IP - Patent and Trademark

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.

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

origin of the products to which it is attached.

exclusively associated with the user's products and business.

the exclusion of all others.

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