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.
Whether or not petitioner’s mark has acquired secondary meaning in its favor.
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.