GR 48793; (August, 1943) (Digest)
G.R. No. L-48793; August 6, 1943
DESTILERIA AYALA, INC., plaintiff-appellant, vs. TAN TAY & CO., defendant-appellee.
FACTS
The plaintiff, Destileria Ayala, Inc., obtained a certificate of registration from the Bureau of Commerce on September 4, 1929, for a specific glass receptacle (bottle) used for bottling its wine products. The certificate described the bottle’s shape and form and its distinctive name, “Destileria Ayala, Inc.,” embossed in bold relief. The defendant, Tan Tay & Co., doing business as “La Refineria Tan Tay, Inc.,” used bottles registered in the plaintiff’s name to sell its own wine. The defendant used these bottles with the word “Ayala” generally erased or obliterated, leaving only the word “Destileria” legible. The plaintiff filed an action for injunction to prohibit this use. The trial court denied the petition and dissolved a preliminary injunction, holding that the bottle’s form and dimensions were common in the industry and that the plaintiff’s exclusive right existed only when its distinctive name was clearly stamped on the bottle. The plaintiff appealed.
ISSUE
Whether the defendant’s use of the plaintiff’s registered bottles, with the distinctive name partly erased, without the plaintiff’s written consent, constitutes a violation under Act No. 3070 .
RULING
Yes. The Supreme Court reversed the trial court’s decision.
The Court held that the purpose of Act No. 3070 is to allow a person to identify and register containers to prevent others from using them. The prohibition under Section 2 of the Act makes it unlawful for any person, without the owner’s written consent, to use the registered containers for any analogous or similar product. The illegality pertains to the use of the containers themselves, not merely the use of the trademark engraved on them. The protection would be rendered useless if it could be circumvented by erasing the distinctive mark. In this case, it was undisputed that the defendant used bottles identical to those registered by the plaintiff (Exhibits A and B) and had not obtained the plaintiff’s written consent. Therefore, the defendant violated the law. The Court made the preliminary injunction permanent, prohibiting the defendant from using bottles within the plaintiff’s certificate of registration. Costs were imposed on the appellee.
DISSENTING OPINION (PARAS, J.):
Justice Paras dissented, arguing that the bottles’ shape, size, quality, and color were commonly used by many distillery companies. He contended that the object of Act No. 3070 was to prevent unfair competition. Since the defendant removed the word “Ayala” and used its own trade name, there was no deception of the public or prejudice to the plaintiff’s goodwill. Therefore, the trial court’s judgment should be affirmed.