Scribd
Upload
109 views2 pages

IP - Patent and Trademark

The court ruled that the petitioner's mark "SELECTA" had acquired a secondary meaning. While "SELECTA" may be a common word, the petitioner had used it since 1933 as the name of its restaurant and to identify its dairy and bakery products. This long and exclusive use of the mark meant it had become exclusively associated with the petitioner's business and products. Even if a word is originally incapable of exclusive appropriation, its long and exclusive use by one producer can result in the word acquiring a secondary meaning in that trade to identify the products as coming from that producer. Therefore, the petitioner was entitled to protection of the "SELECTA" mark against use by other businesses like the respondent that could cause confusion.

Uploaded by

Anne Janelle Guan
Copyright
© © All Rights Reserved
We take content rights seriously. If you suspect this is your content, claim it here.
Available Formats
Download as DOCX, PDF, TXT or read online on Scribd
109 views2 pages

IP - Patent and Trademark

The court ruled that the petitioner's mark "SELECTA" had acquired a secondary meaning. While "SELECTA" may be a common word, the petitioner had used it since 1933 as the name of its restaurant and to identify its dairy and bakery products. This long and exclusive use of the mark meant it had become exclusively associated with the petitioner's business and products. Even if a word is originally incapable of exclusive appropriation, its long and exclusive use by one producer can result in the word acquiring a secondary meaning in that trade to identify the products as coming from that producer. Therefore, the petitioner was entitled to protection of the "SELECTA" mark against use by other businesses like the respondent that could cause confusion.

Uploaded by

Anne Janelle Guan
Copyright
© © All Rights Reserved
We take content rights seriously. If you suspect this is your content, claim it here.
Available Formats
Download as DOCX, PDF, TXT or read online on Scribd
You are on page 1/ 2

Arce Sons and Company v. Selecta Biscuit Company (G.R. No.

L-14761)

Trademark; Definition.—A trademark 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.

Same; Trademark "Selecta".—Where the petitioner and its predecessor have used since 1933 the name "Selecta" as

the name of its restaurant and as the mark for its dairy and bakery products, the conclusion is that it has used that name

as a trademark to distinguish its products from those sold by other merchants or businessmen. The Director of Patents

erred in holding that the petitioner used the word merely as a tradename.

Same; Secondary meaning of "Selecta".—The word "Selecta" may be an ordinary or common word in the sense that it

may be used or employed by anyone in promoting his business or enterprise, but once adopted 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 the user's products and business.

Same; Rule as to secondary meaning.—A word or phrase originally incapable of exclusive appropriation with reference

to an article on the market, because geographically or otherwise descriptive, might neverthless 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. Arce Sons and Company vs. Selecta

Biscuit Co., Inc., 1 SCRA 253, No. L-14761, No. L-17981 January 28, 1961

Facts:

Respondent Selecta Biscuit Company applied for the registration of the word ‘SELECTA’ to be used in its bakery

products. Petitioner Arce Sons opposed on the ground it had continuously used the mark ‘SELECTA’ and that it has

already become identified with petitioner’s name and business. Petitioner further contends that the marks are

confusingly similar. Petitioner then filed before the court a complaint of unfair competition against respondent which

ruled in its favor. On the other hand, the Director of Patents dismissed petitioner’s 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 trademark 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 Arce Sons and Company vs. Selecta Biscuit

Co., Inc., 1 SCRA 253, No. L-14761, No. L-17981 January 28, 1961

Issue:

Whether or not petitioner’s mark has acquired secondary meaning in its favor.

Ruling: YES. The word ‘SELECTA’, it is true, may be an ordinary or common word in the sense that 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. 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 its protection and guarantees its use to

the exclusion of all others.

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. And

holding that respondent was entitled to protection in the use of that trade-mark, this Court made the following comment:

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

appropriation with reference to an article on the market, because geographically or otherwise descriptive, might

nevertheless have been used so long and 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 article was his product.” (Ang v.

Teodoro, supra.)

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

You might also like