same has been actually in use in commerce or services for not less than two (2) months
in the Philippines before the application for registration is filed, where the trademark sought to be registered has
already been registered in a foreign country that is a member of the Paris Convention, the requirement of proof of use
in the commerce in the Philippines for the said period is not necessary. An applicant for registration based on home
certificate of registration need not even have used the mark or trade name in this country.”

“In any event, under Section 239.2 of Republic Act No. 8293 (R.A. No. 8293), "[m]arks registered under Republic Act
No. 166 shall remain in force but shall be deemed to have been granted under this Act x x x," which does not require
actual prior use of the mark in the Philippines. Since the mark "Harvard Veritas Shield Symbol" is now deemed
granted under R.A. No. 8293, any alleged defect arising from the absence of actual prior use in the Philippines has
been cured by Section 239.2.”
The Supreme Court further ruled that Harvard University is entitled to protection in the Philippines of its trade name
“Harvard” even without registration of such trade name in the Philippines. It explained:

“There is no question then, and this Court so declares, that "Harvard" is a well-known name and mark not only in the
United States but also internationally, including the Philippines. The mark "Harvard" is rated as one of the most
famous marks in the world. It has been registered in at least 50 countries. It has been used and promoted extensively
in numerous publications worldwide. It has established a considerable goodwill worldwide since the founding of
Harvard University more than 350 years ago. It is easily recognizable as the trade name and mark of Harvard
University of Cambridge, Massachusetts, U.S.A., internationally known as one of the leading educational institutions
in the world. As such, even before Harvard University applied for registration of the mark "Harvard" in the Philippines,
the mark was already protected under Article 6bis and Article 8 of the Paris Convention.”

G.R. No. L-48226 December 14, 1942

ANA L. ANG, petitioner,

vs.
TORIBIO TEODORO, respondent.

Cirilo Lim for petitioner.

Marcial P. Lichauco and Manuel M. Mejia for respondent.

OZAETA, J.:

Petitioner has appealed to this Court by certiorari to reverse the judgment of the Court of Appeals
reversing that of the Court of First Instance of Manila and directing the Director of Commerce to
cancel the registration of the trade-mark "Ang Tibay" in favor of said petitioner, and perpetually
enjoining the latter from using said trade-mark on goods manufactured and sold by her.

Respondent Toribio Teodoro, at first in partnership with Juan Katindig and later as sole proprietor,
has continuously used "Ang Tibay," both as a trade-mark and as a trade-name, in the manufacture
and sale of slippers, shoes, and indoor baseballs since 1910. He formally registered it as trade-mark
on September 29, 1915, and as trade-name on January 3, 1933. The growth of his business is a
thrilling epic of Filipino industry and business capacity. Starting in an obscure shop in 1910 with a
modest capital of P210 but with tireless industry and unlimited perseverance, Toribio Teodoro, then
an unknown young man making slippers with his own hands but now a prominent business magnate
and manufacturer with a large factory operated with modern machinery by a great number of
employees, has steadily grown with his business to which he has dedicated the best years of his life
and which he has expanded to such proportions that his gross sales from 1918 to 1938 aggregated
P8,787,025.65. His sales in 1937 amounted to P1,299,343.10 and in 1938, P1,133,165.77. His
expenses for advertisement from 1919 to 1938 aggregated P210,641.56.

Petitioner (defendant below) registered the same trade-mark "Ang Tibay" for pants and shirts on
April 11, 1932, and established a factory for the manufacture of said articles in the year 1937. In the
following year (1938) her gross sales amounted to P422,682.09. Neither the decision of the trial
court nor that of the Court of Appeals shows how much petitioner has spent or advertisement. But
respondent in his brief says that petitioner "was unable to prove that she had spent a single centavo
advertising "Ang Tibay" shirts and pants prior to 1938. In that year she advertised the factory which
she had just built and it was when this was brought to the attention of the appellee that he consulted
his attorneys and eventually brought the present suit."

The trial court (Judge Quirico Abeto) presiding absolved the defendant from the complaint, with
costs against the plaintiff, 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 trade-mark by the
plaintiff; and that there had been no fraud in the use of the said trade-mark by the defendant
because the goods on which it is used are essentially different from those of the plaintiff. The second
division of the Court of Appeals, composed of Justices Bengson, Padilla, Lopez Vito, Tuason, and
Alex Reyes, with Justice Padilla as ponente, reversed that judgment, holding that by uninterrupted
an exclusive use since 191 in the manufacture of slippers and shoes, respondent's trade-mark has
acquired a secondary meaning; that the goods or articles on which the two trade-marks are used are
similar or belong to the same class; and that the use by petitioner of said trade-mark constitutes a
violation of sections 3 and 7 of Act No. 666. The defendant Director of Commerce did not appeal
from the decision of the Court of Appeals.

First. Counsel for the petitioner, in a well-written brief, makes a frontal sledge-hammer attack on the
validity of respondent's trade-mark "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 translate in English," it means "strong, durable, lasting." He invokes section 2 of Act No. 666,
which provides that words or devices which related only to the name, quality, or description of the
merchandise cannot be the subject of a trade-mark. He cites among others the case of Baxter vs.
Zuazua (5 Phil., 16), which involved the trade-mark "Agua de Kananga" used on toilet water, and in
which this Court held that the word "Kananga," which is the name of a well-known Philippine tree or
its flower, could not be appropriated as a trade-mark any more than could the words "sugar,"
"tobacco," or "coffee." On the other hand, counsel for the respondent, in an equally well-prepared
and exhaustive brief, contend that the words "Ang Tibay" are not descriptive but merely suggestive
and may properly be regarded as fanciful or arbitrary in the legal sense. The cite several cases in
which similar words have been sustained as valid trade-marks, such as "Holeproof" for
hosiery, 1 "ideal for tooth brushes, 2 and "Fashionknit" for neckties and sweaters. 3

We find it necessary to go into the etymology and meaning of the Tagalog words "Ang Tibay" to
determine whether they are a descriptive term, i.e., whether they relate to the quality or description
of the merchandise to which respondent has applied them as a trade-mark. The word "ang" is a
definite article meaning "the" in English. It is also used as an adverb, a contraction of the word
"anong" (what or how). For instance, instead of saying, "Anong ganda!" ("How beautiful!"), we
ordinarily say, "Ang ganda!" Tibay is a root word from which are derived the verb magpatibay (to
strenghten; the nouns pagkamatibay (strength, durability), katibayan (proof, support,
strength), katibay-tibayan (superior strength); and the adjectives matibay (strong, durable,
lasting), napakatibay (very strong), kasintibay or magkasintibay (as strong as, or of equal strength).
The phrase "Ang Tibay" is an exclamation denoting administration 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" 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."

From all of this we deduce that "Ang Tibay" is not a descriptive term within the meaning of the Trade-
Mark Law but rather a fanciful or coined phrase which may properly and legally be appropriated as a
trade-mark or trade-name. In this connection we do not fail to note that when the petitioner herself
took the trouble and expense of securing the registration of these same words as a trademark of her
products she or her attorney as well as the Director of Commerce was undoubtedly convinced that
said words (Ang Tibay) were not a descriptive term and hence could be legally used and validly
registered as a trade-mark. It seems stultifying and puerile for her now to contend otherwise,
suggestive of the story of sour grapes. Counsel for the petitioner says that 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. That is correct, and we find that "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 Toribio Teodoro.

Second. In her second assignment of error petitioner contends that the Court of Appeals erred in
holding that the words "Ang Tibay" had acquired a secondary meaning. In view of the conclusion we
have reached upon the first assignment of error, it is unnecessary to apply here the doctrine of
"secondary meaning" in trade-mark parlance. This doctrine is to the effect that a word or phrase
originally incapable of exclusive appropriation with reference to an article of 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. Salfield, 198 F., 369, 373.) We have said that the phrase "Ang Tibay," being neither
geographic nor descriptive, was originally capable of exclusive appropriation as a trade-mark. But
were it not so, the application of the doctrine of secondary meaning made by the Court of Appeals
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 his business, it has acquired a proprietary
connotation. (Landers, Frary, and Clark vs. Universal Cooler Corporation, 85 F. [2d], 46.)

Third. Petitioner's third assignment of error is, that the Court of Appeals erred in holding that pants
and shirts are goods similar to shoes and slippers within the meaning of sections 3 and 7 of Act No.
666. She also contends under her fourth assignment of error (which we deem convenient to pass
upon together with the third) that there can neither be infringement of trade-mark under section 3 nor
unfair competition under section 7 through her use of the words "Ang Tibay" in connection with pants
and shirts, because those articles do not belong to the same class of merchandise as shoes and
slippers.

The question raised by petitioner involve the scope and application of sections 3,7, 11, 13, and 20 of
the Trade-Mark Law (Act No. 666.) Section 3 provides that "any person entitled to the exclusive use
of a trade-mark to designate the origin or ownership of goods he has made or deals in, may recover
damages in a civil actions from any person who has sold goods of a similar kind, bearing such trade-
mark . . . The complaining party . . . may have a preliminary injunction, . . . and such injunction upon
final hearing, if the complainant's property in the trade-mark and the defendant's violation thereof
shall be fully established, shall be made perpetual, and this injunction shall be part of the judgment
for damages to be rendered in the same cause." Section 7 provides that any person who, in selling
his goods, shall give them the general appearance of the goods of another either in the wrapping of
the packages, or in the devices or words thereon, or in any other feature of their appearance, which
would be likely to influence purchasers to believe that the goods offered are those of the
complainant, shall be guilty of unfair competition, and shall be liable to an action for damages and to
an injunction, as in the cases of trade-mark infringement under section 3. Section 11 requires the
applicant for registration of a trade-mark to state, among others, "the general class of
merchandise to which the trade-mark claimed has been appropriated." Section 13 provides that no
alleged trade-mark or trade name shall be registered which is identical with a registered or known
trade-mark owned by another and appropriate to the same class of merchandise, or which to nearly
resembles another person's lawful trade-mark or trade-name as to be likely to cause confusion or
mistake in the mind of the public, or to deceive purchasers. And section 2 authorizes the Director of
Commerce to establish classes of merchandise for the purpose of the registration of trade-marks
and to determine the particular description of articles included in each class; it also provides that "an
application for registration of a trade-mark shall be registered only for one class of articles and only
for the particular description of articles mentioned in said application."

We have underlined the key words used in the statute: "goods of a similar kin," "general class of
merchandise," "same class of merchandise," "classes of merchandise," and "class of articles,"
because it is upon their implications that the result of the case hinges. These phrases, which refer to
the same thing, have the same meaning as the phrase "merchandise of the same descriptive
properties" used in the statutes and jurisprudence of other jurisdictions.

The burden of petitioner's argument is that under sections 11 and 20 the registration by respondent
of the trade-mark "Ang Tibay" for shoes and slippers is no safe-guard 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 the former; that she cannot be held guilty of infringement of trade-mark under section 3
because respondent's mark is not a valid trade-mark, nor has it acquired a secondary meaning; that
pants and shirts do not possess the same descriptive properties as shoes and slippers; that neither
can she be held guilty of unfair competition under section 7 because the use by her of the trade-
mark "Ang Tibay" upon pants and shirts is not likely to mislead the general public as to their origin or
ownership; and that there is now showing that she in unfairly or fraudulently using that mark "Ang
Tibay" against the respondent. If we were interpreting the statute for the first time and in the first
decade of the twentieth century, when it was enacted, and were to construe it strictly and literally, we
might uphold petitioner's contentions. But law and jurisprudence must keep abreast with the
progress of mankind, and the courts must breathe life into the statutes if they are to serve their
purpose. Our Trade-mark Law, enacted nearly forty years ago, has grown in its implications and
practical application, like a constitution, in virtue of the life continually breathed into it. It is not of
merely local application; it has its counterpart in other jurisdictions of the civilized world from whose
jurisprudence it has also received vitalizing nourishment. We have to apply this law as it has grown
and not as it was born. Its growth or development abreast with that of sister statutes and
jurisprudence in other jurisdictions is reflected in the following observation of a well-known author:

This fundamental change in attitude first manifested itself in the year 1915-1917. Until about
then, the courts had proceeded on the theory that the same trade-mark, used on un-like
goods, could not cause confusion in trade and that, therefore, there could be no objection to
the use and registration of a well-known mark by a third party for a different class of goods.
Since 1916 however, a growing sentiment began to arise that in the selection of a famous
mark by a third party, there was generally the hidden intention to "have a free ride" on the
trade-mark owner's reputation and good will. (Derenberg, Trade-Mark Protection & Unfair
Trading, 1936 edition, p. 409.)

In the present state of development of the law on Trade-Marks, Unfair Competition, and Unfair
Trading, the test employed by the courts to determine whether noncompeting goods are or are not of
the same class is confusion as to the origin of the goods of the second user. Although two
noncompeting articles may be classified under two different classes by the Patent Office because
they are deemed not to possess the same descriptive properties, they would, nevertheless, be held
by the courts to belong to the same class if the simultaneous use on them of identical or closely
similar trade-marks would be likely to cause confusion as to the origin, or personal source, of the
second user's goods. They would be considered as not falling under the same class only if they are
so dissimilar or so foreign to each other as to make it unlikely that the purchaser would think the first
user made the second user's goods.

Such construction of the law is induced by cogent reasons of equity and fair dealing. The courts
have come to realize that there can be unfair competition or unfair trading even if the goods are non-
competing, and that such unfair trading can cause injury or damage to the first user of a given trade-
mark, first, by prevention of the natural expansion of his business and, second, by having his
business reputation confused with and put at the mercy of the second user. Then noncompetitive
products are sold under the same mark, the gradual whittling away or dispersion of the identity and
hold upon the public mind of the mark created by its first user, inevitably results. The original owner
is entitled to the preservation of the valuable link between him and the public that has been created
by his ingenuity and the merit of his wares or services. Experience has demonstrated that when a
well-known trade-mark is adopted by another even for a totally different class of goods, it is done to
get the benefit of the reputation and advertisements of the originator of said mark, to convey to the
public a false impression of some supposed connection between the manufacturer of the article sold
under the original mark and the new articles being tendered to the public under the same or similar
mark. As trade has developed and commercial changes have come about, the law of unfair
competition has expanded to keep pace with the times and the element of strict competition in itself
has ceased to be the determining factor. The owner of a trade-mark or trade-name has a property
right in which he is entitled to protection, since there is damage to him from confusion of reputation
or goodwill in the mind of the public as well as from confusion of goods. The modern trend is to give
emphasis to the unfairness of the acts and to classify and treat the issue as a fraud.

A few of the numerous cases in which the foregoing doctrines have been laid down in one form or
another will now be cited: (1) In Teodoro Kalaw Ng Khe vs. Level Brothers Company (G.R. No.
46817), decided by this Court on April 18, 1941, the respondent company (plaintiff below) was
granted injunctive relief against the use by the petitioner of the trade-mark "Lux" and "Lifebuoy" for
hair pomade, they having been originally used by the respondent for soap; The Court held in effect
that although said articles are noncompetitive, they are similar or belong to the same class. (2)
In Lincoln Motor Co. vs. Lincoln Automobile Co. (44 F. [2d], 812), the manufacturer of the well-
known Lincoln automobile was granted injunctive relief against the use of the word "Lincoln" by
another company as part of its firm name. (3) The case of Aunt Jemima Mills Co. vs. Rigney &
Co. (247 F., 407), involved the trade-mark "Aunt Jemima," originally used on flour, which the
defendant attempted to use on syrup, and there the court held that the goods, though different, are
so related as to fall within the mischief which equity should prevent. (4) In Tiffany & Co., vs. Tiffany
Productions, Inc. (264 N.Y.S., 459; 23 Trade-mark Reporter, 183), the plaintiff, a jewelry concern,
was granted injunctive relief against the defendant, a manufacturer of motion pictures, from using
the name "Tiffany." Other famous cases cited on the margin, wherein the courts granted injunctive
relief, involved the following trade-marks or trade-names: "Kodak," for cameras and photographic
supplies, against its use for bicycles. 4 "Penslar," for medicines and toilet articles, against its use for
cigars; 5 "Rolls-Royce," for automobiles. against its use for radio tubes; 6 "Vogue," as the name of a
magazine, against its use for hats; 7 "Kotex," for sanitary napkins, against the use of "Rotex" for
vaginal syringes; 8 "Sun-Maid," for raisins, against its use for flour; 9 "Yale," for locks and keys, against
its use for electric flashlights; 10 and "Waterman," for fountain pens, against its use for razor
blades. 11
lawphil.net

Against this array of famous cases, the industry of counsel for the petitioner has enabled him to cite
on this point only the following cases: (1) Mohawk Milk Products vs. General Distilleries
Corporation (95 F. [2d], 334), wherein the court held that gin and canned milk and cream do not
belong to the same class; (2) Fawcett Publications, Inc. vs. Popular Mechanics Co. (80 F. [2d], 194),
wherein the court held that the words "Popular Mechanics" used as the title of a magazine and duly
registered as a trade-mark were not infringed by defendant's use of the words "Modern Mechanics
and Inventions" on a competitive magazine, because the word "mechanics" is merely a descriptive
name; and (3) Oxford Book Co. vs. College Entrance Book Co. (98 F. [2d], 688), wherein the plaintiff
unsuccessfully attempted to enjoin the defendant from using the word "Visualized" in connection with
history books, the court holding that said word is merely descriptive. These cases cites and relied
upon by petitioner are obviously of no decisive application to the case at bar.
We think reasonable men may not disagree that shoes and shirts are not as unrelated as fountain
pens and razor blades, for instance. The mere relation or association of the articles is not controlling.
As may readily be noted from what we have heretofore said, the proprietary connotation that a trade-
mark or trade-name has acquired is of more paramount consideration. The Court of Appeals found
in this case that by uninterrupted and exclusive use since 1910 of respondent's registered trade-
mark on slippers and shoes manufactured by him, it has come to indicate the origin and ownership
of said goods. It is certainly not farfetched to surmise that the selection by petitioner of the same
trade-mark for pants and shirts was motivated by a desire to get a free ride on the reputation and
selling power it has acquired at the hands of the respondent. As observed in another case, 12 the field
from which a person may select a trade-mark is practically unlimited, and hence there is no excuse
for impinging upon or even closely approaching the mark of a business rival. In the unlimited field of
choice, what could have been petitioner's purpose in selecting "Ang Tibay" if not for its fame?

Lastly, in her fifth assignment of error petitioner seems to make a frantic effort to retain the use of the
mark "Ang Tibay." Her counsel suggests that instead of enjoining her from using it, she may be
required to state in her labels affixed to her products the inscription: "Not manufactured by Toribio
Teodoro." We think such practice would be unethical and unworthy of a reputable businessman. To
the suggestion of petitioner, respondent may say, not without justice though with a tinge of
bitterness: "Why offer a perpetual apology or explanation as to the origin of your products in order to
use my trade-mark instead of creating one of your own?" On our part may we add, without meaning
to be harsh, that a self-respecting person does not remain in the shelter of another but builds one of
his own.

The judgment of the Court of Appeals is affirmed, with costs against the petitioner in the three
instances. So ordered.

MCDONALD’S CORPORATION V. L.C. BIG

MAK BURGER (G.R. NO. 143993)
Facts:
Petitioner McDonald’s, an American corporation operating a global chain of
fast-food restaurants, is the owner of the ‘Big Mac’ mark for its double-
decker hamburger sandwich here and in the US. Meanwhile, respondent L.C.,
a domestic corporation which operates fast-food outlets and snack vans
applied for the registration of the ‘Big Mak’ mark for its hamburger
sandwiches. Petitioner opposed on the ground that ‘Big Mak’ was a colorable
imitation of its registered ‘Big Mac’ mark for the same food products.
Respondents denied there is colorable imitation and argued that petitioner
cannot exclusively appropriate the mark ‘Big Mac’ because the word ‘Big’ is
a generic and descriptive term. Petitioner filed a complaint for trademark
infringement and unfair competition. The trial court found for petitioners. CA
held otherwise.
Issues:
(1) Whether or not the word ‘Big Mac’ can be exclusively appropriated by
petitioner;
(2) Whether or not there is colorable imitation resulting in likelihood of
confusion;
(3) Whether or not there is unfair competition.
Ruling:
(1) YES. A mark is valid if it is “distinctive” and thus not barred from
registration under Section 4 of RA 166. However, once registered, not only
the mark’s validity but also the registrant’s ownership of the mark is prima
facie presumed. The “Big Mac” mark, which should be treated in its entirety
and not dissected word for word, is neither generic nor descriptive. Generic
marks are commonly used as the name or description of a kind of goods, such
as “Lite” for beer or “Chocolate Fudge” for chocolate soda drink. Descriptive
marks, on the other hand, convey the characteristics, functions, qualities or
ingredients of a product to one who has never seen it or does not know it
exists, such as “Arthriticare” for arthritis medication. On the contrary, “Big
Mac” falls under the class of fanciful or arbitrary marks as it bears no logical
relation to the actual characteristics of the product it represents. As such, it is
highly distinctive and thus valid. Significantly, the trademark “Little Debbie”
for snack cakes was found arbitrary or fanciful.
(2) YES. In determining likelihood of confusion, jurisprudence has developed
two tests, the dominancy test and the holistic test. The dominancy test
focuses on the similarity of the prevalent features of the competing
trademarks that might cause confusion. In contrast, the holistic test requires
the court to consider the entirety of the marks as applied to the products,
including the labels and packaging, in determining confusing similarity. This
Court, however, has relied on the dominancy test rather than the holistic test.
The test of dominancy is now explicitly incorporated into law in Section
155.1 of the Intellectual Property Code which defines infringement as the
“colorable imitation of a registered mark xxx or a dominant feature thereof.”
Applying the dominancy test, the Court finds that respondents’ use of the
“Big Mak” mark results in likelihood of confusion. Aurally the two marks are
the same, with the first word of both marks phonetically the same, and the
second word of both marks also phonetically the same. Visually, the two
marks have both two words and six letters, with the first word of both marks
having the same letters and the second word having the same first two letters.
In spelling, considering the Filipino language, even the last letters of both
marks are the same. Clearly, respondents have adopted in “Big Mak” not
only the dominant but also almost all the features of “Big Mac.” Applied to
the same food product of hamburgers, the two marks will likely result in
confusion in the public mind. Certainly, “Big Mac” and “Big Mak” for
hamburgers create even greater confusion, not only aurally but also visually.
Indeed, a person cannot distinguish “Big Mac” from “Big Mak” by their
sound. When one hears a “Big Mac” or “Big Mak” hamburger advertisement
over the radio, one would not know whether the “Mac” or “Mak” ends with a
“c” or a “k.”
(3) YES. The essential elements of an action for unfair competition are (1)
confusing similarity in the general appearance of the goods, and (2) intent to
deceive the public and defraud a competitor. The confusing similarity may or
may not result from similarity in the marks, but may result from other
external factors in the packaging or presentation of the goods. The intent to
deceive and defraud may be inferred from the similarity of the appearance of
the goods as offered for sale to the public. Actual fraudulent intent need not
be shown. Unfair competition is broader than trademark infringement and
includes passing off goods with or without trademark infringement.
Trademark infringement is a form of unfair competition. Trademark
infringement constitutes unfair competition when there is not merely
likelihood of confusion, but also actual or probable deception on the public
because of the general appearance of the goods. There can be trademark
infringement without unfair competition as when the infringer discloses on
the labels containing the mark that he manufactures the goods, thus
preventing the public from being deceived that the goods originate from the
trademark owner.
Respondents’ goods are hamburgers which are also the goods of petitioners.
Since respondents chose to apply the “Big Mak” mark on hamburgers, just
like petitioner’s use of the “Big Mac” mark on hamburgers, respondents have
obviously clothed their goods with the general appearance of petitioners’
goods. There is actually no notice to the public that the “Big Mak”
hamburgers are products of “L.C. Big Mak Burger, Inc.” and not those of
petitioners who have the exclusive right to the “Big Mac” mark. This clearly
shows respondents’ intent to deceive the public. We hold that as found by the
RTC, respondent corporation is liable for unfair competition.
McDonald’s Corporation vs
Macjoy Fastfood Corporation
Since 1987, MacJoy Devices had been operating in Cebu. MacJoy is a fast food restaurant
which sells fried chicken, chicken barbeque, burgers, fries, spaghetti, palabok, tacos,
sandwiches, halo-halo and steaks. In 1991, MacJoy filed its application for trademark before
the Intellectual Property Office (IPO). McDonald’s opposed the application as it alleged that
MacJoy closely resembles McDonald’s corporate logo such that when used on identical or
related goods, the trademark applied for would confuse or deceive purchasers into believing
that the goods originate from the same source or origin that the use and adoption in bad
faith of the “MacJoy and Device” mark would falsely tend to suggest a connection or
affiliation with McDonald’s restaurant services and food products, thus, constituting a fraud
upon the general public and further cause the dilution of the distinctiveness of McDonald’s
registered and internationally recognized McDonald’S marks to its prejudice and irreparable
damage.
The IPO ruled in favor of McDonald’s. MacJoy appealed before the Court of Appeals and
the latter ruled in favor of MacJoy. The Court of Appeals, in ruling over the case, actually
used the holistic test (which is a test commonly used in infringement cases). The holistic
test looks upon the visual comparisons between the two trademarks. In this case, the Court
of Appeals ruled that other than the letters “M” and “C” in the words MacJoy and
McDonald’s, there are no real similarities between the two trademarks. “MacJoy” is written
in round script while “McDonald’s” is written in thin gothic. “MacJoy” is accompanied by a
picture of a (cartoonish) chicken while “McDonald’s” is accompanied by the arches “M”. The
color schemes between the two are also different. “MacJoy” is in deep pink while
“McDonald’s” is in gold color.
ISSUE: Whether or not MacJoy infringed upon the trademark of McDonald’s.
HELD: Yes. The Supreme Court ruled that the proper test to be used is the dominancy test.
The dominancy test not only looks at the visual comparisons between two trademarks but
also the aural impressions created by the marks in the public mind as well as connotative
comparisons, giving little weight to factors like prices, quality, sales outlets and market
segments. In the case at bar, the Supreme Court ruled that “McDonald’s” and “MacJoy”
marks are confusingly similar with each other such that an ordinary purchaser can conclude
an association or relation between the marks. To begin with, both marks use the corporate
“M” design logo and the prefixes “Mc” and/or “Mac” as dominant features. The first letter “M”
in both marks puts emphasis on the prefixes “Mc” and/or “Mac” by the similar way in which
they are depicted i.e. in an arch-like, capitalized and stylized manner. For sure, it is the
prefix “Mc,” an abbreviation of “Mac,” which visually and aurally catches the attention of the
consuming public. Verily, the word “MACJOY” attracts attention the same way as did
“McDonalds,” “MacFries,” “McSpaghetti,” “McDo,” “Big Mac” and the rest of the
MCDONALD’S marks which all use the prefixes Mc and/or Mac. Besides and most
importantly, both trademarks are used in the sale of fastfood products.
Further, the owner of MacJoy provided little explanation why in all the available names for a
restaurant he chose the prefix “Mac” to be the dominant feature of the trademark. The prefix
“Mac” and “Macjoy” has no relation or similarity whatsoever to the name Scarlett Yu Carcel,
which is the name of the niece of MacJoy’s president whom he said was the basis of the
trademark MacJoy. By reason of the MacJoy’s implausible and insufficient explanation as to
how and why out of the many choices of words it could have used for its trade-name and/or
trademark, it chose the word “Macjoy,” the only logical conclusion deducible therefrom is
that the MacJoy would want to ride high on the established reputation and goodwill of the
McDonald’s marks, which, as applied to its restaurant business and food products, is
undoubtedly beyond question.

G.R. No. 101897. March 5, 1993.

LYCEUM OF THE PHILIPPINES, INC., petitioner, vs. COURT OF APPEALS, LYCEUM OF

APARRI, LYCEUM OF CABAGAN, LYCEUM OF CAMALANIUGAN, INC., LYCEUM OF LALLO,
INC., LYCEUM OF TUAO, INC., BUHI LYCEUM, CENTRAL LYCEUM OF CATANDUANES,
LYCEUM OF SOUTHERN PHILIPPINES, LYCEUM OF EASTERN MINDANAO, INC. and
WESTERN PANGASINAN LYCEUM, INC., respondents.

Quisumbing, Torres & Evangelista Law Offices and Ambrosio Padilla for petitioner.

Antonio M. Nuyles and Purungan, Chato, Chato, Tarriela & Tan Law Offices for respondents.

Froilan Siobal for Western Pangasinan Lyceum.

SYLLABUS

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.

DECISION
FELICIANO, J p:

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.

Some of the private respondents actively participated in the proceedings before the SEC. These are
the following, the dates of their original SEC registration being set out below opposite their
respective names:

Western Pangasinan Lyceum — 27 October 1950

Lyceum of Cabagan — 31 October 1962

Lyceum of Lallo, Inc. — 26 March 1972

Lyceum of Aparri — 28 March 1972

Lyceum of Tuao, Inc. — 28 March 1972

Lyceum of Camalaniugan — 28 March 1972

The following private respondents were declared in default for failure to file an answer despite
service of summons:

Buhi Lyceum;

Central Lyceum of Catanduanes;

Lyceum of Eastern Mindanao, Inc.; and

Lyceum of Southern Philippines

Petitioner's original complaint before the SEC had included three (3) other entities:

1. The Lyceum of Malacanay;

2. The Lyceum of Marbel; and

3. The Lyceum of Araullo

The complaint was later withdrawn insofar as concerned the Lyceum of Malacanay and the Lyceum
of Marbel, for failure to serve summons upon these two (2) entities. The case against the Liceum of
Araullo was dismissed when that school motu proprio change its corporate name to "Pamantasan ng
Araullo."
The background of the case at bar needs some recounting. Petitioner had sometime before
commenced in the SEC a proceeding (SEC-Case No. 1241) against the Lyceum of Baguio, Inc. to
require it to change its corporate name and to adopt another name not "similar [to] or identical" with
that of petitioner. In an Order dated 20 April 1977, Associate Commissioner Julio Sulit held that the
corporate name of petitioner and that of the Lyceum of Baguio, Inc. were substantially identical
because of the presence of a "dominant" word, i.e., "Lyceum," the name of the geographical location
of the campus being the only word which distinguished one from the other corporate name. The SEC
also noted that petitioner had registered as a corporation ahead of the Lyceum of Baguio, Inc. in
point of time, 1 and ordered the latter to change its name to another name "not similar or identical
[with]" the names of previously registered entities.

The Lyceum of Baguio, Inc. assailed the Order of the SEC before the Supreme Court in a case
docketed as G.R. No. L-46595. In a Minute Resolution dated 14 September 1977, the Court denied
the Petition for Review for lack of merit. Entry of judgment in that case was made on 21 October
1977. 2

Armed with the Resolution of this Court in G.R. No. L-46595, petitioner then wrote all the educational
institutions it could find using the word "Lyceum" as part of their corporate name, and advised them
to discontinue such use of "Lyceum." When, with the passage of time, it became clear that this
recourse had failed, petitioner instituted before the SEC SEC-Case No. 2579 to enforce what
petitioner claims as its proprietary right to the word "Lyceum." The SEC hearing officer rendered a
decision sustaining petitioner's claim to an exclusive right to use the word "Lyceum." The hearing
officer relied upon the SEC ruling in the Lyceum of Baguio, Inc. case (SEC-Case No. 1241) and held
that the word "Lyceum" was capable of appropriation and that petitioner had acquired an
enforceable exclusive right to the use of that word.

On appeal, however, by private respondents to the SEC En Banc, the decision of the hearing officer
was reversed and set aside. The SEC En Banc did not consider the word "Lyceum" to have become
so identified with petitioner as to render use thereof by other institutions as productive of confusion
about the identity of the schools concerned in the mind of the general public. Unlike its hearing
officer, the SEC En Banc held that the attaching of geographical names to the word "Lyceum" served
sufficiently to distinguish the schools from one another, especially in view of the fact that the
campuses of petitioner and those of the private respondents were physically quite remote from each
other. 3

Petitioner then went on appeal to the Court of Appeals. In its Decision dated 28 June 1991, however,
the Court of Appeals affirmed the questioned Orders of the SEC En Banc. 4 Petitioner filed a motion
for reconsideration, without success.

Before this Court, petitioner asserts that the Court of Appeals committed the following errors:

1. The Court of Appeals erred in holding that the Resolution of the Supreme Court in G.R. No. L-
46595 did not constitute stare decisis as to apply to this case and in not holding that said Resolution
bound subsequent determinations on the right to exclusive use of the word Lyceum.

2. The Court of Appeals erred in holding that respondent Western Pangasinan Lyceum, Inc. was
incorporated earlier than petitioner.

3. The Court of Appeals erred in holding that the word Lyceum has not acquired a secondary
meaning in favor of petitioner.
4. The Court of Appeals erred in holding that Lyceum as a generic word cannot be appropriated by
the petitioner to the exclusion of others. 5

We will consider all the foregoing ascribed errors, though not necessarily seriatim. We begin by
noting that the Resolution of the Court in G.R. No. L-46595 does not, of course, constitute res
adjudicata in respect of the case at bar, since there is no identity of parties. Neither is stare decisis
pertinent, if only because the SEC En Banc itself has re-examined Associate Commissioner Sulit's
ruling in the Lyceum of Baguio case. The Minute Resolution of the Court in G.R. No. L-46595 was
not a reasoned adoption of the Sulit ruling.

The Articles of Incorporation of a corporation must, among other things, set out the name of the
corporation. 6 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."
(Emphasis supplied)

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. 7

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.

Etymologically, the word "Lyceum" is the Latin word for the Greek lykeion which in turn referred to a
locality on the river Ilissius in ancient Athens "comprising an enclosure dedicated to Apollo and
adorned with fountains and buildings erected by Pisistratus, Pericles and Lycurgus frequented by the
youth for exercise and by the philosopher Aristotle and his followers for teaching." 8 In time, the word
"Lyceum" became associated with schools and other institutions providing public lectures and
concerts and public discussions. Thus today, the word "Lyceum" generally refers to a school or an
institution of learning. While the Latin word "lyceum" has been incorporated into the English
language, the word is also found in Spanish (liceo) and in French (lycee). As the Court of Appeals
noted in its Decision, Roman Catholic schools frequently use the term; e.g., "Liceo de Manila,"
"Liceo de Baleno" (in Baleno, Masbate), "Liceo de Masbate," "Liceo de Albay." 9 "Lyceum" is in fact
as generic in character as the word "university." In the name of the petitioner, "Lyceum" appears to
be a substitute for "university;" in other places, however, "Lyceum," or "Liceo" or "Lycee" frequently
denotes a secondary school or a college. It may be (though this is a question of fact which we need
not resolve) that the use of the word "Lyceum" may not yet be as widespread as the use of
"university," but it is clear that a not inconsiderable number of educational institutions have adopted
"Lyceum" or "Liceo" as part of their corporate names. Since "Lyceum" or "Liceo" denotes a school or
institution of learning, it is not unnatural to use this word to designate an entity which is organized
and operating as an educational institution.

It is claimed, however, by petitioner that the word "Lyceum" has acquired a secondary meaning in
relation to petitioner with the result that 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. 10 In Philippine Nut Industry, Inc. v. Standard Brands, Inc., 11 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." 12

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.
Consequently, the same doctrine or principle cannot be made to apply where the evidence did not
prove that the business (of the plaintiff) has continued for so long a time that it has become of
consequence and acquired a good will of considerable value such that its articles and produce have
acquired a well-known reputation, and confusion will result by the use of the disputed name (by the
defendant) (Ang Si Heng vs. Wellington Department Store, Inc., 92 Phil. 448).

With the foregoing as a yardstick, [we] believe the appellant failed to satisfy the aforementioned
requisites. 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. Nevertheless, its (appellant) exclusive use of the word
(Lyceum) was never established or proven as in fact the evidence tend to convey that the cross-
claimant was already using the word 'Lyceum' seventeen (17) years prior to the date the appellant
started using the same word in its corporate name. Furthermore, educational institutions of the
Roman Catholic Church had been using the same or similar word like 'Liceo de Manila,' 'Liceo de
Baleno' (in Baleno, Masbate), 'Liceo de Masbate,' 'Liceo de Albay' long before appellant started
using the word 'Lyceum'. The appellant also failed to prove that the word 'Lyceum' has become so
identified with its educational institution that confusion will surely arise in the minds of the public if
the same word were to be used by other educational institutions.
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."
13 (Underscoring partly in the original and partly supplied)

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. It may be noted also that
at least one of the private respondents, i.e., the Western Pangasinan Lyceum, Inc., used the term
"Lyceum" seventeen (17) years before the petitioner registered its own corporate name with the SEC
and began using the word "Lyceum." It follows that if any institution had acquired an exclusive right
to the word "Lyceum," that institution would have been the Western Pangasinan Lyceum, Inc. rather
than the petitioner institution.

In this connection, petitioner argues that because the Western Pangasinan Lyceum, Inc. failed to
reconstruct its records before the SEC in accordance with the provisions of R.A. No. 62, which
records had been destroyed during World War II, Western Pangasinan Lyceum should be deemed
to have lost all rights it may have acquired by virtue of its past registration. It might be noted that the
Western Pangasinan Lyceum, Inc. registered with the SEC soon after petitioner had filed its own
registration on 21 September 1950. Whether or not Western Pangasinan Lyceum, Inc. must be
deemed to have lost its rights under its original 1933 registration, appears to us to be quite
secondary in importance; we refer to this earlier registration simply to underscore the fact that
petitioner's use of the word "Lyceum" was neither the first use of that term in the Philippines nor an
exclusive use thereof. 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.

We conclude and so hold that 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.

WHEREFORE, the petitioner having failed to show any reversible error on the part of the public
respondent Court of Appeals, the Petition for Review is DENIED for lack of merit, and the Decision
of the Court of Appeals dated 28 June 1991 is hereby AFFIRMED. No pronouncement as to costs.

SO ORDERED.