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G.R.No.L14761andL17981
RepublicofthePhilippines
SUPREMECOURT
Manila
ENBANC
G.R.No.L14761January28,1961
ARCESONSANDCOMPANY,petitioner,
vs.
SELECTABISCUITCOMPANY,INC.,ETAL.,respondents.
xx
G.R.No.L17981January28,1961
ARCESONSANDCOMPANY,plaintiffappellee,
vs.
SELECTABISCUITCOMPANY,INC.,defendantappellant.
ManuelO.ChanandRamonS.Ereetaforplaintiffappellee.
E.VoltaireGarciafordefendantappellant.
BAUTISTAANGELO,J.:
OnAugust31,1955,SelectaBiscuitCompany,Inc.,hereinafterreferredtoasrespondent,filedwith
thePhilippinePatentOfficeapetitionfortheregistrationoftheword"SELECTA"astrademarktobe
useinitsbakeryproductsallegingthatitisinactualusethereoffornotlessthantwomonthsbefore
saiddateandthat"nootherpersons,partnership,corporationorassociation...hastherighttouse
said trademark 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
foundthatthetrademarksoughttoberegisteredresemblestheword"SELECTA"usedbytheAcre
and Sons and Company, hereinafter referred to as petitioner, in its milk and ice cream products so
that its use by respondent will cause confusion as to the origin of their respective goods.
Consequently,herecommendedthattheapplicationberefused.However,uponreconsideration,the
PatentOfficeorderedthepublicationoftheapplicationforpurposesofopposition.
Induetime,petitionerfileditsoppositiontheretoonseveralgrounds,amongwhichare:(1)thatthe
mark "SELECTA" had been continuously used by petitioner in the manufacture and sale of its
products,includingcakes,bakeryproducts,milkandicecreamfromthetimeofitsorganizationand
even prior thereto by its predecessorininterest, Ramon Arce (2) that the mark "SELECTA" has
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alreadybecomeidentifiedwithnameofthepetitioneranditsbusiness(3)thatpetitionerhadwarned
respondentnottousesaidmarkbecauseitwasalreadybeingusedbytheformer,butthatthelatter
ignored said warning (4) that respondent is using the word "SELECTA" as a trademark as bakery
productsinunfaircompetitionwiththeproductsofpetitionerthusresultinginconfusionintrade(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 therefor by the public and cause
respondent'sgoodstobesoldaspetitioner'sand(6)thatactuallyacomplainthasbeenfiledbythe
petitioneragainstrespondentforunfaircompetitionintheCourtofFirstInstanceofManilaaskingfor
damages and for the issuance of a writ of injunction against respondent enjoining the latter for
continuingwiththeuseofsaidmark.
On September 28, 1958, the Court of First Instance of Manila rendered decision in the unfair
competitioncaseperpetuallyenjoiningrespondentfromusingthename"SELECTA"asatrademark
onthegoodsmanufacturedand/orsoldbyitandorderingittopaypetitionerbywayofdamagesall
theprofitsitmayhaverealizedbytheuseofsaidname,plusthesumofP5,000.00asattorney'sfee
and costs of suit. From this decision, respondent brought the matter on appeal to the Court of
AppealswhereinthecasewasdocketedasCAG.R.No.24017R.
Inasmuch as the issues of the facts in the case of unfair competition are substantially identical with
those raised before the Patent Office, the parties at the hearing thereof, agreed to submit the
evidence they 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 Biscuits Company, Inc. will not cause confusion or mistake nor will deceive the
purchasersastothecausedamagetopetitioner.Hence,petitionerinterposedthepresentpetitionfor
review.
OnSeptember7,1960,thisCourtissuedaresolutionofthefollowingtenor:
InG.R.No.L14761(ArceSonsandCompanyvs.SelectaBiscuitsCompany,Inc.,etal.),considering
that the issue raised and evidence presented in this appeal are the same as those involved and
presented in Civil Case No. 32907, entitledArce 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 CAG.R. No. 24017R, the Court resolved to require the parties, or their counsel, to
informthisCourtwhytheappealpendingbeforetheCourtofAppealsshouldnotbeforwardedtothis
Court in order that the two cases may be consolidated and jointly decided, to avoid any conflicting
decision,pursuanttotheprovisionsofsection17,paragraph5,oftheJudiciaryActof1948(Republic
ActNo.296).
And having both petitioner and respondent manifested in writing that they do not register any
objectionthatthecasetheysubmittedonappealtotheCourtofAppealsbecertifiedtothisCourtso
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thatitmaybeconsolidatedwiththepresentcase,thetwocasesarenowbeforeusforconsolidated
decision.
Thecaseforpetitionerisnarratedinthedecisionofthecourtaquoasfollows:.
"In1933,RamonArce,predecessorininterestoftheplaintiff,startedamilkbusinessinNovaliches,
Rizal, using the name 'SELECTA' as a tradename as well as a trademark. He begun 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
expandingand,infacts,heexpandedhisbusinessbyestablishingastoreatNos.711713Lepanto
Street. While there, he began to cater, in addition to milk, ice cream, sandwiches and other food
products.Ashiscateringandicecreambusinessprosperedinabigway,heplacedasignsignboard
in his establishment with the name 'SELECTA' inscribed thereon. This signboard was place right in
front of the said store. For the sake of efficiency, the Novaliches place was made the pasteurizing
plantanditsproductsweredistributedthroughtheLepantostore.Specialcontainersmadeoftincans
withthewords'SELECTA'writtenontheircoversand'embossedorblown'onthebottlesthemselves
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
deliveryofhisproductstoserveoutsideorderswereaddedtoafleetoffive(5)deliverytruckswith
theword'SELECTA'prominentlypaintedonthem.SalesweremadedirectlyattheLepantostoreor
bymeansofdeliveriestospecifiedaddresses,restaurantsandofficesinsideManilaanditssuburbs
andsometimestocustomersintheprovinces.Astimepassed,newproductswereproducedforsale,
which as cheese (cottage cheese) with special containers especially ordered from the Philippine
EducationCompanywiththe'SELECTA'writtenontheircovers.
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 mouth, that is, during the end of January, 1942, and
earlyFebruary,1942,heresumedhisbusinessusingthesametradenameandtrademark,butthis
time, on a large scale. He entered the restaurant business. Dairy products ice cream, milk,
sandwichescontinuedtobesoldanddistributedbyhim.However,RamonArcewasagainforcedto
discontinuethebusinessonOctober,1944,becausetimewasbeginningtobeprecarious.American
planes started to bomb Manila and one of his sons, EulalioArce, who was managing the business,
was seized by the Japanese. Liberation came and immediately thereafter. RamonArce once more
resumedhisbusiness,evenmoreactively,byaddinganotherstorelocatedatthecornerofLepanto
andAzcarragaStreets.Continuingtousethename'Selecta,'headdedbakeryproductstohislineof
business.Withafirewoodtypeofoven,aboutonehalfthesizeofthecourtroom,hemadehisown
bread,cookies,pastriesandassortedbakeryproducts.Incidentally,Arce'sbakerywastransferredto
Balintawak,QuezonCityanotherexpansionofhisbusinesswherethebakeryproductsarenow
being baked thru the use of firewood, electric and gas oven. These bakery products, like his other
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products,arebeingsoldthestoreitselfand/ordeliveredtopeopleorderingtheminManilaandeven
Baguio. Like the other products, special carton boxes in different sizes, according to the bakery
products,withthename'Selecta'ontopofthecoversareprovidedforthesebakeryproducts.Forthe
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 'QualityAlways Selecta Fresh Milk,
OnePint'inscribedandblownonthesidesofthebottlesaninnovationfromtheoldbottlesandcaps
used formerly. Similar, special boxes with the name 'Selecta 'are provided for fried chicken sold to
customers.
Businessbeingalreadywellestablished,RamonArcedecidedtoretire,sothathischildrencangoon
with the business. For this purpose, he transferred and leased to them all his rights, interest and
participationsinthebusiness,includingtheuseofthenameof'Selecta,'sometimeintheyear1950,
at a monthly rental of P10,000.00, later reduced to P6,500.00. He further wrote the Bureau of
Commerce letter dated February 10, 1950, requesting cancellation of the business name 'Selecta
Restaurant' to give way to the registration of the same 'Selecta' and asked that the same be
registered in the name ofArce Sons & Company, a copartnership entered into by and among his
children on February 10, 1950. Said copartnership was organized, so its articles of copartnership
state,'conductafirstclassrestaurantbusinesstoengageinthemanufactureandsaleoficecream,
milk,cakesandotherdairyandbakeryproductsandtocarryonsuchotherlegitimatebusinessas
may produce profit' Arce Sons & Company has thus continued the lucrative business of their
predecessorininterest.Itisnow,andhasalwaysbeen,engagedintherestaurantbusiness,thesale
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 navaro, pan de sal, and other
types,ofcookiesandbiscuitoftheround,hardandothertypes,providingthereofspecialboxeswith
thesame"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
'Selecta'conspicuouslypaintedonthem,toserve,deliver,andcatertocustomersinandoutsideof
Manila.".
Thecaseforrespondentontheotherhand,isexpressedasfollows:
DefendantwasorganizedandregisteredasacorporationunderthenameandstyleofSelectaBiscuit
Company,Inc.onMarch2,1955(Exhibit2Ap.3,April17,1958)butstartedoperationasabiscuit
factory on June 20 1955 (t.s.n. p.3, id). The name 'Selecta' was chosen by the organizers of
defendantwhoareChinesecitizensasatranslationoftheChineseword'ChingSuan'whichmeans
'mapili'inTagalog,andSelected'inEnglish(t.s.n.p,id.).Thereupon,theArticlesofIncorporationof
Selecta Biscuit Company, Inc. were registered with the Securities and Exchange Commission (t.s.n.
P.5.id.),andatthesametimeregisteredasabusinessnamewiththeBureauofCommercewhich
issued certificate of registration No. 55594 (Exhibit 3 Exhibit 3A). The same name Selecta Biscuit
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Company, Inc. was also subsequently registered with the Bureau of Internal Revenue which issued
RegistrationCertificateNo.35764(Exhibit4,t.s.n.,p.id.).InquirieswerealsomadewiththePatent
Officeof'Selecta'afteranofficialofthePatentreferredtoindexcardsinformationwasfurnishedto
theeffectthatdefendantcouldregisterthename'Selecta'withtheBureauofPatents(t.s.n.,p.7,id).
Accordingly,thecorrespondingpetitionforregistrationoftrademarkwasfiled(Exhs.5,5A,Exhibit5
B). Defendant actually operated its business factory on June 20, 1955, while the petition for
registration of trademark 'Selecta' was filed with the Philippine Patent Office only on September 1,
1955, for the Philippine 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 TuazonAvenue, Northern
Hills, Malabon, Rizal, showing plainly on its wall facing the streets the name 'SELECTA BISCUIT
COMPANY,INC.'(Exhs.6,6a6B,t.s.n.,p.9,id.).ItissignificanttonotethatEulalioArce,Managing
Partneroftheplaintiffresidedandresidesnearthedefendant'sfactory,onlyaround150metersaway
infact,Arceusetopassinfrontofthefactoryofdefendantwhilestillunderconstructionandupto
thepresenttime(t.s.n.,pp.9,10,id.).NeitherEulalioArcenoranyotherpersoninrepresentationof
the plaintiff complained to the defendant about the use of the name 'Selecta Biscuit' until of the
presentcomplaint.
There are other factories using 'Selecta as trademark for biscuit (t.s.n., p. 12 Exhs. 7, 7A,7B
Exhibit8,8A,8BExhibitsExhibit9,9A,9B)defendantinfactusesdifferentkindsoftrademark
(Exhibit10,10A,to10W,t.s.n.,p.17).
Thebiscuits,cookies,andcrackersmanufacturedandsoldbydefendantarewrappedincellophane
pouchesandplaceinsidetincan(Exh.11t.s.n.p.19)theproductsofdefendantaresoldthrough
thelengthandbreadthofthePhilippinesthroughagentswithmorethanonehundred600storesas
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
aroundseventy(70)employeesandlaborers(t.s.n.p.24)itspresentcapitalizationfullypaidisTwo
HundredThirtyFourThousandPesos(P234,000.00.)additionalcapitalization'sweredulyauthorized
by the Securities and Exchange Commission (Exhs. 13, 13A) there was no complaint whatsoever
fromplaintiffsawdefendant'sbusinessgrowingbiggerandbiggerandflourishing(t.s.n.,p.21)when
plaintifffileditscomplaint.
Defendantadvertisesitsproductsthroughradiobroadcastandspotannouncement(Exhs.14,14A
to14LinclusiveExhs.15,15A,15B,15CExh.16,16A,16Bto16E,inclusiveExhs.17,17Bto
17L, inclusive) the broadcasts scripts announced therein through the radio clearly show, among
others,thatSelectaBiscuitaremanufacturedbySelectaCompany,Inc.atTuazonAvenue,Northern
Hills,Malabon,Rizal,withTelephone]No.21327(Exhs.23A23B,23D,23E,23F).
Besidesthesignboard,'SelectaBiscuitCompany,Inc.'onthebuildingitself,defendanthasinstalled
signboard along the highways to indicate the location of the factory of defendant (Exhs. 18, 18A)
delivery trucks defendant are plainly carrying signboards Selecta Biscuit Company, Inc., Tuazon
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Avenue,NorthernHillsMalabon,Rizal,TelephoneNo.21327(Exhs.19,19A,19B,19C19D,19
E,19F).Defendantisusingmodernmachineriesinitsbiscuitfactory(Exhs.20,20A,20B,19C,20
D, 20E). The defendant sells its products thoughout 20C, 20D,20E). The defendant sells its
productthroughoutthePhilippines,includingLuzon,Visayas,Mindanaoitscustomerscount,among
others,600storesbuyingoncredititsstoresbuyingoncashnumberaround50(t.s.n.),p.10).Sales
inManilaandsuburbsareminimal,(Exh.12).Defendantisawholesalerandnotaretailerofbiscuits,
cookiesandcrackers.Thisisthenatureoftheoperationofthebusinessofthedefendant."
Attheoutsetonecannotbutnotethatinthetwocasesappealedbeforeuswhichinvolvethesame
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
beenusedbythepetitioner,oritspredecessorininterest,asatrademarkinthesaleanddistribution
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 trademark in its business would be an
usurpation of petitioner's goodwill and an infringement of its property right, the Director of Patents
entertainedacontraryopinion.Hebelievesthatthewordasusedbythepetitionerfunctionsonlyto
pointtotheplaceofbusinessorlocationofitsrestaurantwhilethesamewordasusedbyrespondent
pointstotheoriginoftheproductsitsmanufacturesandsellsandhepredicatesthisdistinctionupon
thefactthatwhilethegoodsofpetitionerareonlyservedwithinitsrestaurantorsoldonlyonspecial
orders in the City of Manila, respondent's goods are readymade and are for sale throughout the
lengthandbreadthofthecountry.Heisoftheopinionthattheuseofsaidtrademarkbyrespondent
hasnotresultedinconfusionintradecontrarytothefindingofthecourtaquo.Whichofthisopinions
iscorrectistheissuenowfordetermination.
It appears that RamonArce, predecessorininterest of petitioner, started his milk business as early
as1933.Hesoldhismilkproductsinbottlescoveredwithcapsonwhichthewords'SELECTAFRESH
MILK' were inscribed. Expanding his business, he established a store at Lepanto Street, City of
Manila, where he sold, in addition to his products, ice cream, sandwiches and other food products,
placing right in front of his establishment a signboard with the name 'SELECTA' inscribed thereon.
Specialcontainersmadeoftincanswiththeword'SELECTA'writtenontheircoverswereusedforhis
products. Bottle 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.Heusedseveralcarsandtrucksfordeliverypurposesonthesidesofwhichwerewrittenthe
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,acopartnershiporganizedbyhissons,thepurposesofwhichare"toconductafirstclass
restaurant business to engage in the manufacture and sale of ice cream, milk, cakes and other
productsandtocarryonsuchotherlegitimatebusinessasmayproduceprofit."

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Theforegoingunmistakablyshowthatpetitioner,throughitspredecessorininterest,hadmadeuse
oftheword"SELECTA"notonlyasatradenameindicativeofthelocationoftherestaurantwhereit
manufacturesandsellsitsproducts,butastrademarkisused.Thisisnotonlyinaccordancewithits
generalacceptationbutwithourlawonthematter."
Trademark' or tradename', distinction being highly technical, is sign, device, or mark by which
articlesproducedaredealtinbyparticularpersonororganizationaredistinguishedordistinguishable
fromthoseproducedordealtinbyother."(ChurchofGodv.TomlinsonChurchofGod,247SW2d,
63,64)"
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
designatedistinctivelytheoriginoftheproductstowhichitisattached."(Reynolds&ReynoldsCo.v.
Nordic,et.al.,114F2d,278)"
Theterm'trademark'includesanyword,name,symbol,emblem,signordeviceoranycombination
thereofadoptedandusedbyamanufacturerormerchanttoidentifyhisgoodsanddistinguishthem
fromthosemanufactured,soldordealtinbyothers."(Section38,RepublicActNo.166).
Verily,theword'SELECTA'hasbeenchosenbypetitionerandhasbeeninscribedonallitsproducts
toservenotonlyasasignorsymbolthatmayindicatethattheyaremanufacturedandsoldbyitbut
asamarkofauthenticitythatmaydistinguishthemfromtheproductsmanufacturedandsoldbyother
merchantsorbusinessmen.TheDirectorofPatents,therefore,erredinholdingthatpetitionermade
useofthatwordmerelyasatradenameandnotasatrademarkwithinthemeaningofthelaw.1
Theword'SELECTA',itistrue,maybeanordinaryorcommonwordinthesensethatmaybeused
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
productsandbusiness.2Inthissense,itsusedbyanothermayleadtoconfusionintradeandcause
damagetoitsbusiness.Andthisisthesituationofpetitionerwhenitusedtheword'SELECTA'asa
trademark.Inthissense,thelawgivesitsprotectionandguaranteesitsusedtotheexclusionofall
othersa(G.&C.MerriamCo.v.Saalfield,198F.369,373).Anditisalsointhesensethatthelaw
postulatesthat"Theownershiporpossessionofatrademark,...shallberecognizedandprotected
inthesamemannerandtothesameextent,asareotherpropertyrightsknowntothelaw,"thereby
givingtoanypersonentitledtotheexclusiveuseofsuchtrademarktherighttorecoverdamagesin
a civil action from any person who may have sold goods of similar kind bearing such trademark
(Sections2Aand23,RepublicActNo.166,asamended).
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 Trademark Law but as a
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fanciful or coined phrase, or a trademark. In that case, this Court found that respondent has
constantlyusedtheterm"AngTibay",bothasatrademarkandatradename,inthemanufacture
andsaleofslippers,shoesandindoorbaseballsfortwentytwoyearsbeforepetitionerregistereditas
atradenameforpantsandshirtssothatithasperformedduringthatperiodthefunctionofatrade
marktopointdistinctively,orbyitsownmeaningorbyassociation,totheoriginorownershipofthe
wares to which it applies.And holding that respondent was entitled to protection in the use of that
trademark,thisCourtmadethefollowingcomment:
Thefunctionofatrademarkistopointdistinctively,eitherbyitsownmeaningorbyassociation,to
theoriginorownershipofthewarestowhichitisapplied.'AngTibay'asusedbytherespondentto
designate his wares, had exactly performed that function for twentytwo years before the petitioner
adopteditasatrademarkinherownbusiness.'AngTibay'shoesandslippersare,byassociation,
knownthroughoutthePhilippinesasproductsofthe'AngTibay"factoryownedandoperatedbythe
respondent. Even if 'AngTibay', 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,inanyevent,byrespondent'slongandexclusiveappropriationwithreferencetoanarticle
onthemarket,becausegeographicallyorotherwisedescriptive,mightneverthelesshavebeenused
so long and exclusively by one producer with reference to his article that, in that trade and to that
branchofthepurchasingpublic,thewordorphrasehascometomeanthatarticlewashisproduct."
(Angv.Teodoro,supra.).
TherationaleintheAngTibaycaseappliesonallfourstothecaseofpetitioner.
But respondent claims that it adopted the trademark 'SELECTA' in good faith and not precisely to
engageinunfaircompetitionwithpetitioner.Ittriedtoestablishthatrespondentwasorganizedasa
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
organizersofrespondentwhoareChinesecitizensasatranslationoftheChineseword"ChingSuan"
whichmeans"mapili"inTagalog,and"Selected"inEnglishthat,thereupon,itregistereditsarticles
of incorporation with the Securities and Exchange Commission and the name 'SELECTA' as a
businessnamewiththeBureauofCommercewhichissuedtoitCertificateofRegistrationNo.55594
andthatitalsoregisteredthesametradenamewiththeBureauofInternalRevenueandtooksteps
to obtain a patent from the Patent Office by filing with it as application for the registration of said
tradename.
Thesuggestionthatthename'SELECTA'waschosenbytheorganizersofrespondentmerelyasa
translationfromaChineseword"ChingSuan"meaning"mapili"inthedialectisbetrayedbythevery
mannerofitsselection,foriftheonlypurposeistomakeanEnglishtranslationofthatwordandnot
tocompetewiththebusinessofpetitioner,whychosetheword'SELECTA',aSpanishword,andnot
"Selected", the English equivalent thereof, as was done by other wellknown enterprises? In the
wordsofpetitioner'scounsel,"WhywithallthewordsintheEnglishdictionaryandallthewordsinthe
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Spanishdictionaryandallthephrasesthatcouldbecoined,shoulddefendantappellant(respondent)
choose 'SELECTA' if its purpose was not and is not to fool the people and to damage plaintiff
appellee?"Inthisrespect,wefindappropriatethefollowingcommentofthetrialcourt:
Eventually,liketheplaintiff,oneistemptedtoaskastowhywiththerichnessinwordsoftheEnglish
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 of 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 translation , is to say the least, very
weakanduntenable.SyHaphimselfadmittedthathehadknownEulalioArce,thepersonmanaging
plaintiff's business, since 1954 that since he began to reside at 10thAvenue, Grace Park, he had
knowntheSelectaRestaurantonAzcarragaStreetandDeweyBlvd.andthatheevenhadoccasion
toeatinoneoftherestaurantsoftheplaintiff.Allofthesecircumstancestendtoconspireininducing
onetodoubtdefendant'smotiveforusingthesameword"Selecta"foritsbakeryproducts.Toallow
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,forthemaintenanceofitsgoodwill,forwhichsaidplaintiffanditspredecessorhavespent
time,effortandfortune,istopermitbusinesspiratesandbuccaneerstoappropriateforthemselves
andtotheirprofitandadvantagethetradenamesandtrademarksofwellestablishedmerchantswith
alltheirattendantgoodwillandcommercialbenefit.Certainly,thiscannotbeallowed,anditbecomes
thedutyofthecourttoprotectthelegitimateownersofsaidtradenamesandtrademarks,forunder
thelaw,thesameconstituteonekindofpropertyrightentitledtothenecessarylegalprotection.
Otherpointsraisedbyrespondenttoshowthatthetrialcourterredinholdingthattheadoptionbyit
of the word 'SELECTA' is tantamount to unfair competition are: (1) that its products are biscuits,
crackers,andcookies,wrappedincellophanepackages,placeintincontainers,andthatitsproducts
maylastayearwithoutspoilage,whiletheicecream,milk,cakesandotherbakeryproductswhich
petitionermanufactureslastonlyfortwoorthreedays(2)thatthesaleanddistributionofpetitioner's
products are on retail basis, limited to the City of Manila and suburbs, and its place of business is
localizedatAzcarraga,cornerofLepantoStreetandatDeweyBlvd.,Manila,whilethatofrespondent
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,
QualityAlways,RestaurantandCaterer,Azcarraga,DeweyBlvd.,BalintawakandTelephonenumber,"
in contrast with respondent's signboard on its factory which reads "Selecta Biscuit Company, Inc.,"
andonitsdeliverytrucks"SelectaBiscuitCompany,Inc.,TuasonAvenue,Malabon,Rizal,Telephone
No. 21327 (4) that the business name of petitioner is different from the business name of
respondent(5)thatpetitionerhasonlyacapitalinvestmentofP25,000.00whereasrespondenthasa
fullypaidupstockintheamountofP234,000.00outoftheP500,000.00authorizedcapital,(6)that
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theuseofthename'SELECTA'byrespondentcannotleadtoconfusioninthebusinessoperationof
theparties.
Wehavereadcarefullythereasonsadvancedinsupportofthepointsraisedbycounselinaneffortto
make inroads into the findings of the court aquo on unfair competition, but we believe them to be
substantialanduntenable.Theyappeartobewellansweredandrefutedbycounselforpetitionerin
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
decisionofthecourtaquo.
Withregardtotheclaimthatpetitionerfailedtopresentsufficientevidenceonthecontractofleaseof
the business from its predecessorininterest, we find that under the circumstances secondary
evidenceisadmissible.
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 trademark 'SELECTA' in favor of
respondentwillnotcausedamagetopetitioner,andconsequently,weherebyreversehisdecision.
Consistentlywiththisfinding,weherebyaffirmthedecisionofthecourtaquorenderedinG.R.No.L
17981.Nocosts.
Paras, C.J., Bengzon, Labrador, Reyes, J.B.L. Barrera, Gutierrez David, Paredes and Dizon., JJ.,
concur.
Padilla,andConcepcion,JJ.,tooknopart.
Footnotes
1A trademark 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 tradename is
descriptiveofthemanufacturerordealerhimselfasmuchashisownnameisandfrequentlyincludes
thenameoftheplacewherethebusinessislocateditinvolvestheindividualityofthemakerordealer
forprotectionintrade,andtoavoidconfusioninbusiness,andtosecuretheadvantagesofagood
reputationitismorepopularlyappliedtothegoodwillofabusiness,andneednotbeaffixedtothe
goodssold.Inotherwordsitisnotregardedasatrademarkinthestricttechnicalsense.52Am.Jur.,
p.507,etseq,63C.J.,p.322,etseq."(KatzDrugCo.V.Katz,2172d.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
neverthelesshavebeenusedsolongandsoexclusivelybyoneproducerwithreferencetohisarticle
that,inthattradeandtothatbranchofthepurchasingpublic,thewordorphrasehascometomean
thatthearticlewashisproduct.(G&CMerriamCo.vs.Saalfield,198F.369,373.)(Angv.Teodoro,
74Phil.50,53)
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