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

FACTS

H.E. Heacock Company (Heacock), a domestic corporation, registered the trademark “Rogers” in the Philippines in June 1918 for use on flatware and silverware. It built a substantial business under this mark over many years. In 1925, American Trading Company, acting as the Philippine agent for Wm. A. Rogers, Ltd. (a U.S. manufacturer), began importing and selling flatware stamped with “Wm. A. Rogers” and related marks. Heacock sued for trademark infringement and unfair competition, arguing that the defendant’s use of “Rogers” deceived the public and damaged its business. The defendants countered that “Rogers” is a surname, that Heacock had no exclusive right to it, and that their marks were validly registered in the U.S. and entitled to protection in the Philippines under Act No. 2460 (implementing U.S. federal trademark laws).

ISSUE

Whether Heacock’s prior registration and use of the trademark “Rogers” in the Philippines under Philippine law ( Act No. 666 and amendments) prevails over the subsequent importation and sale of goods bearing the “Wm. A. Rogers” mark, which were registered in the United States.

RULING

Yes. The Supreme Court affirmed the lower court’s judgment in favor of Heacock. The Court held that Heacock’s registration of “Rogers” in 1918 was valid and conferred protectable rights under Philippine trademark law ( Act No. 666 ). The fact that “Rogers” is a surname did not invalidate Heacock’s registration, as it had legally acquired the right to use the word as a trademark and had built a business around it for years before the defendants entered the Philippine market. The defendants could not override Heacock’s locally established rights by invoking U.S. trademark registrations. The Court emphasized the importance of protecting a business built on a registered trademark in the Philippines against later entrants using a similar mark, which would cause confusion and constitute unfair competition. The injunctions against the defendants were upheld.