SEC En Banc Case No. 08-14-343 Lilli Ann D. Fernando Complainant-Appellee, - versus - Company Registration And Monitoring Department, represented by Director Ferdinand B. Sales, and D'Tooth Doctors Co., Respondent-Appellant.

Securities and Exchange Commission Republic of the Philippines Department of Finance Pasay City,Philippines

LILLI ANN D. FERNANDO ,

Complainant-Appellee,

versus

COMPANY REGISTRATION AND MONITOR- SEC En Banc Case No. 08-14-343

tor Ferdinand B. Sales, and D'TOOTH DOC- ING DEPARTMENT, represented by Direc-

TORS CO.

Respondent-Appellant.

ORDER

For consideration of this Commission is the Appeal of Lilli Ann D. Fernando from the decision of the Company Registration and Monitoring Departmenti denying her re quest for the registration of a corporation with the proposed business name, "THE TOOTH DOCTOR, INC."

Appellant Lilli Ann D. Fernando2 is a Dental Doctor by profession, and her dental clinic is located at the 3rd Floor, Robinson's Galleria, Ortigas Complex, with the business name of "TOOTH DOCTOR, The (As Style)" registered with the Department of Trade and Industry3 on June 5, 1996. Appellant renewed her registration three more times. Her Certificates of Business Name Registration from the DTI show the following periods of registration:

From June 5, 1996 Until June 5, 2001 August 15, 2001 August 15, 2006 August 17, 2006 August 17,2011 October 11,2011 October 12,2016

DOCTOR AND TOOTH DEVICE" with the Intellectual Property Office of the Philippines on July 17, 2008. The IP0 approved the registration of the trademark on January 1, Appellant likewise applied for registration of her trademark for "THE TOOTH

2010, for a period of 10 years or until January 1, 2020.

1 Hereafter, "CRMD." 2 Hereafter, "appellant." 3 Hereafter"DTI.

Page 2 of 7 SEC En Banc Case No. 08-14-343 Decision Lilli Ann Fernando v. CRMD

Appellant claims that sometime in 2014, she made an initial inquiry with the Corporate Filing and Records Division4 of the Commission regarding the availability of the name "THE TOOTH DOCTOR, INC."The CFRD informed her that the name was not available for registration because the SEC's records show an existing registration of "Tooth Doctor, The"with the DTI. Through a letter dated June 27,2014, appellant in formed the SEC (through the Asst. Director of the Corporate Filing and Records Divi- sion) that she was the registered owner of the DTI registered business name, and re- quested the SEC to allow the registration of "The Tooth Doctor, Inc."

The SEc likewise found that there is an existing registration of the name of

the SEC on November 20, 2008. In the partnership papers of "D'Tooth Doctors Co.,"5 the "D'Tooth Doctors Co." belonging to a dental professional partnership, registered with

partners listed are (a) Dr. Glaiza C. Ramos; and (b) Dr. Cyrill A. Tajanlangit.

the CRMD to (a) allow the appellant to incorporate using the name "The Tooth Doctor, Through counsel, appellant submitted a letter dated July 9, 2014 addressed to

Inc.," and (b) that the partnership using the name "D'Tooth Doctors Co." be directed to immediately change its business name.

On July 24, 2014, through a letter of even date, the CRMD informed the appellant that her request was denied, citing Section 18 of the Corporation Code and SEC Memo- randum Circular No. 5, Series of 2008 as basis for the denial. Appellant received a copy of the July 24, 2014 letter on August 4, 2014.

Aggrieved, Appellant filed on August 18, 2014 her Notice of Appeal together with the Memorandum of Appeal.

On August 19, 2014, the Commission En Banc directed the appellees (CRMD, D'Tooth Doctors Co., and its partners) to submit their Reply Memoranda within ten days from receipt of the Order.

In compliance with the Order, the CRMD timely filed its Reply Memorandum on September 8, 2014.

The Commission finds that appellant's proposed name of "The Tooth Doctor" is indeed deceptively or confusingly similar to the already registered partnership name of "D'Tooth Doctors Co."

6 Corporation Code of the Philippines 4 Hereafter, "CFRD." 5 Hereafter, "appellee" or "appellee dental professional partnership."

Lilli Ann Fernando v. CRMD SEC En Banc Case No. 08-14-343 Page 3 of 7 Decision

The issues to be resolved by the Commission are the following:

I Whether the appellant, who has an earlier DTI registration, has the right to the use and register "The Tooth Doctor" as its corporate name de spite the partnership name's registration of "D'Tooth Doctors Co.," with the SEC since 2008;

H Whether the commission should order the partnership of "D'Tooth Doctors Co.," to change its name.

Discussion

Section 18 of the Corporation Code of the Philippines provides

Sec. 18. Corporate name. - No corporate name may be allowed by the Se. curities and Exchange Commission if the proposed name is identical or deceptively or confusingly similar to that of any existing corporation or to any other name already protected by law or is patently deceptive, con. fusing or contrary to existing laws. When a change in the corporate name is approved, the Commission shall issue an amended certificate of incor- poration under the amended name.?

in the prohibition of the law, two requisites must be proven, to wit: As the Supreme Court held in Philips Export B.V. vs. Court of Appeals,8 to fall with

use of such corporate name; and (1) that the complainant corporation acquired a prior right over the

2 the proposed name is either: (a) identical, or (b) deceptively or

contrary to existing law. confusingly similar to that of any existing corporation or to any other name already protected by law; or (c) patently deceptive, confusing or

rate and Partnership Names. Pertinent provisions are presented as follows: Circular No. 21, series of 2013 Omnibus Guidelines and Procedures on the Use of Corpo- To implement the above provision, the Commission issued SEC Memorandum

8 206 SCRA 457, 463 [1992]] 7 Emphasis supplied.

SEC En Banc Case No. 08-14-343 Decision Page 4 of 7 Lilli Ann Fernando v.CRMD

similar to a corporate or partnership name registered with the Commis sion, or with the Department of Trade and Industry, in the case of sole proprietorships; 3.(a) The name shall not be identical, misleading or confusingly

b If the name applied for is similar to that of a registered cor

words to the proposed name to remove the similarity or differentiate it from the registered name; poration or partnership, the applicant shall add one or more distinctive

X X X

ty Office may be used as part of the corporate or partnership name of a party other that its owner if the latter gives its consent to such use. 5. A tradename or trademark registered with the Intellectual Proper-

another sole proprietor, resulting in confusion, difficulty in identifying the corporation and unfair competition, thereby opening the door to frauds and difficulties of admin. wherein the corporation adopts at pleasure the name of another corporation, or that of istration and supervision.9 The Corporation Code's provision on corporate name seeks to avoid a situation

the appellee dental professional partnership's registered name would reveal apparent confusion and similarity. The facts appearing in the case record also present the follow- ing relevant information: A side by side comparison of the appellant's DTI Registered Business name and

Appellant Appellee "Tooth Doctor, The (As Style)" "D'Tooth Doctors Co."

DTI Registered since June 5, 1996 Partnership Name registered with

IP0 Registered Trademark in 2010 No information Dental Services tion of the business name on November 17,2008 the SEC on November 20,2008 Dental Services DOHio endorsement for the registra. No information

9 See generally, Red Line Transit vs. Rural Transit, 30 Phil. 549 Dionco, Director II, informing the SEC Corporate and Partnership Registration Division that the DOH - 10 Bureau of Health Facilities and Services, Department of Health ("DOH -- BHFS") Annex "2" of Appellee CRMD's Memorandum is an endorsement letter dated November 17, 2008 issued by Engr. Herminio G.

SEC En Banc Case No. 08-14-343 Page 5 of 7 Decision Lilli Ann Fernando v. CRMD

The (As Style);" and (b) "D'Tooth Doctors Co.," are indeed misleading and confusingly Without a doubt, the two contending business names, namely (a) "Tooth Doctor,

similar, especially since both businesses are owned by Dental Doctors and engaged in dental services. Further, no distinctive word has been added to the name of the appel- lee's partnership to adequately differentiate its name from that of the appellant's DTI registered trade name.

the business name. The issue to be resolved is who among the contending parties has a prior right to

On this issue, the Commission finds that the appellant has acquired the right to the use of the business name "Tooth Doctor, The (As Style)" as early as June 5, 1996. The appellant's business name, therefore, is entitled to protection by law, and can no longer be appropriated by another individual or entity throughout the duration of its registration.

Thus, when the appellee-dental professional partnership registered its partner ship name of "D'Tooth Doctors Co." on November 20, 2008, the appellant already ac quired a prior right to use of the name "Tooth Doctor, The (As Style)" and was entitled to legal protection against another party making use of a name that is similar, mislead. ing, or confusing as regards appellant's DTI Registered Business Name.

existing DTI Registration on November 20, 2008, when the CRMD approved the regis- CRMD argues that the appellant has the burden of proving that it had a valid and

tration of the appellee dental partnership's name. After a review of appellant's Memo radum of Appeal, the Commission finds that the appellant satisfactorily proved that as early as June 5, 1996, the appellant registered its right to use the name "Tooth Doctor, The (As Style)" continuously until 201611 since all the renewals were done within the three month period from the expiration of each five-year period of registration.

For guidance, the Commission cites Section 15 of SEC Memorandum Circular No 14-2000, pertinent portions of which provide:

In implementing Section 18 of the Corporation Code of the Philippines (BP 68), the following revised guidelines in the approval of corporate and

BHFS interposes no objection to the application for the business name/permit being applied for by the 11 The last DTI Registration in the case record is for the period from October 11, 2011 until October 12, said corporation 2016

Page 6 of 7 Lilli Ann Fernando v. CRMD SEC En Banc Case No. 08-14-343 Decision

partnership names are hereby adopted for the information and guidance of all concerned:

XXX

ing to change their corporate or partnership name in case another person 15. Registrant corporations or partnership shall submit a letter undertak

or firm has acquired a prior right to the use of the said firm name or the same is deceptively or confusingly similar to one already registered un- less this undertaking is already included as one of the provisions of the ar- ticles of incorporation or partnership of the registrant.

Partnership states, to wit: In the case of appellee dental professional partnership, Article IX of its Articles of

Article IX. That the partners undertake to change the name of the

registered name, or contrary to public morals, good customs, or public partnership immediately upon receipt of notice or directive from the Se- curities and Exchange Commission that another partnership, corporation, or person has acquired a prior right to the use of the name or that the name has been declared as misleading, deceptive, confusingly similar to a

policy.

use of the name. Consequently, this Commission rules that the appellee dental profes- sional partnership be directed to change its partnership name immediately upon receipt of the Commission's notice or directive. The appellant has adequately proved that she has acquired a prior right to the

business name of "Tooth Doctor, The (As Style)," she likewise has the right to permit an formalize the appellant's express approval for the applicant corporation to use "The lant is to submit a notarized affidavit with the CRMD. applicant corporation to the use of her business name, and to waive the protection of the law against the use of her business name in favor of the applicant corporation. To Tooth Doctor, Inc.," (which is similar to her DTI Registered Business Name), the appel- Parenthetically, since the appellant has acquired the right to use her registered

sequently, the Company Registration Monitoring Department shall: WHEREFORE, premises considered, the instant appeal is hereby granted. Con-

(A) Direct "D'Tooth Doctors Co.," a professional partnership between (i) Dr. Glaiza C. Ramos; and (ii) Dr. Cyrill A. Tajanlangit, to change

SEC En Banc Case No. 08-14-343 Page 7 of 7 Lilli Ann Fernando v.CRMD Decision

its partnership name immediately upon receipt of the Commis- sion's notice; and

B Upon receipt of a notarized affidavit authorizing the use of her DTI

Registered name, appellant Lilli Ann D. Fernando's applicant cor poration be permitted to use the corporate name "The Tooth Doc. tors, Inc."

Let a copy of this Order be furnished the Corporate Filing and Records Division and the Company Registration and Monitoring Department for proper notation and action.

SO ORDERED Pasay City, Philippines, 16 January 2018

1 C TERESITA J.HERBOSA

Chairperson

U ANTONIETA F.IBE EPHYRO LUIS B. AMATONG

Commissioner Commissioner

BLAS JAMES G.VITERBO Commissioner EMIZIO Commissioner B.AQUINO

*On Official Business