Case Digests (2023.09.19)

Lyceum of the Philippines, Inc. v. Court of Appeals, G.R. No.
101897, March 5, 1993

DOCTRINE
DOCTRINE OF SECONDARY MEANING
- The doctrine of secondary meaning originated in the field of trademark law. Its application has, however, been
extended to corporate names sine the right to use a corporate name to the exclusion of others is based upon the
same principle which underlies the right to use a particular trademark or tradename.
- A word or phrase originally incapable of exclusive appropriation with reference to an article on the market,
because geographically or otherwise descriptive, might nevertheless 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.
FACTS
- It is claimed, however, by petitioner that the word “Lyceum” has acquired a secondary meaning in relation to
petitioner with the result that word, although originally a generic, has become appropriable by petitioner to the
exclusion of other institutions like private respondents herein.
ISSUES
- Whether the use by petitioner of “Lyceum” in its corporate name has been for such length of time and with such
exclusivity as to have become associated or identified with the petitioner institution in the mind of the general
public (or at least that portion of the general public which has to do with schools).
RULING
- NO. The use of word “Lyceum” has not attended with exclusivity. Under the doctrine of secondary meaning, a
word or phrase originally incapable of exclusive appropriation with reference to an article in the market, because
geographical or otherwise descriptive might nevertheless have been used so long and so exclusively by one
producer with reference to this article that, in that trade and to that group of the purchasing public, the word or
phrase has come to mean that the article was his produce. This circumstance has been referred to as the
distinctiveness into which the name or phrase has evolved through the substantial and exclusive use of the same
for a considerable period of time. No evidence was ever presented in the hearing before the Commission which
sufficiently proved that the word ‘Lyceum’ has indeed acquired secondary meaning in favor of the appellant.
- While the appellant may have proved that it had been using the word ‘Lyceum’ for a long period of time, this fact
alone did not amount to mean that the said word had acquired secondary meaning in its favor because the
appellant failed to prove that it had been using the same word all by itself to the exclusion of others. We agree
with the Court of Appeals. The number alone of the private respondents in the case at bar suggests strongly that
petitioner's use of the word “Lyceum” has not been attended with the exclusivity essential for applicability of
the doctrine of secondary meaning. Petitioner's use of the word “Lyceum” was not exclusive but was in truth
shared with the Western Pangasinan Lyceum and a little later with other private respondent institutions which
registered with the SEC using “Lyceum” as part of their corporation names. There may well be other schools
using Lyceum or Liceo in their names, but not registered with the SEC because they have not adopted the
corporate form of organization.
Ang mga Kaanib sa Iglesia ng Dios kay Kristo Hesus v. glesia ng Dios kay Cristo Jesus, G.R. No.
137592, December 12, 2001
FACTS
- Respondent Iglesia ng Dios Kay Cristo Jesus, Haligi at Suhay ng Katotohanan (Church of God in Christ Jesus, the
Pillar and Ground of Truth), is a non-stock religious society or corporation registered in 1936. Sometime in 1976,
one Eliseo Soriano and several other members of respondent corporation disassociated themselves from the
latter and succeeded in registering on March 30, 1977, a new non-stock religious society or corporation, named
Iglesia ng Dios Kay Kristo Hesus, Haligi at Saligan ng Katotohanan.
o Yung respondent “haligi at suhay” yung original
o Petitioner – “haligi at saligan”
- Respondent corporation filed with the SEC a petition to compel the Iglesia ng Dios Kay Kristo Hesus, Haligi at
Saligan ng Katotohanan to change its corporate name to another name that is not similar or identical to any
name already used by a corporation, partnership or association registered with the Commission.
- Petitioner (in this case) Mga Kaanib sa Iglesia ng Dios Kay Kristo Jesus (sic), H.S.K. sa Bansang Pilipinas is hereby
MANDATED to change its corporate name to another not deceptively similar or identical to the same already
used by the Petitioner, any corporation, association, and/or partnership presently registered with the
Commission.
ISSUE
- Whether a business or a nonprofit organization, if misleading or likely to injure in the exercise of its corporate
functions, regardless of intent, may be prevented by the corporation having a prior right, by a suit for injunction
against the new corporation to prevent the use of the name.
RULING
- YES. Significantly, the only difference between the corporate names of petitioner and respondent are the
words SALIGAN and SUHAY. These words are synonymous — both mean ground, foundation or support.
Hence, in Universal Mills Corporation v. Universal Textile Mills, Inc., the Court ruled that the corporate names
Universal Mills Corporation and Universal Textile Mills, Inc., are indisputably so similar that even under the test
of “reasonable care and observation” confusion may arise.
- The wholesale appropriation by petitioner of respondent’s corporate name cannot find justification under the
generic word rule. We agree with the Court of Appeals’ conclusion that a contrary ruling would encourage other
corporations to adopt verbatim and register an existing and protected corporate name, to the detriment of the
public. The fact that there are other non-stock religious societies or corporations using the names Church of the
Living God, Inc., Church of God Jesus Christ the Son of God the Head, Church of God in Christ & By the Holy
Spirit, and other similar names, is of no consequence. It does not authorize the use by petitioner of the essential
and distinguishing feature of respondent’s registered and protected corporate name.
De La Salle Montessori International of Malolos, Inc. v. De La Salle Brothers, Inc., G.R. No. 205548,
February 7, 2018
DOCTRINE
Lyceum Case v. De La Salle Case
Lyceum De La Salle
Generic term Not a generic term
The word lyceum is clearly descriptive of the very being De La Salle Brothers, Inc. was registered in 1961 and the
and defining purpose of an educational corporation. De La Salle group had been using the name decades
before petitioner's corporate registration.
2 requisites to fall within the prohibition of Section 18:

1. that the complainant corporation acquired a prior right over the use of such corporate name.
2. the proposed name is either: (a) identical, or (b) deceptively or confusingly similar to that of any existing
corporation or to any other name already protected by law; or (c) patently deceptive, confusing or contrary to
existing law.
FACTS
- On January 29, 2010, respondents De La Salle Brothers, Inc., (De La Salle Group) filed a petition with the SEC
seeking to compel petitioner to change its corporate name. Respondents claim that petitioner’s corporate
name is misleading or confusingly similar to that which respondents have acquired a prior right to use, according
to respondents, petitioner’s use of the dominant phrases “La Salle” and “De La Salle” gives an erroneous
impression that De La Salle Montessori International of Malolos, Inc. is part of the “La Salle” group, which
violates Section 18 of the Corporation Code of the Philippines.
- On May 12, 2010, the SEC issued an Order directing petitioner to change or modify its corporate name. It held,
among others, that respondents have acquired the right to the exclusive use of the name “La Salle” with
freedom from infringement by priority of adoption, as they have all been incorporated using the name ahead
of petitioner.
- The name “La Salle” is not generic in that it does not particularly refer to the basic or inherent nature of the
services provided by respondents. Neither is it descriptive in the sense that it does not forthwith and clearly
convey an immediate idea of what respondents’ services are.
ISSUE
- Whether the CA acted with grave abuse of discretion amounting to lack or in excess of jurisdiction when it erred
in not applying the doctrine laid down in the case of [Lyceum of the Philippines].
RULING
- NO. The phrase “De La Salle” is not merely a generic term. Respondents’ use of the phrase being suggestive and
may properly be regarded as fanciful, arbitrary and whimsical, it is entitled to legal protection. The Court notes
not only the similarity in the parties’ names, but also the business they are engaged in. They are all private
educational institutions offering pre-elementary, elementary and secondary courses. As aptly observed by the
SEC En Banc, petitioner’s name gives the impression that it is a branch or affiliate of respondents. It is settled
that proof of actual confusion need not be shown. It suffices that confusion is probable or likely to occur.
- Applying the requisites in Section 18
1. Respondents' corporate names were registered on the following dates as early as 1961 (clear that
respondents are the prior registrants, they certainly have acquired the right to use the words “De La
Salle” as part of their corporate names).
Petitioner was issued a Certificate of Registration only on July 5, 2007.
2. There is a confusing similarity between petitioner's and respondents' corporate names. While these
corporate names are not identical, it is evident that the phrase “De La Salle” is the dominant phrase
used.
Northern Mindanao Industrial Port and Services Corp. v. Iligan Cement Corp., G.R. No. 215387, April
23, 2018
DOCTRINE
- A change in the corporate name does not make a new corporation, whether effected by a special act or under a
general law. It has no effect on the identity of the corporation, or on its property, rights, or liabilities. The
corporation, upon the change in its name, is in no sense a new corporation, nor the successor of the original
corporation. It is the same corporation with a different name, and its character is in no respect changed.
FACTS
Parties
- Iligan Cement Corporation (ICC) is a domestic corporation engaged in the manufacturing and distribution of
cement and other building materials.
- Northern Mindanao Industrial & Port Services Corporation (NOMIPSCO) is a domestic corporation involved,
among others, in the arrastre or stevedoring business.
Petitioner's Arguments
- Petitioner argues that respondent's bad faith can be seen from the fact that respondent made it appear that
petitioner did not submit its bid, the folder in which the commercial and technical bids were kept was stamped
with “No Bid Submitted” as to petitioner; that Europort, which eventually won the project, was not a
participant in the bidding process; that respondent awarded the project on the basis of criteria, parameters,
and policies that were not disclosed to petitioner prior to the bidding; and that Europort had no corporate and
legal personality when it executed the cargo handling contract with respondent.
Respondent's Arguments
- Respondent counters that petitioner’ claim that respondent made it appear that the former did not submit a bid
is pure hearsay and speculation as no documentary or testimonial evidence was attached to the
complaint/pleadings, nor was any submitted in court, to prove this allegation; that for the same foregoing
reasons, petitioner's claim that the bid was grounded on policies that were not disclosed to the bidders has no
basis; that even if preference is given to new contractors as a matter of policy, this does not constitute an
abuse of respondent's right since "preference" does not mean exclusion of other contractors; that petitioner's
argument that Europort was not a corporate entity at the time and that respondent used the bidding for the sole
purpose of obtaining the optimum contract price are unfounded and have no legal basis; that petitioner has no
right to dictate who should be the winning bidder for respondent's cargo handling contract, since
advertisements for bidders are simply invitations to make proposals, and an advertiser is not bound to accept
the highest or lowest bidder unless the contrary appears; that there was thus no abuse of respondent's rights;
and that respondent's participation in the trial does not result in waiver of its right to seek dismissal of the case
on the basis of lack or absence of cause of action.
ISSUE
RULING
- Thus, it appears that one of the five bidders that participated in the subject bidding, Oroport, was eventually
chosen by respondent – although it did not necessarily submit the lowest bid. At or about the time that
Oroport and respondent were consummating the cargo handling contract, Oroport changed its corporate name
to Europort Logistics and Equipment Incorporated, or Europort. As a result, the cargo handling contract executed
was between respondent and Europort, the new name of Oroport. The fact that the original bidder and winner
was Oroport, and the resulting cargo handling contract was between respondent and Europort–Oroport's
derivative – has no bearing; in legal contemplation, Oroport and Europort are one and the same.

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Lyceum of the Philippines, Inc. v. Court of Appeals, G.R. No.

101897, March 5, 1993

2 requisites to fall within the prohibition of Section 18:

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