Common words protected by trademark law


A milk business was established in 1933 in Novaliches, Rizal. Using the name “Selecta” as its trade name and trademark, milk products were distributed in different residences, restaurants, and offices. Thru the years, the business eventually expanded to include ice cream as well as sandwiches, other food products, and bakery products. The owner also ventured into the catering business. The brand “Selecta” was printed on the packaging of all the products, delivery trucks, and even became the name of his restaurant. In 1950, however, the business was registered under a different name despite the use of the Selecta trade name.

In 1955, however, another company, involved in manufacturing bakery products such as biscuits, cookies, and crackers, applied for the registration of its trademark, to be used in its bakery products. Concerned that the trademark would cause confusion as to which company manufactured the goods being sold, the Patent Office published the application for opposition. True enough, the owners of the milk business filed their opposition informing the Patent Office that a case for unfair competition was pending in court.

The Supreme Court ruled that the milk business “had made use of the word ‘Selecta’ not only as a trade-name indicative of the location of the restaurant where it manufactures and sells its products, but as a trade-mark” and was entitled to protection under Republic Act No. 166, otherwise known as the Trademark Law. The Court distinguished a trademark from a tradename.

Section 38 of the Trademark Law, defined a trademark as “any word, name, symbol, emblem, sign or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured, sold or dealt in by others.” On the other hand, a tradename include the “names or titles lawfully adopted and used by natural or juridical persons, unions, and any manufacturing, industrial, commercial, agricultural or other organizations engaged in trade or commerce.” Citing Reynolds v. Nordic, it explained a trademark as “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.”

The also Court ruled that given the circumstances, it was very clear that the milk company had every intention of using the word “Selecta” not only as a sign or symbol inscribed on all of its products, but as a mark of authenticity that may distinguish them from the products manufactured and sold by other merchants or businessmen. Moreover, it reiterated that a merely descriptive, unprotected word can become a trademark and descriptive term within the meaning of the Trademark Law-

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 used to the exclusion of all others (Arce Sons v. Selecta, G.R. No. L-14761, 28 January 1961, J. Bautista Angelo).


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