Firestone Tire & Rubber Co., Phils. vs. Firestone Ceramic Co.

[SEC-SICD * CASE NO. 2045. March 24, 1982.] FIRESTONE TIRE & RUBBER CO., PHILS. , petitioner , vs . FIRESTONE CERAMIC CO. , respondent . D E C I S I O N This refers to a petition filed by Firestone Tire and Rubber Co., against Firestone Ceramic, Inc., praying that respondent should delete and/or drop the word "Firestone" from its corporate name and correspondingly, amend its Articles of Incorporation on the ground that the trade name of the latter is identical or confusingly similar to that of petitioner. The petitioner alleged, among others, that respondent's acts of adopting the "firestone" as part of its corporate name is a clear case of infringement or plain usurpation of a trade name and respondent's continued use thereof will indefinitely damage petitioner's business reputation and goodwill. Respondent, in its answer, claimed that although petitioner is the registered owner of the trademark "Firestone", it is not the registered owner of the trade name "Firestone"; that respondent has never used the trademark "firestone" on any of its manufactured products; and that petitioner is estopped in preventing the use by respondent of the word "firestone" in connection with its trade name as the latter has been using this corporate name since 1962 up to the present, a period of nineteen (19) years. By way of special defenses, the respondent averred, inter alia, that petitioner has no cause of action or if there is any, the same has already prescribed. At the initial hearing of the petition on July 20, 1981, the parties agreed to submit the same for decision based on the pleadings and the annexes attached thereto. The parties were thereafter required to submit their memoranda. As adduced from the records presented and submitted, it appears that petitioner, a subsidiary corporation of Firestone Tire and Rubber Company of Akron, Ohio, U.S.A., was registered as a corporation with the Commission on October 16, 1930. Its primary purpose is to buy, sell, or otherwise deal in automotive tires, tubes and accessories, and to do automobile and tire repair works. Likewise, it appears that petitioner is the registered owner of the trademark "firestone" under Renewal Registration No. 1712, dated November 24, 1976 (Annex "A") and Registration No. 12205, dated March 24, 1966 (Annex "A-1", issued by Philippine Patent Office. On the other hand, respondent was registered with the Commission as a corporation on September 21, 1962. It is likewise the claim of respondent that it was duly registered with the Board of Investments (BOI) under the tradename "Firestone Ceramic, Inc.", whose purpose, among other things, is to engage in, conduct and carry on the business of, and deal in tiles, pipes, bricks, tire bricks for casting, runner bricks, fire clay, pottery, china and terra cotta, and ceramic ware of all kinds. The sole and controlling issue to be resolved in the case at hand is whether or not respondent's corporate name is identical or deceptively or confusingly similar to that of petitioner. First of all, it may not be amiss to mention that the word "firestone" connotes or refers to a stone that endures high heat and is used specifically for lining furnaces and kilns used specially of sandstone occurring in the south of England (Webster's 3rd New International Dictionary). As can be gleaned from the aforestated meaning, the word "firestone" is a public and universal word and said word, as a general rule, is incapable of appropriation. However, trademarks which are otherwise unregistrable because they are descriptive or deceptively misdescriptive of the goods upon which they are used may, nevertheless, be accepted for registration if they have become distinctive of said goods, and that proof of substantially exclusive and continuous use of said descriptive or misdescriptive trade marks for five (5) years next preceding the date of filing of the application for their registration may be accepted by the Director of Patents as prima facie evidence that the said trade marks have become distinctive of the goods (Ex-parte Organization Ai Gui, B.C. Serial No. 1417, 45 Off. Gaz. 1954, see G. & C. Merrian & Co. V. Saalfield, 1988 F. 369, 373, as cited in Ang v. Teodoro, Off. Gaz. for July, 1943, p. 673). The fact remains, on the other hand, that the businesses in which the parties are engaged are not the same. As lifted from the records of the case, petitioner is engaged in the buying and selling, or otherwise dealing in automobile tires, tubes and accessories, and to do automobile and tire repair work, while respondent is engaged in the business of manufacturing of, and dealing in tiles, pipes, bricks, fire bricks for coating, runner bricks, fire clay, pottery, earthenware, china and terra cotta, and ceramic ware of all kinds. Hence, there is no likelihood of confusion or deception in the minds of the public to the damage of petitioner's business. Moreover, respondent does not pretend to have engaged in the business or trade similar to that of petitioner or is presently engaged or threatens to do so. The Commissioner had on one occasion opined that "it does not see the similarity between House of Insurance, Inc. and House of Investment, 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 careful scrutiny of the identity of the corporation with whom they deal." (Securities and Exchange Commission Folio, 1977 Edition, p. 17). In another case, the Commission citing 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, pp. 543, 544) held 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 (Conrado Sta. Romana vs. Lakeview Industrial Corporation, SEC Case No. 1341, October 24, * 1980). cdll WHEREFORE, the above petition should be, as it is hereby DISMISSED. In order, however, to preclude any possibility of confusion in the event respondent decides to engage in business under its secondary purpose which include articles being carried now by petitioner, said respondent is hereby directed to delete the words; "rubber products, rubber tires and its accessories", in its Secondary Purpose, by amending its Amended Articles of Incorporation within thirty (30) days from the date this decision become final and executory. (SGD.) ELIGIO B. ALMOJERA Hearing Officer * Copied verbatim from documents obtained directly from the Securities and Exchange Commission .