Republic of the Philippines
SUPREME COURT
Manila
EN BANC
G.R. No. L-31851 November 21, 1930
H. E. HEACOCK CO., plaintiff-appellee,
vs.
AMERICAN TRADING COMPANY, defendant-appellant.
--------------------------------------------
G.R. No. 31852 November 21, 1930.
WM. A. ROGERS, LTD., and AMERICAN TRADING COMPANY, plaintiffs-appellants,
vs.
H. E. HEACOCK CO., defendant-appellee.
Gibbs & McDonough and J. W. Ferrier for appellants.
DeWitt, Perkins & Brady for appellee.
STATEMENT
In case G. R. No. 31851, in which, H. E. Heacock Company is plaintiff and the American Trading Company defendant, plaintiff alleges that it is a domestic corporation, with its principal office and place of business in the City of Manila. That the defendant is also a domestic corporation, with its principal place of business in the City of Manila.
Plaintiff alleges that for more than twenty years it has been and is now engaged in the importation and sale in the Philippine Islands of flatware bearing the name of "Rogers" stamped upon the back of the handle, with an indication of the material of which it is made. That on June 27, 1918, it caused a trade-mark to be registered in its name in the Bureau of Commerce and Industry of the word "Rogers" for use upon spoons and other flatware whether nickel, silver-plated, or silver, as well as nickel, silver-plated or silver goods of all kinds, and ever since that date that trade-mark ha been extensively used by the plaintiff, and that the goods to which it affixed that trade-mark has become generally and favorably known throughout the Philippine Islands. That notwithstanding that fact, the defendant on or about the year 1925 began to import and sell here flatware precisely the same designs as that imported and sold by the plaintiff with the words "Wm. A. Rogers," with an indication of the material of which such flatware is composed, stamped precisely in the same position on the back of the handle as that used by the plaintiff. That the defendant, through the use of said infringing mark or stamp has given the appearance of the flatware imported and sold by the plaintiff in such a way as to induce purchasers to believe that the flatware sold by the defendant is the same as that sold by the plaintiff, and that such imitation has been effected and was made to deceive the public and defrauding the plaintiff of its legitimate business, to its great damage.
Plaintiff prays that the defendant be ordered to render an accounting of the sales which it has made of flatware under the mark "Wm. A. Rogers," and of the profits derived from such sales, and that plaintiff have judgment for the double amount of such profits, and that the defendant, its agents, and employees bee enjoined from selling nickel, silver-plated or silver goods of any kind under any mark where the name "Rogers" is used, in and by which the public may be induced to believe that the flatware imported and sold by the defendant is the flatware imported and sold by the plaintiff and known as "Rogers" flatware, and that it have costs.
For answer the defendant makes a general and specific denial of all of the material allegations of the complaint, but admits that the plaintiff caused the word "Rogers" to be registered with the Bureau of Commerce and Industry as a trade-mark to be used upon silverware and flatware, but alleges that such trade-mark had no legal validity as against the defendant, for the reason that the name "Rogers" is a family name or surname which does not belong to the plaintiff, which has no legal right to attempt and appropriate the name to its exclusive use, and specifically denies that the flatware and silverware imported and sold within the Philippine Islands by the defendant is of the same designs as that claimed to have been imported and sold by the plaintiff, and defendant alleges that all of the silverware and flatware which it imported and sold within the Philippine Islands, bearing the words "Wm. A. Rogers," with the symbols and marks were manufactured by Wm. A. Rogers, Ltd., in the United States of America, and that the trade-marks appearing thereon have been duly registered in the Patent Office of the United States of America in accord with the provisions of the laws of that country, and is, therefore, admissible into the Philippine Islands, under the provisions of Act No. 2460 of the Philippine Commission, of the Acts of Congress of February 20, 1905, as amended by the Acts of Congress of May 4, 1906, March 2, 1907, and February 18, 1909, and as an affirmative defense, the defendant alleges that the registration by the plaintiff of the word "Rogers" is unwarranted and unauthorized, and can in no way prevent any other person whose family name is "Rogers" from using that name in the transaction of his legitimate business either within or without the Philippine Islands. That the defendant is acting here as the local agent and representative of Wm. A. Rogers, Ltd., a corporation organized under the laws of the State of New York, which is engaged in the manufacture of silverware and flatware of various kinds, that was registered in the Patent Office at Washington, D. C., with the following trade-marks:
| Wm. A. ROGERS — | E. P. N. S. |
| Wm. A. ROGERS — | E. P. B. M. |
| 1881 | R | ROGERS | R | E. P. N. S. |
| 1881 | R | ROGERS | R | E. P. B. M. |
| W. R. |
| 1881 | R | ROGERS | R | A-1 |
| Wm. A. Rogers (in old English script) |
which it has been using from 1897 to 1917 in its business. That the merchandise imported by the defendant, of which plaintiff complains, bears one or more of such trade-marks. That having been duly registered in the United States, the merchandise to which they are affixed is entitled to admission in the Philippine Islands under the provisions of Act No. 2460 of the Philippine Commission, as well as the Acts of Congress, and defendant prays that plaintiff's complaint be dismissed, with costs.
In case G. R. No. 31852, in which Wm. A. Rogers, Ltd., and the American Trading Company are plaintiffs and the Heacock Company defendant, plaintiffs allege that Wm. A. Rogers, Ltd., is a corporation duly organized and existing under the laws of the State of New York. That the American Trading Company is the Philippine agent and representative of Wm. A. Rogers, Ltd., for the purpose of securing orders for the purchase and sale of silverware, silver-plated hollow and flatware and cutlery manufactured by the said Wm. A. Rogers, Ltd., in the United States and sold there and within the Philippine Islands under various trade-marks which were duly registered in the United States at different times from 1987 to 1917, and such trademarks have been used in trade by the said Wm. A. Rogers, Ltd., in the United States, in the Philippine Islands, and throughout the world. That the American Trading Company has been importing into the Philippine Islands its merchandise which bears the trade-marks above described since 1923, and has built up a considerable business, all of which is well known to the defendant. It is then alleged that the word "Rogers" is a family name, and that while it may be true that the defendant had the right to register it as a trade-mark, such a registration cannot interfere with or prevent another person having the family name of "Rogers" or a corporation of which the family name "Rogers" is a part, from the use of that word as its or his trade-mark, and that the registration by the defendant of the word "Rogers" is illegal, unauthorized, and unwarranted, and has damaged the plaintiffs in the sum of P4,000, and they pray for an order restraining the defendant from interfering with the business of the plaintiffs under their trade-marks, and for a preliminary injunction and for such damages.
For answer the defendant makes a general and specific denial, and as a special defense alleges in substance the same matters and thing alleged in its complaint in case G.R. No. 31851, and by way of cross-complaint against both plaintiffs renews the allegation made in its complaint against the American Trading Company.
As a reply plaintiffs admit that "on or about June 27, 1918, the defendant caused a trade-mark to be registered in its name in the Bureau of Commerce and Industry consisting of the sole word 'Roger' but denies that said trade-mark had ever been used by the defendant upon flatware either imported or offered for sale by it throughout the Philippine Islands and furthermore alleging that the registration of such word alone, said word being a family name and no one having such family name being in any way connected with the Heacock Co., defendant herein, that such registration of said word alone, a family name as it is, is null and void and unwarranted by any provision of law."
And denies that the defendant Heacock Company "has ever at any time affixed the said trade-mark 'Rogers' to any goods of any kind or character whatsoever," and "denies the allegations of said paragraph and in this respect alleges manufactured by it and bearing its trade-marks were imported into the Philippine Islands long before 1925 and it furthermore denies that its designs are the same as those imported and sold by the defendant. It admits, however, that its trade-mark is stamped upon the back of the flat-ware manufactured and sold by it in the same manner and in the same position as trade-marks are stamped upon manufactures of every manufacturer of silver-plated ware and flatware."
By stipulation both cases were tried as one. After the evidence was taken the court rendered judgment in case G. R. No. 31851 against the defendant and in favor of the plaintiff, and for an accounting, and in case G. R. No. 31852, it rendered judgment in favor of H. E. Heacock Company and against the plaintiffs, and dissolved the preliminary injunction which it had issued, and on appeal the American Trading Company, as defendant in case G. R. No. 31851, and Wm. A. Rogers, Ltd., and American Trading Company, as plaintiffs in case G. R. No. 31852, assign the following errors:
1. The trial court erred in not holding that the appellee, whose name is "H. E. HEACOCK.," had no right to adopt and appropriate the name "Rogers" as its trade-mark, and much less to debar the appellant Wm. A. Rogers, Ltd., from using that name in its own business.
2. The trial court erred in not finding that the appellee had never used the trade-mark "Rogers" as registered by it in the Bureau of Commerce and Industry but had merely imported into and sold in the Philippine Islands the goods manufactured by, and bearing the trade-marks of the International Silver Company.
3. The trial court erred in ignoring the final decisions of the courts of the United States which adjudged that the trade-marks in question of the herein appellant Wm. A. Rogers, Ltd., were not an infringement of the trade-marks in question of the International Silver Company of which the appellee is a mere agent in the Philippine Islands.
4. The trial court erred in holding, in effect, that Wm. A. Rogers, Ltd., has no right to export its products to the Philippine Islands.
5. The trial court erred in holding that the Act of Congress of February 20, 1905, is not in force in the Philippine Islands.
6. The trial court erred in holding that appellant connot maintain the present action against the appellee, and in dissolving the preliminary injunction against the latter.
7. The trial court erred in ordering appellants to render an accounting of their profits and to pay to appellee a sum equal to such profits, in granting the writ of injunction prayed for by appellee, and in not dismissing appellee's cross-complaint.
JOHNS, J.:
About seventy years ago, three brothers by the name of Rogers composed a firm in Connecticut under the name and style of Rogers Bros., which was the first to apply the art of electro-plating to the manufacture of silver-plated ware in the United States, and it soon acquired a high reputation for the sterling quality of its wares. In 1865 a corporation was organized by Wm. Rogers, one of the brothers, known as the Wm. Rogers Manufacturing Company, and after 1872 it engaged in the manufacturing and selling of silver-plated ware and continued to use the trade-marks on its goods adopted in 1866, to wit, "1865 Wm. Rogers Mfg. Co." and "Wm Rogers & Son." Two other corporations also acquired from one or more of the brothers the right to the use of the name Rogers, and the goods of which known by the public as "Rogers" acquired a very high character and well-known reputation. In May 1898 "The International Silver Company" was organized, and it acquired the capital stock or properties of the 14 silver plating corporations, including the Wm. Rogers Manufacturing Company, the Meriden Britanica Company, and Rogers & Bro., and became the owner of all of those companies with their goodwill and each of their use and enjoyment, including the trade-marks "1847 Rogers Bros." and the "(Star) Rogers & Bro."
The Heacock Company was established in the City of Manila in the year 1909 as the successor of the firm of Heacock & Frier, which was established here in 1901, and has been in business ever since and importing into the Philippine Islands plate tableware, silverware, flatware and hollow-ware, and plate goods bearing the trade-mark "Rogers," and it is admitted that on June 27, 1918, it registered here in the Bureau of Commerce and Industry the trade-mark "Rogers." That it has been in the use and enjoyment of that trade-mark ever since. The tableware and goods here by Heacock Company are manufactured by the International Silver Company, and such plated goods bearing the mark "Rogers" have become widely and generally know in the Philippine Islands due to the publicity and advertisement given to them by Heacock Company.
Upon that point Gaches testified:
Q. If the International Silver Company withdrew the right to represent them from the H. E. Heacock Company, would your company insist upon making your "Rogers" trade-mark prevail against the International Silver Company? — A. As the International Silver Company knew of and consented to registration of that trade-mark, we should probably consider it necessary to leave the trade-mark to them.
x x x x x x x x x
Q. As a business man engaged in commerce in Manila, and in the Philippines at large from 1901 to this day, could you tell the court what significance, if any, has the word "Rogers" used upon goods such as knives, spoons, and forks, toilet articles, whether of silver or silver-plated, had upon the general commerce in the Philippine Islands and particularly in the City of Manila — A. It has come to stand for to silver plate sold by the H. E. Heacock Company.
Q. And how has the word "Roger" come to stand for articles sold by the H. E. Heacock Company, in the commerce of the Philippine Islands; how has this secondary meaning come to be attached to the word "Rogers" in the commerce of the Islands? — A. It is due to the extensive advertising campaign we have been carrying out since 1905, when we began to sell retail.
Q. From 1905, you say, the trade-mark "Rogers" has been advertised by the H. E. Heacock Company; until when? — A. To this day; we are still advertising it.
Q. In what form have you been advertising? — A. By means of newspaper, weekly and monthly revise, catalogues, bills, circulars, and in many other ways.
x x x x x x x x x
Q. Roughly about how much has been spent on advertising the Rogers trade-mark from 1909 till now? — A. It is very difficult to answer the question unless I give a rough calculation.
Q. Yes, tell us you approximate calculation. — A. Some P40,000 or P50,000.
x x x x x x x x x
Q. In selling those goods in the Philippines, manufactured by the International Silver Company, has the H. E. Heacock Company sold them under the industrial trademark of the International Silver Company or under the industrial trade-mark of the H. E. Heacock Company? — A. They are sold under the "Rogers" trade-mark which is the name we have been advertising during the past twenty-three years in connection with knives, spoons, forks and other articles used at tables, whether nickel plated or silver plated, and that name is well known throughout the Philippine Islands as representing goods sold by H. E. Heacock.
Q. How has the public come by such knowledge, that the name "Rogers" upon those goods means precisely that they come for the H. E. Heacock Company? — A. On account of the extensive publicity and advertising of these objects.
Q. When the H. E. Heacock Company sells those goods bearing the word "Rogers" together with other trade-marks, what guaranty does it give to the public, if any, or what does the word "Rogers" to mean to the public in respect of the quality of the goods sold? — A. Naturally, the public has placed its confidence in that trade-mark or in that name as a trade-mark on account of its guaranty represented by the Heacock firm which has been selling it all this time in this country.
Mr. FERRIER:
Q. That is an opinion of yours? — A. It is not an opinion; it is a fact.
Q. How have you acquired a knowledge of what the public thinks? — A. Because whenever the public orders any goods it specifies "Rogers" goods.
It appears from the record that such wares were cleverly advertised in the issues of the Manila Times in October, 1905.
It having been admitted the Heacock Company registered the word "Rogers" as a trade-mark in June, 1918, and it appearing that such trade-mark was registered with the knowledge, consent, and approval of the International Silver Company, in fact that it was made for its use and benefit, the question is squarely presented as to what is its legal force and effect, and what legal right Heacock Company has to the use and enjoyment of the word and trade-mark "Rogers."
It is concede the Heacock Company is not the manufacturer of the wares which it sells under that trade-mark. That such wares are manufactured by the International Silver Company from which they are purchased by Heacock Company and by it sold to the people in the Philippine Islands. The record is conclusive that covering a period of twenty-five years, through extensive advertising and the quality of the wares, the Heacock Company had built up and established a large and extensive business. That its only competitor in that line of goods is the defendant, American Trading Company, which appeared on the scene for the first time in 1925 with wares which are very similar to those imported and sold by the Heacock Company. It is admitted that the wares of the American Trading Company are manufactured in the United States by Wm. A. Rogers, Ltd., which has its trade-marks duly registered in that country, as it alleges. At the time of the trial of these cases in the lower court, its trade-marks were not registered in this country, but since then they have been and are now registered here. That is to say, fundamentally, the trade-marks of the International Silver Company, through which the Heacock Company purchases its wares, and the trade-marks of Wm. A. Rogers, Ltd., from which the American Trading Company takes its orders, are both duly registered in the Patent Office of the United States, and that the name "Rogers" was registered here by Heacock Company in June, 1918, and the trade-marks of Wm. A. Rogers, Ltd., were first registered here after the trial of these cases in the lower court.
The storm center of this case is the legal force and effect of the registration by Heacock Company of the word "Rogers" in June, 1918, and what that company did before and since its registration in placing the wares on the market. The defendant contends that the word "Rogers" is a family name, and conceding, without admitting, that Heacock Company might have the legal right to register the word "Rogers" as a trade-mark, it vigorously contends that it does not have the exclusive right to the use of that word.
Act No. 666 is entitled:
AN ACT DEFINING PROPERTY IN TRADE-MARKS AND IN TRADE-NAMES AND PROVIDING FOR THE PROTECTION OF THE SAME, DEFINING UNFAIR COMPETITION AND PROVIDING REMEDIES AGAINST THE SAME, PROVIDING REGISTRATION FOR TRADE-MARKS AND THE TRADE-NAMES, AND DEFINING THE EFFECT TO BE GIVEN TO REGISTRATION UNDER THE SPANISH ROYAL DEGREE OF EIGHTEEN HUNDRED AND EIGHTY-EIGHT RELATING TO THE REGISTRATION OF TRADE-MARKS, AND THE EFFECT TO BE GIVEN TO REGISTRATION UNDER THIS ACT.
x x x x x x x x x
SECTION 1. A trade-mark is a name, emblem, sign, or device employed by any person, firm, or corporation to designate the goods dealt in or manufactured by such person, firm, or corporation, for the purpose of enabling the public to recognize such goods and manufactures, and to distinguish them from the goods and manufactures of others.
SEC. 2. Anyone who produces or deals in merchandise of any kind by actual use thereof in trade may appropriate to his exclusive use a trade-mark, not so appropriated by another, to designate the origin or ownership thereof: Provided, That a designation or part of a designation which relates only to the name, quality, or description of the merchandise or geographical place of its production or origin can not be the subject of a trade-mark.
SEC. 3. The ownership or possession of a trade-mark, heretofore or hereafter appropriated, as in the foregoing section provided, shall be recognized and protected in the same manner and to the same extent, as are other property rights known to the law. To this end 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 action from any person who has sold goods of a similar kind, bearing such trade-mark, . . .
Section 7 of that Act, as amended by Act No. 3423, provides:
SEC. 7. Any person who is selling his goods shall give them the general appearance of goods of another manufacturer or dealer, either in the wrapping of the packages in which they are contained, or the devices or words thereon, or in the manner of their manufacture, or in any other feature of their appearance, which would be likely to influence purchasers to believe that the goods offered are those of a manufacturer or dealer who holds a duly registered patent therefor or who has long been accustomed to manufacture or sell such goods and who is other than the actual manufacturer or dealer, and who clothes the goods with such appearance for the purpose of deceiving the public and defrauding another of his legitimate trade, or any subsequent vendor or such goods or any agent of any vendor engaged in selling such goods with a like purpose, shall be guilty of unfair competition, and shall be liable to an action for damages, in which the measure shall be the same as that provided for a violation of trade- mark rights, together with discretionary power in the court to impose double damages if the circumstances call for the same. . . .
The material provisions of section 14 of Act No. 666, as amended by section 1 of Act No. 2460, are as follows:
No article of imported merchandise which shall copy or simulate the name of any domestic manufacture, or manufacturer or trader, or shall copy or simulate a trade- mark or trade-name registered in accordance with the provisions of this Act, or shall bear a name or mark calculated to induce the public to believe that the article is manufactured in the Philippine Islands, shall be admitted to entry at any customhouse of the Philippine Islands; . . . Provided, however, That this section shall not be construed to affect rights that any person may have acquired by virtue of having registered a trade-mark under the laws of the United States.
It is admitted that under these provisions Heacock Company registered the word "Rogers" in June, 1918, and it will be noted that under section 1 a trade-mark is a name employed by a corporation to designate the goods in which it deals, so that the public can recognized its goods. This definition closely follows that laid down in Words & Phrases, Vol. 8, p. 7042, where it is said:
A trade-mark "is the name, symbol, figure, letter, form, or device adopted and used by the manufacturer or merchant in order to designate the goods that he manufactures or sells, and to distinguish them from those manufactured or sold by another, to the end that they may be known in the market as his, and thus enable him to secure such profits as results from a reputation for superior skill, industry, or enterprise." (Citing numerous decisions of both State and Federal Courts.)
By the provisions of section 3 of Act No. 666, the ownership of such a trade-mark is "recognized and protected in the same manner and to the same extent, as are other property rights known to the law." The purpose and intent of the law is to give force to this section, and it must be conceded that without such protection a registered trade- mark would not be of any value.
It is admitted that for a number of years the trade-marks of Wm. A. Rogers, Ltd., have been and are now registered in the Patent Office of the United States, and that the word "Rogers" is a part and parcel of those trade-marks, and for the purpose of this opinion, it is admitted that the trade- marks of Wm. A. Rogers, Ltd., as registered in the United States, are now registered in the Philippine Islands. That is to say, Heacock Company registered the word "Rogers" in June, 1918, and Wm. A. Rogers, Ltd., for the first time in 1930 registered in this country trade-marks which it had previously registered in the United States, all of which in one form or another contain the word "Rogers." As stated, when Heacock Company first imported such wares into the Philippine Islands it was then a virgin country, and it must be admitted that any business standing or given to it by the advertising and business methods and dealings of that company.
The evidence is conclusive that the wares for which the American Trading Company has been taking and filling orders is very similar in appearance, design, and material to the wares which have been advertised and sold in this country by Heacock Company since 1905. It is true that a dealer in such wares could and would see the distinction between them, but even so, in the ordinary course of business, the average public to whom they are sold could not and would not distinguish one from the other.
As stated the old original firm of Rogers Bros. was composed of three brothers of that name from whom, in one form or another, Wm. A. Rogers, Ltd., and the International Silver company have acquired the right to use their respective trade-marks in the United States, in all of which the word "Rogers" is used as a part of such trade-marks.
The appellants cite and rely upon that portion of Act No. 666, as amended by section 1 of Act No. 2460, which reads as follows:
. . . Provided, however, That this section shall not be construed to affect rights that any person may have acquired by virtue of having registered a trade-mark under the laws of the United States.
It will be noted that these provisions are specifically confined and limited to "this section," which is section 14, and they do not apply to any other sections of the original or amended act, and that section 14 treats exclusively of the importation of merchandise into the Philippine Islands and its entry at any customhouse, and this exception is confined and limited to "rights that any person may have acquired" by registered trade-mark under the laws of the United States, and that nowhere in section 14 is the word "sale" or "sell" used. The appellants cite and rely upon section 12 of Act No. 666, as amended by Act No. 744, as follows:
The application prescribed in the foregoing section must be accompanied by a written declaration verified by the person, or by a member of the firm, or by an officer of the corporation applying, or by the duly authorized attorney or agent of such person, firm, or corporation, to the effect that such party has at the time a right to the use of the trade-mark or trade-name sought to be registered, and that no other person, firm, or corporation has the right to such use, either in the identical form or in any such near resemblance thereto as might be calculated to deceive; and that the description and facsimiles presented for registry truly present the trade-mark sought to be registered.
It must be conceded that in June, 1918, when Heacock Company applied for, and obtained the registration of, the word "Rogers," it then had the right to the use of that trade-mark or trade-name, for the simple reason that it was the only person then dealing in "Rogers" wares of any kind, and that Wm. A Rogers, Ltd., or the American Trading Company did not appear on the scene until seven years later.
Those provisions of section 12 should be confined and limited to any other person, firm, or corporation which at the time of the application had the right to the use of such trade-mark in form or substance.
How could Heacock Company in 1918 know that seven years later the American Trading Company or Wm. A. Rogers, Ltd., would appear on the scene, claiming the right to the use of the word "Rogers" as a family name? How could it then know that Wm. A. Rogers, Ltd., had registered its trade-marks in the United States Patent Office? The construction of this section should be confined and limited to actual matters and things as they existed in 1918 when Heacock Company applied for, and obtained the registration of, the word "Rogers."
In one form or another and word "Rogers" was used in the trade-mark of the International Silver Company which it registered in the Patent Office of the United States, and the record shows that the International Silver Company knew of, and consented to, the registration of the word "Rogers" by the Heacock Company in 1918. Hence, Heacock Company never committed any fraud against that company when it registered the word "Rogers" in the Philippine Islands. Neither did it commit any fraud against Wm. A. Rogers, Ltd., for the simple reason that when in 1918 Heacock Company registered the word "Rogers," Wm. a. Rogers, Ltd., was then not doing business in the Philippine Islands.lawphil.net
It is contended that besides the word "Rogers," the goods of both parties contain initials, figures, and symbols which distinguish them from each other, but the evidence shows that in dealing with the public, the important and decisive word is the word "Rogers."
In the final analysis, in June, 1918, Heacock Company duly registered here the word "Rogers" as its trade-mark. At that time this was a virgin field for the wares evidenced by that trade-mark. Since the, through its advertising, business methods, and dealings, it has built up a growing and increasing market for the sale and purchase of such wares.
Act No. 666 is entitled "An Act defining property in trade-marks and in trade-names and providing for the protection of the same, defining unfair competition and providing remedies against the same, providing registration for trade-marks and trade-names. . . ." The purpose and intent of the law is very apparent. Pursuant to its provisions Heacock Company registered the word "Rogers" as its trade-mark, for aught that appears, without any knowledge at the time of the existence of the registered trade-marks of Wm. A. Rogers, Ltd., in the Patent Office of the United States in which the word "Rogers" is used. If in June, 1918, when the Heacock Company applied for the registration of the word "Rogers," the Wm. a. Rogers, Ltd., had then been in the field with its wares, another and a very different question would be presented. If appellants' contention is sustained any old established firm here which in good faith had applied for, and obtained, the registration of a given word as its trade-mark, and through its skill, energy, and business dealings had built up a good business, largely founded on that trade-mark, could after many years of such business wake up some find morning and find that its trade-mark was of but little, if any, commercial value, because some other firm in the United States had registered its trade-marks in the Patent Office of that country, in which it made use of the word which the local merchant had registered as its trade-mark in this country. What would be the value of an old registered trade-mark in the Philippine Islands upon which a merchant had established his business here, if in later years another person in the same line of business, and on the strength of a similar registered trade-mark in the United States, could enter the field here and become a competitor in the sale of similar wares under similar trade-marks?
Upon the facts we attach but little, if any, importance to the use of the word "Rogers" as a family name. In any event when Heacock Company applied for the registration of the word "Roger" it had the same legal right to the use of that word as Wm. A. Rogers, Ltd., and for seven years it has had the uninterrupted use of the word under that trade-mark, and in the ordinary course of business, stripped of all non-essentials, it must be conceded that in this line of wares, it is the word "Rogers" which gives the business its intrinsic value, all of which was done by Heacock Company before the appellants ever entered the field. Neither upon the admitted facts will the proviso in section 14, upon which the appellants rely, bear the construction for which they contend.
By Act No. 666 and its amendments, the Legislature of the Philippine Islands made specific provisions for the defining of property in trade-marks and trade-names, and their protection and unfair competition, and provided for remedies against it, and for the registration of trade-marks and trade-names, and it is admitted that in June, 1918, Heacock Company registered the word "Rogers" as its trade-mark upon which it has built up an old established business.
The attorney for the respective parties have submitted able and exhaustive briefs on numerous other legal questions, but in the final analysis the important and decisive question is the legal force and effect of the registration of the word "Rogers" by the Heacock Company in June, 1918, and we are clearly of the opinion that the registration at that time of that word is valid, and that as such it should be protected under the provisions of Act No. 666 and its amendments.
All things considered, the judgment of the lower court in both cases is affirmed, with costs against the appellants. So ordered.
Avanceña, C.J., Street, Malcolm, Romualdez and Villa- Real, JJ., concur.
Ostrand, J., reserve his vote.
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