Forbes, Munn & Co. v. Ang San To
REITERATIONFacts
The Antecedents: Plaintiff, Forbes, Munn & Co. (Ltd.), sought to perpetually enjoin the defendant, Ang San To, from using labels imitating plaintiff's trademark and to recover damages for alleged infringement. Plaintiff had used a trademark for its cotton khaki drill, popularly known as "Three Soldier Khaki" or "Soldier Khaki," since 1905 and registered it on February 25, 1909. Defendant, a merchant in Manila, deposited four facsimiles of trademarks for khaki cloth on October 18, 1916, which he has since been using. Procedural History: The Court of First Instance of Manila dismissed both the complaint and the counterclaim and dissolved the preliminary injunction, with costs against the plaintiff. The Petition: Plaintiff appealed to the Supreme Court, assigning seven errors, but the Court focused on the third and fourth assignments: that the trial court erred in not finding that the defendant's marks were an infringement of plaintiff's mark and that the defendant was guilty of unfair competition.
Issue(s)
Whether the marks used by the defendant constitute an infringement of the plaintiff's trademark. Whether the defendant was guilty of unfair competition.
Ruling
The judgment of the trial court is reversed. A permanent injunction shall issue enjoining the defendant from using the infringing trade-mark Exhibit B or any other like imitation of plaintiff's trade-mark. The record is returned to the trial court for determination of damages in favor of the plaintiff. Plaintiff is awarded costs in both instances.
Ratio Decidendi
On Whether the marks used by the defendant constitute an infringement of the plaintiff's trademark: The Court found that the charge of infringement was satisfactorily proved. While the marks differed in certain respects, such as the number of soldiers and wording, they were similar in words and general tone. A significant proof of imitation was the defendant's use of the English spelling "color" (c-o-l-o-u-r), mirroring the plaintiff's spelling, despite the defendant's goods originating from the United States where the standard spelling is "color" (c-o-l-o-r). This was deemed not accidental. Furthermore, a direct comparison showed that the defendant's trademark (Exhibit B) was almost a tracing of the plaintiff's trademark (Exhibit A). Reliable witnesses testified that Exhibit B was calculated to deceive purchasers, supporting the conclusion that the defendant attempted to palm off his goods as those of the plaintiff. The deceptive tendency, by copying or imitating the substantial and distinctive part of the trademark, is sufficient to show infringement. On Whether the defendant was guilty of unfair competition: The Court held that unfair competition exists when there is a similarity, either in general appearance, device, or words, which would be likely to deceive the buying public. The analysis for trademark infringement also supports a finding of unfair competition. The defendant's actions, particularly the near-tracing of the plaintiff's mark and the use of the non-standard spelling of "color," demonstrated an intent to mislead consumers. The inspection of the two marks revealed that Exhibit B was designed to simulate a resemblance to plaintiff's goods, sufficient to mislead the consumer, which is the essence of unfair competition. This artifice of the unfair trader aims to pass off one's goods as those of another.
Main Doctrine
Infringement of a trade-mark results from the fraudulent use of another's trade-mark or a colorable imitation thereof, and unfair competition exists when there is a similarity likely to deceive the buying public. The deceptive tendency indicated by copying or imitating the substantial and distinctive part of the trade-mark, so as to pass off the goods of one man as those of another, is sufficient to show infringement.