Ubeda v. Zialcita

Background

A gin maker sued to stop a rival from using a mark that resembled his circular label showing three bells, his autograph, and the word Manila, and sought double damages. He relied on a grant from the Governor General dated December 16, 1898. The defendant used a similar design changing Tres Campanas to Dos Campanas and substituting a different autograph. The plaintiff's mark itself closely imitated an older, well-known Antwerp mark made by Van Den Bergh & Co.

Reasoning

The Court focused on whether the plaintiff could keep a rival from using a similar mark when his own label was evidently modeled on the earlier Antwerp device. The lower courts found that both the plaintiff’s and the defendant’s marks were variations of the earlier mark and that the plaintiff intended to take advantage of the earlier mark’s goodwill. Under the Philippine statute cited by the Court, that kind of copying or deception prevents the copying party from getting legal relief. The Court rejected the argument that a prior Spanish certificate or the Treaty of Paris required a different result and affirmed the lower courts’ findings of fraud and denial of relief.

Real world impact

The decision leaves the rival free to use the disputed label and prevents the plaintiff from excluding the defendant despite his registered grant. It enforces the rule that copying a well-known earlier trade-mark to gain its goodwill will generally bar the copier from seeking court protection. The judgment therefore discourages imitating famous foreign brands when doing so would deceive the public.