LYCEUM OF THE PHILIPPINES vs. CA- Doctrine of Secondary Meaning

Doctrine of secondary meaning can be extended to corporation name but must comply with the requirement that it has been used so long and so exclusively by one and that the said name has come to mean that it is referred to as that corporation.

FACTS:

Petitioner is an educational institution duly registered with the SEC since Sept 1950. Before the case at bar, Petitioner commenced a proceeding against Lyceum of Baguio with the SEC to require it to change its corporate name and adopt a new one not similar or identical to the Petitioner. SEC granted noting that there was substantial because of the dominant word “Lyceum”. CA and SC affirmed. Petitioner filed similar complaint against other schools and obtain a favorable decision from the hearing officer. On appeal, SEC En banc reversed the decision and held that the word Lyceum have not become so identified with the petitioner and that the use thereof will cause confusion to the general public.

ISSUE:

1. Whether or not the corporate names of the private respondents are identical with or deceptively similar to that of the petitioner.

2. Whether or not the use by the petitioner of Lyceum in its corporate name has been for such length of time and with such exclusivity as to have become associated or identified with the petitioner institution in the mind of the general public (Doctrine of Secondary meaning).

RULING: NO to both.

True enough, the corporate names of the parties carry the word “Lyceum” but confusion and deception are precluded by the appending of geographic names. Lyceum generally refers to a school or an institution of learning and it is natural to use this word to designate an entity which is organized and operating as an educational institution.

Doctrine of Secondary meaning is a word of phrase originally incapable of exclusive appropriation, might nevertheless have been used so long and so exclusively by one producer with reference to his article that, in trade and to that branch of the purchasing public, the word or phrase has come to mean that the article was his product.

Lyceum of the Philippines has not gained exclusive use of “Lyceum” by long passage of time. The number alone of the private respondents suggests strongly that the use of Lyceum has not been attended with the exclusivity essential for the applicability of the doctrine. It may be noted that one of the respondents – Western Pangasinan Lyceum used such term 17 years before the petitioner registered with the SEC. Moreover, there may be other schools using the name but not registered with the SEC because they have not adopted the corporate form of organization.