General Telephone Directory Co. vs. General Directory Co.

[SEC-SICD * CASE NO. 2039. September 30, 1981.] GENERAL TELEPHONE DIRECTORY CO. , petitioner , vs . GENERAL DIRECTORY CO. , respondent . D E C I S I O N A verified petition with a prayer for a writ of preliminary injunction was filed by General Telephone Directory Company, against General Directory Company, for the cancellation and/or change of respondent's partnership name. Petitioner alleged, among other things, that by virtue of its previous registration with the Securities and Exchange Commission, it has acquired exclusive right over the use of such name as against identical or similar names such as that of respondent. Moreover, petitioner, posited that the registration of respondent's name will certainly confuse, mislead and deceive some of the former's subscribers/advertisers to whom fake billings were allegedly charged by the latter. Besides, the business purposes of respondent is similar to that of petitioner's and both entities are engaged in the business of publishing directories. Respondent, in its Answer, averred there was no close similarity of its name with that of petitioner's and deception would not likely to occur considering the kind of mentality possessed by said advertisers. Furthermore, such comparatively small, wide-awake and business-oriented segment of the public alluded to cannot in any manner be confused with petitioner's company for that respondent's in view of the express stipulation in the document issued by the latter "that respondent is not in any way connected with any publishing or advertising entity, be it the Philippine Long Distance Telephone and other entities." At the hearing on the incident and on the main issues of the case, counsel for petitioner presented testimonial as well as documentary evidence while counsel for respondent just expressed his intention to submit documentary evidence and to file a memorandum. After due hearing, both parties manifested that they will submit the case for resolution, after they have filed their respective memoranda. The controlling issue in this case is, whether or not the corporate names of petitioner and respondent are so similar or identical as to mislead, confuse and deceive the general public as to the identity of one and the other. After a careful perusal of the records of the case, the Commission finds that petitioner was registered with the Securities and Exchange Commission as a corporation on September 24, 1957, and respondent on March 20, 1980 as a partnership. Both entities are engaged in the business of publishing directories of advertisers scattered throughout the country. It cannot escape the observation of this Commission that respondent at times was able to bill/charge the very same customers/clients of petitioner on account of the latter's previous orders for publications at the Yellow Pages of the Philippine Long Distance Directory (herein referred to as PLDT) when in fact petitioner herein is the exclusive publisher of the PLDT Directory. As borne out by the documentary evidence, respondent's advertisement clippings which they showed to petitioner's customers/clients were identically the same with that as advertised in the Yellow Pages of the PLDT Directory. It is indeed, intriguing that respondent which is not in way connected with the PLDT was able to show such copies of advertisement clippings similar to or identical with those advertisements published in the PLDT Directory. Clearly then, the parties' business names "General Telephone Directory Company" and "General Directory Company" are closely similar to each other, except for the word "Telephone" in the name composition of petitioner. It is evident that these customers or clients of petitioner were made to believe that respondent is the same as petitioner or somehow connected or related to the latter. Be that as it may, this Commission in an earlier case so holds that the addition of a single word in the corporate name composition will not be sufficient to distinguish it from another where the dominant word is identical as to deceive and mislead the public" ( Lyceum of the Philippines, Inc. vs. Lyceum of Baguio, Inc., SEC Case No. 1241, April 20, 1977 ). Obviously, confusion herein is attributed principally on the use of the word "DIRECTORY" in the business names of both entities. The Commission in the aforesaid case (Lyceum of the Philippines vs. Lyceum of Baguio) citing American jurisprudence on the matter, further opined that faint or trifling semi-distinctions are often the chief subterfuge employed by those who will unlawfully make use of another's corporate name. There is no distinction between taking the entire name of prior corporation and taking so much of it as will mislead into belief that the two companies are the same. (Most Worshipful Prince Hall Grand Lodge vs. Most Worshipful Hiran Grand Lodge, 85 Colo. 17, 237 Pac. 468, Grand Temple and Tabernacle in State of Texas Knights and Daughters of the International Twelve vs. Independent Order of Knights and Daughters of Tabor of America, 48 S.W. 2D 873). Admittedly, petitioner, since its registration on September 24, 1957, has been continuously using the name General Telephone Directory Company. Well-settled is the rule that a corporate name partakes the nature of property right and a corporate name is a necessary element of a corporation's existence. By lawful entry to the business field under a legally adopted name and by prior appropriations and use thereof a corporation acquired right to such name which the law will recognize and protect. (Standard Oil Co. of New Mexico vs. Standard Oil Co. of California, 56 Fed. 937, 977; American Steel Foundries vs. Robertson, 269 U.S. 372; Cincinnati Cooperage Co. vs. Bote, 96 Ky 356; Federal Securities Co. v. Federal Securities Corporation, 129 Or. 375.) Indeed, it has been established that petitioner acquired a prior right to use its corporate name and for more than twenty years of sporting such name, the same has become identified with petitioner. Likewise, respondent has submitted before this Commission an undertaking that it is willing to change its name in the event that another person, firm, or entity has acquired a prior right to the use of the same name or similar to it. Reliance of respondent on the "warning clause" embodied at the back portion of the copy sheets is likewise, untenable. A cursory look at the aforesaid clause embodied therein will show that these stipulations are written in small fine prints which could not in the regular course of business be readily noticed by petitioner's subscribers/advertisers. WHEREFORE, premises considered, the Commission hereby orders the respondent to change its partnership name and adopt another name which is not similar or identical to previously registered names used by other entities by amending its Articles of Partnership in accordance with pertinent laws and filing the same with this Commission within thirty (30) days after this judgment has become final and executory. SO ORDERED. (SGD.) ANTERO F. L. VILLAFLOR, JR. Hearing Officer