Conrado O. Sta. Romana vs. Lakeview Industrial Corporation

[SEC-SICD * CASE NO. 1341. October 4, 1980.] CONRADO O. STA. ROMANA , petitioner , vs . LAKEVIEW INDUSTRIAL CORPORATION , respondent . D E C I S I O N Petitioner, in his capacity as President and General Manager of Conrado O. Sta. Romana, Inc., owner and operator of Lakeview Health Resort filed the instant complaint against herein respondent Lakeview Industrial Corporation, praying that respondent be ordered to amend its Articles of Incorporation by deleting the word " Lakeview " from its corporate name on the ground that he (petitioner) has the exclusive right to the use of the same and had in fact been in continuous use thereof. He claims that Petitioner's resort business and " name " Lakeview have been closely associated with and identified as one and the same and that the use by respondent of the word " Lakeview " as part of its corporate name is not only violative of his right and Conrado O. Sta. Romana, Inc., but has caused and will continue to cause confusion among the public. Respondent maintains, among others, that the subject matter of the action is one for infringement of tradename, hence falling under the jurisdiction of the Courts of First Instance; that registration of the business name Lakeview Health Resort does not confer exclusive right upon registrant over the word " Lakeview " nor does it prevent others from using the said word as part of their corporate or firm name as the purpose for such registration of a business name is merely to apprise the public of the names and real identity of the persons using such business name; that by using the name Lakeview Health Resort, petitioner's purpose is to advertise to the public the particular nature of its business as one dedicated to the improvement of health; that the word Lake View or the word " Lakeview " is primarily geographically descriptive and/or generic and therefore not capable of exclusive appropriation; that the word Lakeview as part of a corporate or firm name has become publici juris considering that many other corporations have used and adopted and have been authorized to use and adopt the word Lakeview as part of their corporate names; that the business name Lakeview Health Resort is not confusingly similar to respondent's corporate and business name Lakeview Industrial Corporation. It appears that petitioner, in 1954, started a resort business consisting of a hotel, restaurant and swimming pool in Los Baos, Laguna, under a sole proprietorship wherein he adopted and used the name Lakeview Health Resort. On the same year, petitioner applied with and was issued by the then Bureau of Commerce (now Bureau of Domestic Trade) a certificate of Registration of the business name Lakeview Health Resort (Exhs. "A", "A-1" and "A-2") which was renewed on March 5, 1959 (Exh. "B"); on August 24, 1973 (Exhs. "D", "D-1" and "D-2"); and on June 10, 1975 in the name of Conrado O. Sta Romana, Inc. (Exhs. "E" and "E-1"). Also, on the same date, the business names Lakeview Restaurant and Lakeview Swimming Pool were registered by the Bureau of Domestic Trade in favor of Conrado O. Sta Romana, Inc. (Exhs. "M", "M-1" and "M-2"). Aside from said registration with the Bureau of Domestic Trade, petitioner registered the tradename or service mark LAKEVIEW with the Philippine Patent Office on October 23, 1975 (Exh. "F") and subsequently, on July 13, 1976, the same was registered by the Philippine Patent Office in its principal Register in favor of Conrado O. Sta Romana, Inc. (Exh. "G"). On January 30, 1976, the brochure entitled LAKEVIEW was registered with the Copyright Office, for which a certificate of Copyright Registration was issued (Exh. "H"). On the other hand, respondent corporation was formerly known as Republic Rayon Corporation which is primarily engaged in the business of manufacturing, processing, and generally dealing in all types of pulps, cellulose, rayon synthetic fibers, etc. On October, 1968, respondent amended its Articles of Incorporation and changed its corporate name to Lakeview Industrial Corporation, for which it was issued by this Commission, a certificate of filing of amended articles of incorporation on May 16, 1977 (Exhs. "3", "3-A", "3-A-1" and "3-A-2"). On May 14, 1976, respondent registered its business name Lakeview Industrial Corporation with the Bureau of Domestic Trade (Exhs. "13-A", "13-B", "14-B" and "14-C"). The issue now posed before us, is whether or not petitioner has the right, to the exclusion of others, to the use of the word " Lakeview " as he maintains that having appropriated the word LAKEVIEW as part of his business name and having registered it as a tradename/service mark, it vested upon him and Conrado O. Sta. Romana, Inc. an existing exclusive right to the use thereof and therefore is entitled to protection against its use of an identical or similar name by another corporation, apart from the fact that there is the likelihood of the public being confused that petitioner and Conrado O. Sta. Romana, Inc. have an interest in, or are connected with, respondent corporation and vice versa. As could be inferred from the foregoing, petitioner claims absolute right to the use of the word " Lakeview " to the exclusion of others on the basis of having been the first to use the same. Generally speaking, a corporation by prior appropriation or by appropriation and use acquires a right in its name which the law will protect. (Pan American Trading Co. vs. Hinojosa, 38 F Supp. 31, p. 19 Fletcher's Cyclopedia Corporations). However, such is not an unqualified rule. There are certain words, terms or names which are regarded in the law as incapable of exclusive appropriation. Under this classification are generic terms, geographical names and words and terms which are merely descriptive of the goods, services, place where made and the character of the business. In this regard, it is an established rule that a corporation cannot acquire such a right in such names words or terms as to have their use by others enjoined (p. 63, Vol. 6 Fletcher's Cyclopedia Corporations). Therefore, while indeed petitioner has first used the word " Lakeview " and words " Lake View " as part of its business name and registered the same as early as 1954, such fact did not confer upon petitioner an existing exclusive right as against the others to the use of the word " Lake View ", the same being a generic term and incapable of exclusive appropriation. "A corporation in selecting for its name a generic term which is descriptive of the business in which it proposes to engage, assumes some risk of injury from confusion of trade names, since no one can make such an exclusive appropriation. (Liquidators v. Clifton, 132 Ore 448, 286 p. 152, cited in Fletcher's Cyclopedia Corporations, Vol. 6, p. 62)." Corollary to the aforestated issue is the question as to whether or not respondent may be allowed to continue using its corporate name. Petitioner claims that respondent's continuous use of the questioned name will cause confusion in the minds of the public. He argues that "in this modern time and age of conglomerates, what is there to stop the public from identifying Lakeview Health Resort as subsidiary or sister corporation of respondent?" A scrutiny of the facts and evidence presented by the petitioner, shows that he has failed to establish his case on the aspect that the public has been misled into believing that petitioner's Lakeview Health Resort is associated in any way with herein respondent corporation. As a matter of fact, petitioner has not shown that confusion is probable or likely to occur. It has been established and petitioner himself admits that the businesses in which the parties were engaged are not the same (p. 5, petitioner's memorandum dated December 17, 1979). As has been previously stated, petitioner is engaged in the resort business while respondent is in the manufacture of polyester fibers and yarns and textiles and knitted goods. Moreover, Lakeview Health Resort is situated in Los Baos, Laguna, while respondent has its principal place of business at Carmona, Cavite. Under such circumstances, the degree of probability of causing confusion in the minds of the public regarding the identities of the parties behind each of them is nil. "In other words, it is not sufficient that some person may possibly be misled but the similarity must be such that any person, with such reasonable care and observation as the public generally are capable of using and may be expected to exercise would be likely to mistake one for the other" (p. 98 Vol. 6 Fletcher's Cyclopedia Corporations). The Commission, had occasion to rule that "it does not see the similarity between " House of Insurance, Inc ." and House of Investments, Inc ." considering that said corporations have different main objectives, one being "insurance" and the other " investments " and both companies cater generally to people of means who, as a rule, exercise a careful scrutiny of the identity of the corporation with whom they deal." Applying the same by analogy with the case at bar, we could hardly see how confusion could result herein considering that petitioner's business and that of respondent are completely alien to one another. As aptly quoted by respondent in the case of Ang Si Heng and Dee vs. Wellington Department store, Inc., et al., G.R. No. L-4531, January 10, 1953, 92 Phil. 448, p. 543-544, " While there is similarity between the trademark or tradename "Wellington Company" and that of "Wellington Department Store", no confusion or deception can possibly result or arise from such similarity because the latter is a department store; while the former does not purport to be so . . . ." " Neither could such deception be by any possibility produced because defendant's store is situated on the Escolta, while plaintiff's store or place of business is located in another business district far away from Escolta ." Suffice it to say therefore that upon consideration of all the foregoing factual circumstances, the Commission finds that petitioner's resort business name and that of respondent's are different and distinct as to preclude any probability or likelihood of confusion or deception in the minds of the public to the prejudice of the trade or business of petitioner nor is there any similarity in their names as is likely to mislead individuals or persons of ordinary caution and prudence into the belief that petitioner's resort business is, in any manner, related to or affiliated with that of respondent. prcd WHEREFORE, premises considered, the above complaint should be, as it is hereby DISMISSED. SO ORDERED. (SGD.) FRANCIA A. TIUSECO-MANLAPAZ Hearing Officer