Lyceum of the Philippines v.

Court of Appeals
G.R. 101897| March 5, 1993 | Feliciano, J. | Rule 45 | Digest by Alex
V. The Corporation Code - E. Incorporation and Organization- 3. Limitation on the Use of Corporate Name

PETITIONER: Lyceum of the Philippines

RESPONDENT: Court of Appeals, Lyceum Of Aparri, Lyceum Of Cabagan, Lyceum Of Camalaniugan, Inc., Lyceum Of Lallo,
Inc., Lyceum Of Tuao, Inc., Buhi Lyceum, Central Lyceum Of Catanduanes, Lyceum Of Southern Philippines, Lyceum Of Eastern
Mindanao, Inc. And Western Pangasinan Lyceum, Inc.
SUMMARY: Petitioner Lyceum of the Philippines filed a number of cases against private respondents, which were all educational
institutions with the word "Lyceum" in their corporate name. Pet. Lyceum asserts that under Sec. 18 of the Corp. Code, the names
of the private respondents are identical with, deceptively, and confusingly similar with its own name. It also raised the argument of
the doctrine of secondary meaning, which states that the substantial and exclusive use of a name/phrase over a long period of time
gives a name its distinctiveness. The SEC En Banc, CA, and SC all held that Pet. Lyceum is NOT entitled to a legally enforceable
and exclusive right to use the word "Lyceum" in its corporate name.
DOCTRINES:
1. One must evaluate corporate names in their entirety and when the name of petitioner is juxtaposed with the names of private
respondents, they are not reasonably regarded as "identical" or "confusingly or deceptively similar" with each other.
2. Elements of the doctrine of secondary meaning: (1) Evidence proves that the business has continued for so long a time; (2)
Business has become of consequence and acquired a good will of considerable value; (3) The articles and produce of the business
have acquired a well-known reputation; (4) Confusion will result by use of the disputed name.
3. Sec. 18, Corporation Code: No corporate name may be allowed by the SEC if the proposed name is identical with or deceptively
or confusingly similar to that of any existing corporation or to any other name already protected by law or is patently decptive,
confusing, or contrary to existing laws. xx

FACTS: other schools as confusing about the identity of the

1. Petitioner Lyceum of the Philippines is an educational
institution that was registered with SEC on Sept. 21, 1950. It
has used the name "Lyceum of the Philippines, Inc." since
then.
2. Feb. 24, 1984 - Pet. Lyceum instituted SEC proceedings to
compel private respondents, which are also educational
institutions, to delete "Lyceum" from their corporate names.
Pet. Lyceum also wanted to permanently enjoin them from
using "Lyceum".
3. SEC Order of Associate Commissioner Sulit held that the
corporate name of Pet. Lyceum and that of Lyceum Baguio
were substantially identical because of the presence of a
dominant "word" ("Lyceum") in its name. Lyceum Baguio
was ordered to change its name to another name "not similar
or identical with" pet. Lyceum.
 Lyceum Baguio assailed the SEC Order before the
SC. In a Minute Resolution, the SC denied the
petition of Lyceum Baguio for lack of merit.
 Pet. Lyceum used this Resolution to advise all the
other educational institutions with the word
"Lyceum" to discontinue their use of the name.
4. Pet. Lyceum instituted another SEC proceeding to enforce
its proprietary right to the word "Lyceum" again.
 SEC Hearing Officer ruled in favor of Pet. Lyceum,
relying upon the SEC ruling re: Lyceum Baguio.
 Held that "Lyceum" was capable of appropriation and
that Pet. Lyceum acquired an enforceable exclusive
right to the use of the word.
 Private respondents appealed to the SEC En Banc.
5. SEC En Banc reversed the decision of the SEC Hearing
Officer.
 "Lyceum" is not considered to have become so
identified with Pet. Lyceum to render the use by
schools to the general public.
 Held that the attaching of geographical names (ex.
"Baguio") served to sufficiently distinguish the
schools from each other.
 Pet. Lyceum then appealed to the CA.
6. CA affirmed the SEC En Banc's decision. Hence this case
by Pet. Lyceum before the SC.
ISSUE & HELD: WON the use of the word "Lyceum" by
petitioner 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 (or at least that portion of the general public
which has to do with schools)? NO.
RULING: Petition for review DENIED for lack of merit. CA
decision of June 28, 1991 AFFIRMED.
RATIO:
1. Articles of Incorporation must set out the name of the
corporation.
 Sec. 18, Corporation Code: No corporate name may
be allowed by the SEC if the proposed name is
identical with or deceptively or confusingly
similar to that of any existing corporation or to
any other name already protected by law or is
patently decptive, confusing, or contrary to
existing laws. When a change in the corporate name
is approved, the Commission shall issue an amended
certificate of incorporation under the amended name.
 Policy behind Sec. 18 is to avoid fraud upon the
public, which would have to deal with the entity
concerned, the evasion of legal obligations and rules,
 and the reduction of difficulties of administration and tconfusion will surely arise if the same word were to be used
supervision over corporations. by other educational institutions.
2. IN THIS CASE: SC did not consider that the corporate 6. SC agrees with CA. The number alone of the private
names of the private respondents are "identical with or respondents strongly suggests that Pet. Lyceum's use of the
deceptively or confusingly similar" to that of petitioner word "Lyceum" has not been attended with the exclusivity
Lyceum, since there are geographic names attached to them. essential for applicability of the doctrine of secondary
Ergo, "Lyceum of Aparri" cannot be mistaken for "Lyceum of meaning.
the Philippines" or "Lyceum of Camalaniugan".  It may be noted also that at least one of the private
3. "Lyceum" is the Latin word for the Greek lykeion. In time, respondents, i.e., the Western Pangasinan Lyceum, Inc.,
the word "Lyceum" became associated with schools and other used the term "Lyceum" seventeen (17) years before the
institutions providing public lectures, concerts, and public petitioner registered its own corporate name with the SEC
discussions. Today, the word "Lyceum" generally refers to a and began using the word "Lyceum." It follows that if any
school or an institution of learning. "Lyceum" is as generic in institution had acquired an exclusive right to the word
character as the word "university". Since "Lyceum" or "Liceo" "Lyceum," that institution would have been the Western
denotes a school or institution of learning, it is not unnatural to Pangasinan Lyceum, Inc. rather than Pet. Lyceum.
use this word to designate an entity, which is organized and 7. SC holds that Pet. Lyceum is not entitled to a legally
operates as an educational institution. enforceable exclusive right to use the word "Lyceum" in its
4. Pet. Lyceum argues that the word "Lyceum" has acquired a corporate name and that other institutions may use "Lyceum"
secondary meaning in relation to it. Although it was originally as part of their corporate names. To determine whether a given
a generic word, it has become appropriable by Pet. Lyceum to corporate name is "identical" or "confusingly or deceptively
the exclusion of other institutions. similar" with another entity's corporate name, it is not enough
 What is the "doctrine of secondary meaning"? It to ascertain the presence of "Lyceum" or "Liceo" in both
was originally used in trademark law, but the names.
application has been extended to the use of corporate 8. One must evaluate corporate names in their entirety and
names, since the right to use a corporate name to the when the name of petitioner is juxtaposed with the names of
exclusion of others is based upon the same principle private respondents, they are not reasonably regarded as
which underlies the right to use a particular "identical" or "confusingly or deceptively similar" with each
trademark or trade name. other.
 Ana Ang v. Toribio Teodoro: Under the doctrine of
secondary meaning, a word or phrase originally
incapable of exclusive appropriation with reference
to an article in the market, because geographical or
otherwise descriptive might nevertheless have been
used so long and so exclusively by one producer with
reference to this article that, in that trade and to that
group of the purchasing public, the word or phrase
has come to mean that the article was his produce.
 Ang Si Heng v. Wellington Dept. Store: This
circumstance has been referred to as the
distinctiveness into which the name or phrase has
evolved through the substantial and exclusive use of
the same for a considerable period of time.
o Elements of the doctrine of secondary
meaning:
 Evidence proves that the business
has continued for so long a time
 Business has become of
consequence and acquired a good
will of considerable value
 The articles and produce of the
business have acquired a well-
known reputation
 Confusion will result by use of the
disputed name
5. SC said that the doctrine of secondary meaning DOES NOT
apply in the case of Pet. Lyceum, because it failed to satisfy
the elements stated above. While Pet. Lyceum may have
proven that it had been using the word "Lyceum" for a long
period of time, this does not mean that the word has acquired
secondary meaning in its favor. Pet. Lyceum failed to prove
that it had been using the same word all by itself to the
exclusion of others. There was also NO evidence to prove that