G.R. No. L-31851 & G.R. No. L-31852, November 21, 1930
H. E. HEACOCK CO. vs. AMERICAN TRADING COMPANY; and WM. A. ROGERS, LTD., and AMERICAN TRADING COMPANY vs. H. E. HEACOCK CO.

FACTS

1. H.E. Heacock Company (Heacock), a domestic corporation, registered the word “Rogers” as a trademark for flatware in the Philippine Bureau of Commerce and Industry in June 1918. It has used this mark extensively for over a decade, building a favorable reputation.
2. American Trading Company (ATC), also a domestic corporation, acting as the local agent for Wm. A. Rogers, Ltd. (Rogers Ltd.), a New York manufacturer, began importing and selling flatware stamped with “Wm. A. Rogers” and other variations (e.g., “1881 R ROGERS R”) around 1925.
3. Heacock sued ATC for trademark infringement and unfair competition ( G.R. No. 31851 ), alleging that ATC’s use of the “Rogers” name on similarly designed flatware was intended to deceive the public and damage Heacock’s business.
4. In a related case ( G.R. No. 31852 ), Rogers Ltd. and ATC sued Heacock, arguing that the surname “Rogers” could not be exclusively appropriated by Heacock and that their trademarks, duly registered in the United States, were entitled to protection in the Philippines under Act No. 2460 (which implemented U.S. federal trademark laws in the Philippines).
5. The trial court ruled in favor of Heacock in both cases.

ISSUE

Whether the prior registration and use of the trademark “Rogers” by H.E. Heacock Company in the Philippines under Philippine law ( Act No. 666 and amendments) prevails over the subsequent importation and sale of goods by the American Trading Company bearing the “Wm. A. Rogers” trademark, which was registered in the United States.

RULING

YES. The Philippine registration and prior use by Heacock prevail.
1. The Supreme Court affirmed the trial court’s judgments, upholding Heacock’s exclusive right to use the “Rogers” trademark in the Philippines for its line of goods.
2. The Court gave little weight to the argument that “Rogers” is a surname. When Heacock registered the mark in 1918, it had as much legal right to use the word as Rogers Ltd. More importantly, Heacock had built its business reputation on that mark in the Philippine market for seven years before ATC entered the field.
3. The Court rejected the appellants’ reliance on U.S. trademark registrations and Act No. 2460. It emphasized that the Philippine Legislature, through Act No. 666 and its amendments, established a specific system for defining, registering, and protecting trademarks and trade names within the Philippines, including remedies against unfair competition.
4. The Court found that allowing a foreign entity to override a long-established local trademark registration based on a foreign registration would undermine the value and security of the Philippine trademark system. It would jeopardize businesses that had legitimately built goodwill under a locally registered mark.
5. Consequently, Heacock’s registration of “Rogers” in 1918 was valid and entitled to protection under Philippine law. The appellants were enjoined from infringing upon it.