G.R. No. L-4392
PATRICIO UBEDA, plaintiff-appellant, vs. AGAPITO ZIALCITA, defendant-appellee.
February 17, 1909

FACTS:
Patricio Ubeda, owner of the registered trade-mark “Ginebra Tres Campanas,” filed a complaint against Agapito Zialcita for trademark infringement. Ubeda alleged that Zialcita imitated his trade-mark by selling gin with a similar label, “Ginebra de Dos Campanas,” which greatly resembled his own, differing only in the number of bells and the name in the center. Ubeda sought an accounting of Zialcita’s sales (alleging P10,000 profit), indemnity for lost sales, and a permanent injunction against Zialcita’s use of the infringing mark.

Zialcita denied the similarity and raised special defenses:
1. No similarity between the marks.
2. Ubeda’s “Ginebra Tres Campanas” was itself an imitation of an older, previously registered mark, “Ginebra de la Campana,” belonging to Van Den Bergh & Co., registered long before 1880.
3. Ubeda was using a modified version of his registered mark to defraud and deceive the public. The Court of First Instance (CFI) found that Ubeda’s registered title for his mark specified gin imported from “Amberes” (Antwerp), but he was selling gin manufactured in “Manila” under a label that presented it as the imported product.

The Court of First Instance of Manila absolved Zialcita. Ubeda appealed, arguing that the Van Den Bergh & Co. mark had lapsed, and therefore, he was legitimately using his “Tres Campanas” mark, and that evidence regarding Van Den Bergh & Co. was irrelevant (res inter alios acta).

ISSUE:
Can Patricio Ubeda maintain an action for trademark infringement against Agapito Zialcita, considering that Ubeda himself used his trademark to deceive the public and that his mark was an imitation of a prior, established trademark?

RULING:
The Supreme Court AFFIRMED the judgment of the Court of First Instance, dismissing Patricio Ubeda’s complaint. The Court held that Ubeda lacked a right of action for trademark infringement for the following reasons:

1. Deception of the Public by the Plaintiff: The Court found that Ubeda himself was deceiving the public. While his registered “Ginebra Tres Campanas” mark pertained to gin imported from “Amberes” (Antwerp), he was using a label indicating “Manila” for gin manufactured locally, thereby pretending his domestic product was the more expensive imported one. Under Section 9 of the relevant Act, no action for trademark violation can be maintained if the complaining party has used the trademark for the purpose of deceiving the public with respect to the character of the merchandise.
2. Plaintiff’s Mark as an Imitation: The Court determined that Ubeda’s “Ginebra Tres Campanas” mark was itself an imitation and a variation of the older, established mark “Ginebra de la Campana” of Van Den Bergh & Co. The Court reasoned that if Zialcita’s “Dos Campanas” was an illegal imitation of Ubeda’s, then Ubeda’s “Tres Campanas” was similarly an illegitimate imitation of the earlier “La Campana” mark. The lapse of Van Den Bergh & Co.’s registration did not legitimize Ubeda’s use, as Section 4 protects established marks against deceitful imitation even without registration.

Therefore, Ubeda, being guilty of identical usurpation and deceptive practices in the use of his own trademark, could not claim injury or maintain an action against Zialcita. The evidence regarding Van Den Bergh & Co.’s mark was considered a legitimate defense, not res inter alios acta, as it directly impugned the plaintiff’s right of action.