Trademark Notes and Cases

8/13/2019 Trademark Notes and Cases

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INTELLECTUAL PROPERTY LAW

The Law on Trademarks, Service Marks and Trade Names

I. Definitions; Principles

• Mark – is any visible sign capable of distinguishing the goods (trademark) or services (service mark) o

an enterprise and shall include a stamped or marked container of goods. (Sec. 121.1, IPC)

electa and intel sound marks !"# recogni$ed here.%amiseta dili p&edi but for purposes of registration lang.If used for goods – markIf used for service – service mark.'pplefanciful

• Mark could be a &ord mark (the use of the name of a person or any fanciful or arbitrary &ord)

composite mark (consisting of a combination of a &ord or letter and a device) device mark (&hich maybe a eome!rica" figure a styli$ed rendering of the alphabet or a re#resen!a!ion of any ob*ect

+.g.cocacola).

• Marks may be creatively designed or coined.

• Co""ec!ive mark means any visible sign designated as such in the application for registration and

capable of distinguishing the origin or any other common characteristic including the ,uality of goodsor services of di$$eren! en!er#rises &hich use the sign under the control of the registered o&ner of the

collective mark. (Sec.121.2,IPC) indicate that a good is produced form a certain group of perone.g Pampangga-s meat processing assoc. P ''/ assoc of saranggani products

/+0#I1I/'#I"! M'0% – subclassification of collective mark 2'3'3e.g. /+ (cert electronic) I" certified PDI/ insured

• #rade name is the name or designation identifying or distinguishing an enterprise. (Sec. 121.333, IPC)

' trade name refers to the business and its good&ill; a trademark refers to the goods. (Canon

Kabushiki Kaisha vs. CA, G.R. No. 120900, u!" 20, 2000)

• "ld definition of Marks ' trademark has been generally defined as 4any &ord name symbol or device

adopted and used by a manufacturer or merchant to identify his goods and distinguish them from thosemanufactured and sold by others. (Socie#e $es P%o$ui#s vs. CA, G.R. No. 112012, A&%i! ', 2)001

• 1unctions of a trademark (5) they indicate origin or o&nership of the articles to &hich they are

attached; (6) they guarantee that those articles come up to a certain standard of ,uality; and (7) theyadvertise the articles they symboli$e. (i%&u%i vs. CA, G.R. No. 11'0*, Nov. 19, 1999).

• #he rights in a mark shall be ac,uired through registration made validly in accordance &ith the

provisions of the la&. (Sec. 122, IPC)

0+I#0'#I"!

• #he right to register trademarks tradenames and service marks by any person corporation

partnership or association domiciled in the Philippines or in any foreign country is based on o&nershipand the burden is upon the applicant to prove such o&nership. (a%ve+ Coe%cia! Co., Inc. v. Pe#%a-a&ia / Co., e# a!., 129, 4ec. 22, 192) 8here the applicant &as not the o&ner of the trademarkbeing applied for he had no right to apply for registration of the same. #he right to register trademarkstradenames and service marks is based on o&nership. (5&e%a#o%s Inc. vs. 4i%ec#o% o6 Pa#ens#, 1901, 5c#. 29, 19)

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• 2o&ever registration is not a mode of ac,uiring o&nership. 8hen the applicant is not the o&ner of the

trademark being applied for he has no right to apply for registration of the same. 0egistration merelycreates a &%ia 6acie presumption of the validity of the registration of the registrant9s o&nership of thetrademark and of the e:clusive right to the use thereof. uch presumption *ust like the presumptiveregularity in the performance of official functions is rebuttable and must give &ay to evidence to thecontrary. (Shan7%i!a In#8! -o#e! vs. 4GC, G.R. No. 1993*, a%ch 31, 200) uch that a certificate oregistration of a mark shall be prima facie evidence of the validity of the registration the registrant9so&nership of the mark and of the registrant9s e:clusive right to use the same in connection &ith thegoods or services and those that are related thereto specified in the certificate. (Sec. 13*, IPC)

-5 IS :RA4;ARK AC<=IR;4. R;A >ASIS :-;N IS AC:=A =S;. R;GIS:RA:I5NI4 =S: ?5RAI:@, 5N@ AN A??IRA:I5N 5?RIG-: AR;A4@ IN ;IS:;NC;.

AC:=A =S; A45P:I5N

• "&nership of a mark or trade name may be ac,uired not necessarily by registration but by adoption

and use in trade or commerce. 's bet&een actual use of a mark &ithout registration and registration othe mark &ithout actual use thereof the former prevails over the latter. 1or a rule &idely accepted andfirmly entrenched because it has come do&n through the years is that actual use in commerce orbusiness is a prere,uisite to the ac,uisition of the right of o&nership. (;e%a!$ Ga%en#s 67. Co%&v. Cou%# o6 A&&ea!s, G.R. No. 10009*, 4ecebe% 29, 199, 21 SCRA 00B S#e%!in7 P%o$uc#sIn#e%na#iona!, Inc. v. ?a%ben6ab%iken >a"e% Ak#ien7ese!!scha6#, G.R. No. 1990, A&%i! 30, 199, 2SCRA 121')

-o #o &%ove use o6 a%k.Conve%se caseS#e%!in7 P%o$uc#s

A45P:I5N N5:D :5 =S; 'doption lang &ithout commercial use !"# use.

0+I#0'#I"!"8!+02IP'/#'3 +!+8 3'8. (does not re,uire proof of actual prior use as a prere, to reg. ) +ven if you have not used yourmark first you can register. 56<.6.8hy= >ecause of the firsttofile system56<.6. #he applicant or the registrant shall file a declaration of actual use of the mark &ith evidence to thateffect as prescribed by the 0egulations &ithin three (7) years from the filing date of the application. "ther&isethe application shall be refused or the mark shall be removed from the 0egister by the Director.

Sec!ion %&'( Nonuse o6 a a%k hen ;+cuse$ . –

5?6.5. !onuse of a mark may be e:cused if caused by circumstances arising independently of the &ill of thetrademark o&ner. 3ack of funds shall not e:cuse nonuse of a mark.

e.g government regulation – e:cuse. 'nd &ould not deprive the app;icant of registration.e.g. melamin ban f milk. #rademark o&ners cannot use his trademark so e:cuse fro nonuse.

8ar – no commercial activity

5?6.6. #he use of the mark in a form different from the form in &hich it is registered &hich does not alter itsdistinctive character shall not be ground for cancellation or removal of the mark and shall not diminish theprotection granted to the mark. %atung magusab6: ang mark.

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5?6.7. #he use of a mark in connection &ith one or more of the goods or services belonging to the class inrespect of &hich the mark is registered shall prevent its cancellation or removal in respect of all other goods orservices of the same class.03+ <5@ "1 #0'D+M'0% 03+.!iche classification.

0+I#0'>I3I#A+! 03+B all sub*ect is registrable.5?6.<. #he use of a mark by a company related &ith the registrant or applicant shall inure to the latter9s benefit

and such use shall not affect the validity of such mark or of its registrationB Provided #hat such mark is notused in such manner as to deceive the public. If use of a mark by a person is controlled by the registrant orapplicant &ith respect to the nature and ,uality of the goods or services such use shall inure to the benefit othe registrant or applicant. (n)e.g an applicant is a subsidiary

Sec!ion %')( Re7is#%abi!i#" . 567.5. ' mark cannot be registered if itB #2++ '0+ !"# 3+I>3+ 1"0

0+I#0'#I"! ># #2+ 3'8 D"+!-# 0"2I>I# I# +(a) /onsists of immoral deceptive or scandalous matter or matter &hich may disparage or falselysuggest a connection &ith persons living or dead institutions beliefs or national symbols or bringthem into contempt or disrepute;(b) /onsists of the flag or coat of arms or other insignia of the Philippines or any of its political

subdivisions or of any foreign nation or any simulation thereof;(c) /onsists of a name portrait or signature identifying a particular living individual e:cept by his &rittenconsent or the name signature or portrait of a deceased President of the Philippines during the life ofhis &ido& if any e:cept by &ritten consent of the &ido&;(d) Is identical &ith a registered mark belonging to a different proprietor or a mark &ith an earlier filingor priority date in respect ofB

(i) #he same goods or services or(ii) /losely related goods or services or(iii) If it nearly resembles such a mark as to be likely to deceive or cause confusion;

!"# ID+!#I/'3.(refer to

/"!1I!3A3 IMI3'0 M'0%(e) Is identical &ith or confusingly similar to or constitutes a translation of a mark &hich is consideredby the competent authority of the Philippines to be &ellkno&n internationally and in the Philippines

&hether or not it is registered here as being already the mark of a person other than the applicant forregistration and used for identical or similar goods or servicesB Provided #hat in determining &hether amark is &ellkno&n account shall be taken of the kno&ledge of the relevant sector of the public ratherthan of the public at large including kno&ledge in the Philippines &hich has been obtained as a resultof the promotion of the mark;

(f) Is identical &ith or confusingly similar to or constitutes a translation of a mark considered &ellkno&n in accordance &ith the preceding paragraph &hich is registered in the Philippines &ith respectto goods or services &hich are not similar to those &ith respect to &hich registration is applied forB

Provided #hat use of the mark in relation to those goods or services &ould indicate a connectionbet&een those goods or services and the o&ner of the registered markB Provided further #hat theinterests of the o&ner of the registered mark are likely to be damaged by such use;

(g) Is likely to mislead the public particularly as to the nature ,uality characteristics or geographicaorigin of the goods or services;(h) /onsists e:clusively of signs that are generic for the goods or services that they seek to identify;+!+0I/ M'0% '0+ !0+I#0'>3+(i) /onsists e:clusively of signs or of indications that have become customary or usual to designate thegoods or services in everyday language or in bona fide and established trade practice;

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1"0M+03A DI#I!/#IC+(*) /onsists e:clusively of signs or of indications that may serve in trade to designate the kind ,uality,uantity intended purpose value geographical origin time or production of the goods or rendering ofthe services or other characteristics of the goods or services;D+/0IP#IC+ M'0%(k) /onsists of shapes that may be necessitated by technical factors or by the nature of the goodsthemselves or factors that affect their intrinsic value;(l) /onsists of color alone unless defined by a given form; or(m) Is contrary to public order or morality.

567.6. 's regards signs or devices mentioned in paragraphs (*) (k) and (l) nothing shall prevent theregistration of any such sign or device &hich has become distinctive in relation to the goods for &hichregistration is re,uested as a result of the use that have been made of it in commerce in the Philippines. #he"ffice may accept as prima facie evidence that the mark has become distinctive as used in connection &iththe applicant9s goods or services in commerce proof of substantially e:clusive and continuous use thereof bythe applicant in commerce in the Philippines for five (?) years before the date on &hich the claim ofdistinctiveness is made.

• D"/#0I!+ "1 +/"!D'0A M+'!I!

Doctrine of econdary meaning 's regards signs or devices mentioned in paragraphs (*) (k) and (l)of ec. 567.5 nothing shall prevent the registration of any such sign or device &hich has become

distinctive in relation to the goods for &hich registration is re,uested as a result of the use that havebeen made of it in commerce in the Philippines. (Sec. 123.2, IPC) #he doctrine of secondary meaning &as elaborated in the follo&ing termsB 4 . . . a &ord or phrase originally incapable of e:clusiveappropriation &ith reference to an article on the market because geographically or other&isedescriptive might nevertheless have been used so long and so e:clusively by one producer &ithreference to his article that in that trade and to that branch of the purchasing public the &ord or phrasehas come to mean that the article &as his product.4 (Phi!. Nu# In$us#%" vs. S#an$a%$, 230, u!" 31,19)

#2 +C+! I1 %3 /'!!"# >+ 0+I#+0+D !#' I# >+/"M+ 0+I#0'>3+ >+/'+ "13"! '+.

• #hus even if 4'ng #ibay4 therefore &ere not capable of e:clusive appropriation as a trademark the

application of the doctrine of secondary meaning could nevertheless be fully sustained because in anyevent by respondent9s long and e:clusive use of said phrase &ith reference to his products and hisbusiness it has ac,uired a proprietary connotation. #his doctrine is to the effect that a &ord or phraseoriginally incapable of e:clusive appropriation &ith reference to an article on the market becausegeographically or other&ise descriptive might nevertheless have been used so long and so e:clusivelyby one producer &ith reference to his article that in that trade and to that branch of the purchasingpublic the &ord or phrase has come to mean that the article &as his product. (An7 vs. :eo$o%o, 'Phi! 0 E19'2F). 3+'DI! /'+ 0+'DE)

1'/#B mark is ang tibay considered as descriptive da& but a point of phrase &hich could properly be FFFFFFFFFF a fanciful &ord.

cB assuming that it-s a descriptive mark ang tibay has been closely associated &ith this good thatconsumers has .FFFFFF that it has ac,uired a secondary meaning.

Primary meaningB durable

econdary meaningB

Mark has become distinctive

must prve that product is soooo popular.

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Minimum of ? years has been sufficient to prove that it has been used by the trademark use to ac,uiresecondary meaning.

• 'lthough the &ord 4+3+/#'4 may be an ordinary or common &ord in the sense that it may be used or

employed by any one in promoting his business or enterprise once adopted or coined in connection &ith one9s business as an emblem sign or device to characteri$e its products or as a badge orauthenticity it may ac,uire a secondary meaning as to be e:clusively associated &ith its products andbusiness. In this sense its use by another may lead to confusion in trade and cause damage to itsbusiness. (A%ce Sons an$ Co. vs. Se!ec#s >iscui#s, 1 SCRA 23 E191F)

?AC:S &%io% #o ii, se!ec#a has a!%ea$" been use$ associa#e$ i#h $ai%" &%o$uc#s.

-e%e, se!ec# biscui#s use$ #he nae in #hei% business. :he o%i7ina! se!ec#a a!%ea$" as ve%" &o&u!a%in vne#u%es o6 ice c%ea, &as#%ie, cakes.

:he" a%7ue #ha# se!ec#a is $esc%i&#ive. >=: SC sai$ #ha# assuin7 #ha# i# is, i# has a!%ea$" acHui%e$a se%con$a%" eanin7 use$ b" a%ce an$ sons

-5 IS :-IS R;;AN: :5 R;GIS:RA:I5N

;+ce&#ion #o %eHui%een#s o6 %e7is#%a#ion. A e+ce&# Jk! CANN5: be %e7is#e%e$.

• Doctrine of econdary Meaning applicable to trade names #he doctrine of secondary meaningoriginated in the field of trademark la&. Its application has ho&ever been e:tended to corporatenames sine the right to use a corporate name to the e:clusion of others is based upon the sameprinciple &hich underlies the right to use a particular trademark or tradename. 2o&ever &hile theappellant may have proved that it had been using the &ord 93yceum9 for a long period of time this facalone did not amount to mean that the said &ord had ac,uired secondary meaning in its favor becausethe appellant failed to prove that it had been using the same &ord all by itself to the e:clusion of others("ceu o6 #he Phi!i&&ines vs. Cou%# o6 A&&ea!s, G.R. 101*9 a%ch , 1993)

567.7. #he nature of the goods to &hich the mark is applied &ill not constitute an obstacle to registration. (ec< 0.'. !o. 5@@a)

+ is a re,uirement for registration.

• #hus the right to register trademark is based on o&nership and a mere distributor of a product bearing

a trademark even if permitted to use said trademark has no right to and cannot register the saidtrademark. ( Gab%ie! vs. Pe%e, G.R. No. 2'0, an. 31, 19')

oap &omdersoap.abriel originally created the soap but entered partnership &ith pere$ because of insufficientfunds. Pere$ did not rene& but continued distributing.c said pere$ has no right bbecause she-s not the o&ner only distributor.

• #he term o&ner does not include the importer of the goods bearing the trademark trade name service

mark or other mark of o&nership unless such importer is actually the o&ner thereof in the country from &hich the goods are imported. ' local importer ho&ever may make application for the registration of aforeign trademark trade name or service mark if he is duly authori$ed by the actual o&ner of the nameor other mark of o&nership. ( =nno vs. Gene%a! i!!in7, G.R. No. 2*', ?eb. 2*, 19*3)

?ac#s flour &it=nno as #he e+c!usive $is#%ibu#o% o6 ona#ana. >ut unno e:ecuted a deedd of assignmento general milling &ith the trademark. eneral milloing registered. pon reg unno oppsedclaiming prior right.use i!! no# es# one%shi&

SC 7ene%a! i!!in7 has #he %i7h# ove% #he a%k. Re7. %eHui%e$ one%shi&.

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• #rademark vs. tradename – Marks are protected upon registration &hile trade name may be protected

even &ithout registration. (Sec. 1, IPC) #hus any subse,uent use of the trade name by a thirdparty &hether as a trade name or a mark or collective mark or any such use of a similar trade name ormark likely to mislead the public shall be deemed unla&ful. (Sec. 1.2, IPC)

• It is a property right #he o&nership of a trademark or tradename is a property right &hich the o&ner is

entitled to protect 4since there is damage to him from confusion or reputation or good&ill in the mind othe public as &ell as from confusion of goods. #he modern trend is to give emphasis to the unfairness

of the acts and to classify and treat the issue as fraud. (Conve%se Rubbe% vs. =nive%sa! Rubbe%, G.RNo. 290, an. *, 19*)

• #he protection of trademarks is the la&-s recognition of the psychological function of symbols. If it is

true that &e live by symbols it is no less true that &e purchase goods by them. ' trademark is amerchandising shortcut &hich induces a purchaser to select &hat he &ants or &hat he has been led tobelieve &hat he &ants. #he o&ner of a mark e:ploits this human propensity by making every effort toimpregnate the atmosphere of the market &ith the dra&ing po&er of a congenial symbol. 8hatever themeans employed the aim is the same to convey through the mark in the minds of potentiacustomers the desirability of the commodity upon &hich it appears. "nce this is attained the trademark o&ner has something of value. If another poaches upon the commercial magnetism of the symbohe has created the o&ner can obtain legal redress. ( Phi!i& o%%is Inc. vs. ?o%#une :obacco Co%&.

G.R. No. 1**9, une 2, 200)

• Is prior use a re,uirement for registration= !o prior use is no longer a condition for filing or

registration. 2o&ever the applicant or registrant shall file a declaration of actual use of the mark &ithevidence to that effect &ithin 7 years from the filing of the application; other&ise the application shalbe refused or the mark shall be removed from the 0egister. (Sec. 12'.2, IPC)

- /"/' /"3' M'0% C'3+ GH million e:clusive of ingredient- If someone poaches upon the potential magnet of the symbol –I!10I!+M+!#-

- 2I#"0A "1 #0'D+M'0% +- ? bc in europe. Markings of pottery to indicate kind of trade. Police marks imposed by the

sovereign.

II. 0egistrability of a Mark

• 8ho may apply for registration= 'ny person may apply for registration &ho is domiciled or has a rea

and effective industrial establishment in a country – (a) &hich is a party to any convention treaty oagreement relating to intellectual property rights or the repression of unfair competition to &hich thePhilippines is also a party or (b) e:tends reciprocal rights to nationals of the Philippines by la&. (Sec3, IPC)

nregistered marks are still protected unfair competitionPuma case.

registered mark. Infringement and unfair competitioneasier to prove o&nership

• 8hich marks can be registered= 'ny mark can be registered e:cept those thatB

(a) /onsists of immoral deceptive or scandalous matter or matter &hich may disparage orfalsely suggest a connection &ith persons living or dead institutions beliefs or nationasymbols or bring them into contempt or disrepute;

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(b) /onsists of the flag or coat of arms or other insignia of the Philippines or any of itspolitical subdivisions or of any foreign nation or any simulation thereof;

(c) /onsists of a name portrait or signature identifying a particular living individual e:cept byhis &ritten consent or the name signature or portrait of a deceased President of thePhilippines during the life of his &ido& if any e:cept by &ritten consent of the &ido&;

(d) Is identical &ith a registered mark belonging to a different proprietor or a mark &ith anearlier filing or priority date in respect ofB

(i) #he same goods or services or

(ii) /losely related goods or services or

(iii) If it nearly resembles such a mark as to be likely to deceive or cause confusion;

(e) Is identical &ith or confusingly similar to or constitutes a translation of a mark &hich isconsidered by the competent authority of the Philippines to be &ellkno&n internationallyand in the Philippines &hether or not it is registered here as being already the mark of aperson other than the applicant for registration and used for identical or similar goods orservicesB Provided #hat in determining &hether a mark is &ellkno&n account shall betaken of the kno&ledge of the relevant sector of the public rather than of the public at large

including kno&ledge in the Philippines &hich has been obtained as a result of the promotionof the mark;

(f) Is identical &ith or confusingly similar to or constitutes a translation of a mark considered &ellkno&n in accordance &ith the preceding paragraph &hich is registered in thePhilippines &ith respect to goods or services &hich are not similar to those &ith respect to

&hich registration is applied forB Provided #hat use of the mark in relation to those goods orservices &ould indicate a connection bet&een those goods or services and the o&ner of theregistered markB Provided further #hat the interests of the o&ner of the registered mark arelikely to be damaged by such use;

(g) Is likely to mislead the public particularly as to the nature ,uality characteristics orgeographical origin of the goods or services;

(h) /onsists e:clusively of signs that are generic for the goods or services that they seek toidentify;

(i) /onsists e:clusively of signs or of indications that have become customary or usual todesignate the goods or services in everyday language or in bona fide and established tradepractice;

(*) /onsists e:clusively of signs or of indications that may serve in trade to designate thekind ,uality ,uantity intended purpose value geographical origin time or production ofthe goods or rendering of the services or other characteristics of the goods or services;

(k) /onsists of shapes that may be necessitated by technical factors or by the nature of thegoods themselves or factors that affect their intrinsic value;

(l) /onsists of color alone unless defined by a given form; or

(m) Is contrary to public order or morality. (Sec. 123.1, IPC) !"#+B #he nature of thegoods to &hich the mark is applied &ill not constitute an obstacle to registration. (Sec123.3, IPC)

• Identical &ith prior marks 8hen one applies for the registration of a trademark or label &hich is almost

the same or very closely resembles one already used and registered by another the application shouldbe re*ected and dismissed outright even &ithout any opposition on the part of the o&ner and user of a

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previously registered label or trademark this not only to avoid confusion on the part of the public butalso to protect an already used and registered trademark and an established good&ill. (ChuanchoSo" / Cannin7 Co. vs. 4i%ec#o% o6 Pa#en#s, 10* Phi! *33, *3)

• eneric terms and descriptive terms defined eneric terms are those &hich constitute 4the common

descriptive name of an article or substance4 or comprise the 4genus of &hich the particular product is aspecies4 or are 4commonly used as the name or description of a kind of goods4 or 4imply reference toevery member of a genus and the e:clusion of individuating characters4 or 4refer to the basic nature othe &ares or services provided rather than to the more idiosyncratic characteristics of a particular

product4 and are not legally protectable. "n the other hand a term is descriptive and therefore invalidas a trademark if as understood in its normal and natural sense it 4forth&ith conveys thecharacteristics functions ,ualities or ingredients of a product to one &ho has never seen it and doesnot kno& &hat it is4 or 4if it forth&ith conveys an immediate idea of the ingredients ,ualities orcharacteristics of the goods4 or if it clearly denotes &hat goods or services are provided in such a &aythat the consumer does not have to e:ercise po&ers of perception or imagination. (Socie#e $esP%o$ui#s vs. CA, G.R. No. 112012, A&%i! ', 2001)

• 8hy are generic and descriptive terms not registrable= – #hese types of marks cannot be susceptible

for e:clusive appropriation as it is open to the public for their use. 8ords and phrases in common useand &hich merely indicate the character kind ,uality and composition of the thing may not beappropriated by anyone to his e:clusive use; nor those &hich are deceptively misdescriptive of the

product. (;as# Paci6ic e%chan$isin7 Co%&. vs. 4i%ec#o% o6 Pa#en#s, G.R. No. 1'3, 4ec. 29, 190)' dealer in shoes cannot register 43eather hoes4 as his trademark because that &ould be merelydescriptive and it &ould be un*ust to deprive other dealers in leather shoes of the right to use the same

&ords &ith reference to their merchandise. !o one may appropriate generic or descriptive &ords. #heybelong to the public domain. (asso -e%anos vs. 4i%ec#o% o6 Pa#en#s, G.R. No. 392, 4ec. 29193)

• It is evident that 4/'MI'4 as a trademark is far from being distinctive. >y itself it does not identify

petitioner as the manufacturer or producer of the goods upon &hich said mark s used as contradistinguished to trademarks derived from coined &ords such as 40ole:4 4%odak4 or %ote:.4 It has beenheld that 4if a mark is so commonplace that it cannot be readily distinguished from others then it isapparent that it cannot identify a particular business; and he &ho first adopted it cannot be in*ured by

any subse,uent appropriation or imitation by others and the public &ill not be deceived. (Phi!. Re6inin7Co. vs. N7 Sa, G.R. No. 2, u!" 30, 19*2)

• #he &ords 4pale pilsen4 may not be appropriated by M/ for its e:clusive use even if they are part of

its registered trademarkB '! MI+3 P'3+ PI3+! any more than such descriptive &ords as4evaporated milk4 4tomato ketchup4 4cheddar cheese4 4corn flakes4 and 4cooking oil4 may beappropriated by any single manufacturer of these food products for no other reason than that he &asthe first to use them in his registered trademark. (Asia >%ee%" Inc. vs. CA, G.R. No. 103'3, u!" ,1993)

?ac#s asia bre&ery vs asia pale pilsen.

Asia b%e%" &ale pislsen applied for registration. an Miguel opposed becauseB (5) similarityof name= kay nana may Jpale pilsenK ang san Miguel (6) bottles are alike

/B pale pilsen cannot be e:clusively o&ned by san miguel. %ay pale *ust describes thecolor of the beer. Mere description ra sa beer. /ustomers are actually not confusedbecause of the font of the beer.

'pplication of confusing simmilarityB

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sed dominancy test. Dominating feature is the name san Miguel and the Jpale pilsenK ismerely descriptive.

• 'lthough a combination of &ords may be registered as a tradename it is no *ustification for not

applying the principle that the use of a descriptive or generic term in a tradename is al&ays sub*ect tothe limitation that the registrant can not ac,uire the e:clusive right to the descriptive or generic term or

&ord. (5n7 Ai Gui vs. 4i%ec#o% o6 Pa#en#s, G.R. No. 23, a%ch 2*, 19)

• uggestive terms on the other hand can be registered uggestive terms are those &hich in the

phraseology of one court re,uire 4imagination thought and perception to reach a conclusion as to thenature of the goods.4 uch terms 4&hich subtly connote something about the product4 are eligible forprotection in the absence of secondary meaning. 8hile suggestive marks are capable of shedding4some light4 upon certain characteristics of the goods or services in dispute they nevertheless involve4an element of incongruity4 4figurativeness4 or 4 imaginative effort on the part of the observer.4(Socie#e $es P%o$ui#s vs. CA, G.R. No. 112012, A&%i! ', 2001)

• Doctrine of econdary meaning 's regards signs or devices mentioned in paragraphs (*) (k) and (l)

of ec. 567.5 nothing shall prevent the registration of any such sign or device &hich has becomedistinctive in relation to the goods for &hich registration is re,uested as a result of the use that havebeen made of it in commerce in the Philippines. (Sec. 123.2, IPC) #he doctrine of secondary meaning

&as elaborated in the follo&ing termsB 4 . . . a &ord or phrase originally incapable of e:clusive

appropriation &ith reference to an article on the market because geographically or other&isedescriptive might nevertheless have been used so long and so e:clusively by one producer &ithreference to his article that in that trade and to that branch of the purchasing public the &ord or phrasehas come to mean that the article &as his product.4 (Phi!. Nu# In$us#%" vs. S#an$a%$, 230, u!" 31,19)

• #hus even if 4'ng #ibay4 therefore &ere not capable of e:clusive appropriation as a trade

mark the application of the doctrine of secondary meaning could nevertheless be fullysustained because in any event by respondent9s long and e:clusive use of said phrase &ithreference to his products and his business it has ac,uired a proprietary connotation. #hisdoctrine is to the effect that a &ord or phrase originally incapable of e:clusive appropriation

&ith reference to an article on the market because geographically or other&ise descriptive

might nevertheless have been used so long and so e:clusively by one producer &ithreference to his article that in that trade and to that branch of the purchasing public the

&ord or phrase has come to mean that the article &as his product. (An7 vs. :eo$o%o, 'Phi! 0 E19'2F).

• 'lthough the &ord 4+3+/#'4 may be an ordinary or common &ord in the sense that it may be

used or employed by any one in promoting his business or enterprise once adopted or coined inconnection &ith one9s business as an emblem sign or device to characteri$e its products or as abadge or authenticity it may ac,uire a secondary meaning as to be e:clusively associated &ith itsproducts and business. In this sense its use by another may lead to confusion in trade and causedamage to its business. (A%ce Sons an$ Co. vs. Se!ec#s >iscui#s, 1 SCRA 23 E191F)

• Doctrine of econdary Meaning applicable to trade names #he doctrine of secondary meaning

originated in the field of trademark la&. Its application has ho&ever been e:tended to corporatenames sine the right to use a corporate name to the e:clusion of others is based upon the sameprinciple &hich underlies the right to use a particular trademark or tradename. 2o&ever &hile theappellant may have proved that it had been using the &ord 93yceum9 for a long period of time thisfact alone did not amount to mean that the said &ord had ac,uired secondary meaning in its favorbecause the appellant failed to prove that it had been using the same &ord all by itself to thee:clusion of others ("ceu o6 #he Phi!i&&ines vs. Cou%# o6 A&&ea!s, G.R. 101*9, a%ch , 1993)

• /onfusing imilarity #he similarity must be such as is likely to mislead purchasers of ordinary

caution and prudence into the belief that the articles are those of another producer or manufacturer

9



8hether the mark or label of one competitor resembles another is to be determined by aninspection of the points of difference and resemblance as a &hole and not merely the points ofresemblance. (Ae%ican C"anii$ vs. 4i%ec#o% o6 Pa#en#s, G.R. 239', A&%i! 29, 19)

• #est of confusing similarity of marks –

(a) phonetic similarity #he follo&ing random list of confusingly similar sounds in the matterof trademarks culled from !ims nfair /ompetition and #rade Marks 5L<H Col. 5 &ilreinforce our vie& that 4'3"!P'4 and 43I"!P'4 are confusingly similar in sound

4old Dust4 and 4old Drop4; 4ant$en4 and 4assea4; 4ilver 1lash4 and 4upper1lash4; 4/ascarete4 and 4/elborite4; 4/elluloid4 and 4/ellonite4; 4/hartreuse4 and4/harseurs4; 4/ute:4 and 4/uticlean4; 42ebe4 and 4Me*e4; 4%ote:4 and 41emete:4; 4uso4and 42oo 2oo4. 3eon 'mdur in his book 4#radeMark 3a& and Practice4 pp. <5L<65cities as coming i#hin the purvie& of the i$e sonans rule 4Ausea4 and 4/'44tein&ay Pianos4 and 4teinberg Pianos4 and 4evenp4 and 43emonp4. In /o#iong vs. Director of Patents this /ourt une,uivocally said that 4/eldura4 and 4/ordura4are confusingly similar in sound; this /ourt held in apolin /o. vs. >almaceda @H PhilHL? that the name 43usolin4 is an infringement of the trademark 4apolin4 as the soundof the t&o names is almost the same. ( a%ve+ Coe%cia! Co., Inc. v. Pe#%a -a&ia /Co., e# a!., 129, 4ec. 22, 192)

court noted that the marks are not presented as it appears on the goods that-s &hy theyhave to rely on the sound (phoenetic). #he most common mode pa gyud that time isradio so very important to consider ho& products name sounded.

!"8 this test has lost its significance or relevance.

' dealer in shoes cannot register 43eather hoes4 as his trademark because that &ouldbe merely descriptive and it &ould be un*ust to deprive other dealers in leather shoes ofthe right to use the same &ords &ith reference to their merchandise. !o one mayappropriate generic or descriptive &ords. #hey belong to the public domain. (asso-e%anos vs. 4i%ec#o% o6 Pa#en#s, G.R. No. 392, 4ec. 29, 193)

/onfusingly similar especially if related products.

(b) colorable imitation #he phrase 4colorable imitation4 denotes such a 4close or ingeniousimitation as to be calculated to deceive ordinary persons or such a resemblance to theoriginal as to deceive an ordinary purchaser giving such attention as a purchaser usuallygives and to cause him to purchase the one supposing it to be the other. (;#e&ha vs4i%ec#o% o6 Pa#en#s, 203, a%ch 31, 19)

(c) 2olistic #est the person &ho infringes a trade mark does not normally copy out but onlymakes colorable changes employing enough points of similarity to confuse the public

&ith enough points of differences to confuse the courts. 8hat is undeniable is the facthat &hen a manufacturer prepares to package his product he has before him aboundless choice of &ords phrases colors and symbols sufficient to distinguish hisproduct from the others. 8hen as in this case unshine chose &ithout a reasonablee:planation to use the same colors and letters as those used by Del Monte though thefield of its selection &as so broad the inevitable conclusion is that it &as donedeliberately to deceive. ( 4e! on#e Co%&. vs. CA, G.R. No. *32, an. 2, 1990)

1actsB sunshine and del monte ketchup. >ottles.

Del monte file infringement and unfair competition to sunsine for using similar designsand similar bottles.Points of similarity.hape of label (tomatoshaped sa del monte circle ra sa sunshine)>ut different trademarks

10



/' used the dominancy test on the label on the suncNshine sauce and del montetomato ketchcup/ said that it-s the hollistc test should be used.eneral impressionon the ordinary >A+r especially that it is a common householdproduct &hich the buyer could afford to be rush as long as the product is ekthcupE2o& the goods ordinarily appear and under &hat circumstances these products arebought.>uyer does not really spend time to check

+M+0'3D '0M+!#B 3ee (international) vs the stylistic mr. 3++.

/onfusion comes in because5. 3++ vs stylistic mr. 3++. #he &ord stylistic is6. %ind of buyers. 1ilipinos are brandconscious but doesn-t &ant to spend much.

/B !"# sonfusingly similar because5. #hey talk about buyers6.

8hole point of infringement is that the similarity

2"33I#I/B you consider the &hole product then see if there-s similarity

D"MI!'!/AB look at the prevailing features only kung nay similarity.

/'+ "1 Philippine knot industry.

1actsB peanut planter-s is the common and dominant featureJplanter-sK is e:clusively o&ned by the Philippine plant industry.

In using these testB you consider the ""D themselves. Is it common products or is it e:pensive becausethese determines the behavior or attitude of the buyer.

"0DI!'0A 'C+0'+ P0/2'+0. ' person &ith modicum buyer

(d) Dominancy #est It has been consistently held that the ,uestion of infringement of atrademark is to be determined by the test of dominancy. imilarity in si$e form andcolor &hile relevant is not conclusive. If the competing trademark contains the main oressential or dominant features of another and confusion and deception is likely to resultinfringement takes place. Duplication or imitation is not necessary; not it is necessarythat the infringing label should suggest an effort to imitate. #he dominant feature ofM/9s trademark is the name of the productB '! MI+3 P'3+ PI3+! &ritten in

&hite othic letters &ith elaborate serifs at the beginning and end of the letters 44 and4M4 on an amber background across the upper portion of the rectangular design. "n theother hand the dominant feature of '>I9s trademark is the nameB >++0 P'3+ PI3+!

&ith the &ord 4>eer4 &ritten in large amber letters larger than any of the letters found inthe M/ label. #he trial court perceptively observed that the &ord 4>++04 does notappear in M/9s trademark *ust as the &ords 4'M MI+34 do not appear in '>I9strademark. 2ence there is absolutely no similarity in the dominant features of bothtrademarks. !either in sound spelling or appearance can >++0 P'3+ PI3+! be saidto be confusingly similar to '! MI+3 P'3+ PI3+!. !o one &ho purchases >++0P'3+ PI3+! can possibly be deceived that it is '! MI+3 P'3+ PI3+!. !oevidence &hatsoever &as presented by M/ proving other&ise. (Asia >%ee%" Inc. vs.CA, G.R. No. 103'3, u!" , 1993)

(e) Ine:plicable use 0espondent9s &itness had no idea &hy respondent chose4!IC+0'3 /"!C+0+4 as trademark and the record discloses no reasonablee:planation for respondent9s use of the &ord 4/"!C+0+4 in its trademark. uch

11



une:plained use by respondent of the dominant &ord of petitioner9s corporate namelends itself open to the suspicion of fraudulent motive to trade upon petitioner9sreputation thusB O' boundless choice of &ords phrases and symbols is available to one

&ho &ishes a trademark sufficient unto itself to distinguish his product from those oothers. 8hen ho&ever there is no reasonable e:planation for the defendant9s choice ofsuch a mark though the field for his selection &as so broad the inference is inevitablethat it &as chosen deliberately to deceive. (Conve%se Rubbe% vs. =nive%sa! Rubbe%G.R. No. 290, an. *, 19*) 8e do not see &hy applicant could not have stretchedhis imagination even a little and e:tended his choice to other members of the anima

kingdom as a brand to differentiate his product from similar products in the market. In asimilar case decided by this #ribunal &herein although one brand consisting of therepresentation of a rooster &as already being used by one party another party &antedto register a similar brand consisting of t&o roosters on a similar product. (i -oa vs4i%ec#o% o6 Pa#en#s, G.R. No. 23, a%ch 2*, 19)

(f) "rdinary purchaser In order that there may be deception of the buying public in thesense necessary to constitute unfair competition it is necessary to suppose a publicaccustomed to buy and therefore to some e:tent familiar &ith the goods in ,uestion#he test of fraudulent simulation is to be found in the likelihood of the deception opersons in some measure ac,uainted &ith an established design and desirous opurchasing the commodity &ith &hich that design has been associated. #he test is no

found in the deception or possibility of the deception of the person &ho kno&s nothingabout the design &hich has been counterfeited and &ho must be indifferent as bet&eenthat and the other. #he simulation in order to be ob*ectionable must be such as appearslikely to mislead the ordinarily intelligent buyer &ho has a need to supply and is familiar

&ith the article that he seeks to purchase. (Asia >%ee%" Inc. vs. CA, G.R. No. 103'3, u!" , 1993) 'ccordingly taken as they &ill appear to a prospective customer thetrademarks in ,uestion are not apt to confuse. 1urthermore the product of the applicantis e:pressly stated as dispensable only upon doctor9s prescription &hile that of oppositordoes not re,uire the same. #he chances of being confused into purchasing one for theother are therefore all the more rendered negligible. 'lthough oppositor avers that somedrugstores sell 4>I"1+0I!B &ithout asking for a doctor9s prescription the same if true

&ould be an irregularity not attributable to the applicant &ho has already clearly stated

the re,uirement of a doctor9s prescription upon the face of the label of its product(>%is#o! "e%s vs. 4i%ec#o% o6 Pa#en#s, 1 SCRA 12* E19F)

/asual or careful buyers

+ven if the product I +P+!IC+ or cheap then the buyer should be very careful and cannot afford to commimistake or likelihood of confusion is very slim. >isag pareha pa na then it &ould not be infringement becausebuyers are e:pected to be vaey careful.

M/ D"!'3D /'+

0espondents are big mac filed against by mcdonalds for infringement for similarity of M'/donalds ascompared to bigM'/.

'ns&er of bigmacB &e are *ust delivery

#here can be no confusion because bigmac in macdonalds are used as a certain kind of burger &hile therespondent used it

/ourtB

se of 6 goodsB

/onfusion of goods

12



/onfusion of business – that there is some connection of mcdo to bigmac. #he public might bu confused &ith

but also to certain tyeps of &ords that &ould lead to confuse the

M+'D"2!"! C M8 C'!D"01

1actsB

1iled an application for reg of allaska the mead ohnson opposed kay similar totheir alacta.

/ourtB

5. &ere not looking only to the phoenetic similarity only (they-re saying that

kay naa man *ud similarity sa name B '3'%' C '3'/#'

6. &e look at also the holistic appearance of products

a. colors are different. >uyers &ill be appraised of the t&o products.

b. si$es container os also different

c. one container ra ang isa but the other comes in different si$es

d. evaporated milk ang isa

!+#3+ C /'

1avored the dominancy test than holistic test kay u *ust look at the colorable imitation that-s apparentlysamein the product.

Dili unta maregister because masterK is descriptive Lmao niy dominant feature).

/ourt said it-s not descriptive (directly conveys &hat the product is and ho& is it used) because it master is asuggestive term it indireclt conveys. #hus p&edi maregister.

8hy suggestive='nsB because the manner of its preparation

"ther e:amples of suggestive brands. (globe trust condom ivory soap)

/ourt used dominancy and used JmasterK as their dominant feature. 8hy= It-s printed in the middles portion inlarge fonts and &ere emphasi$ed kaau sa ads and others.

irB ho& about the nut and emerald case= !ganung &a man ni sila gconsider==

'nsB

"3C+ #2IEE

Sec!ion %&&( Ree$iesB In6%in7een# . 'ny person &ho shall &ithout the consent of the o&ner of the

registered markB5??.5. se in commerce any reproduction counterfeit copy or colorable imitation of a registered mark or thesame container or a dominant feature thereof in connection &ith the sale offering for sale distributionadvertising of any goods or services including other preparatory steps necessary to carry out the sale of anygoods or services on or in connection &ith &hich such use is likely to cause confusion or to cause mistake orto deceive; or

># A" /'!!"# 03+ "# #2+ 'PP3I/'#I"! "1 2"33I#I/ #+# %'A !'' M'! '0IP0D+!/+.

13



ec 567.(d) Is identical &ith a registered mark belonging to a different proprietor or a mark &ith an earlier filing orpriority date in respect ofB

(i) #he same goods or services or(ii) /losely related goods or services or(iii) If it nearly resembles such a mark as to be likely to deceive or cause confusion;

!"# ID+!#I/'3.

(refer to sec 5??)/"!1I!3A3 IMI3'0 M'0%

/2+/% 82+#2+0 #2+ P0"D/# '0+ 0+3'#+D "0 !"#

o to their class. ust relative ra ni ha. 1actor raE / even said nga arbitrary bi :ia.

D+/0IP#IC+ Q'3I#I+ "1 #2+P0"D/#B

5.

(;sso S#an$a%$ ;as#e%n Inc. vs. CA, G.R. No. 2991, Au7. 31, 19*2)

#he related goods principle – oods are related &hen they belong to the same class or have the samedescriptive properties or physical attributes or they serve the same purpose or flo& through the same channeof trade. #he registrant of the mark J+ssoK for petroleum products may not validly prevent others from usingJ+ssoK for cigarettes because there is a marked difference bet&een oil and tobacco the respective goods flo&through different channels of trade and the business of one is beyond the $one of potential or natural andlogical e:pansion of the other.

goods flo& through different channels of trade

6. tobacco. Distributed in the gasoline stations etc

7. oil. Distributed in stoores

(Canon Kabushiki Kaisha vs. CA, G.R. No. 120900, u!" 20, 2000)

#rade name is the name or designation identifying or distinguishing an enterprise. (Sec. 121.333, IPC) 'trade name refers to the business and its good&ill; a trademark refers to the goods.

andals lang then &hile petitioner uses it for varied productsB

cB e:amine the cert of registration kay this specifies the products &here sandals is not included. #hus no

An7 vs. :eo$o%o, ' Phi! 0 E19'2F)

#he use of identical marks on noncompeting but related goods may likely cause confusion. #hus thetrademark J'ng #ibayK for shoes and slippers &as not allo&ed to be used for shirts and pants because theybelong to the same general class of goods.

(a) #he related goods principle – oods are related &hen they belong to the same class ohave the same descriptive properties or physical attributes or they serve the samepurpose or flo& through the same channel of trade. #he registrant of the mark J+ssoK fopetroleum products may not validly prevent others from using J+ssoK for cigarettesbecause there is a marked difference bet&een oil and tobacco the respective goodsflo& through different channels of trade and the business of one is beyond the $one ofpotential or natural and logical e:pansion of the other. (;sso S#an$a%$ ;as#e%n Inc. vs

14



CA, G.R. No. 2991, Au7. 31, 19*2) #he use of identical marks on noncompeting burelated goods may likely cause confusion. #hus the trademark J'ng #ibayK for shoesand slippers &as not allo&ed to be used for shirts and pants because they belong to thesame general class of goods. (An7 vs. :eo$o%o, ' Phi! 0 E19'2F)

III. 0egistration of a Mark

• 1ormal re,uirement for application of registration #he application for the registration of the

mark shall be in 1ilipino or in +nglish and shall contain the follo&ingB

(a) ' re,uest for registration;

(b) #he name and address of the applicant;

(c) #he name of a tate of &hich the applicant is a national or &here he has domicile; andthe name of a tate in &hich the applicant has a real and effective industrial or commerciaestablishment if any;

(d) 8here the applicant is a *uridical entity the la& under &hich it is organi$ed and e:isting;

(e) #he appointment of an agent or representative if the applicant is not domiciled in thePhilippines;

(f) 8here the applicant claims the priority of an earlier application an indication ofB

i) #he name of the tate &ith &hose national office the earlier application &as filed or if filed &ith an office other than a national office the name of that office

ii) #he date on &hich the earlier application &as filed and

iii) 8here available the application number of the earlier application;

(g) 8here the applicant claims color as a distinctive feature of the mark a statement to thateffect as &ell as the name or names of the color or colors claimed and an indication inrespect of each color of the principal parts of the mark &hich are in that color;

(h) 8here the mark is a threedimensional mark a statement to that effect;

(i) "ne or more reproductions of the mark as prescribed in the 0egulations;

(*) ' transliteration or translation of the mark or of some parts of the mark as prescribed inthe 0egulations;

(k) #he names of the goods or services for &hich the registration is sought groupedaccording to the classes of the !ice /lassification together &ith the number of the class ofthe said /lassification to &hich each group of goods or services belongs; and

(l) ' signature by or other selfidentification of the applicant or his representative. (Sec

12', IPC)

• 1iling date #he filing date of an application shall be the date on &hich the "ffice received

the follo&ing indications and elements in +nglish or 1ilipinoB

(a) 'n e:press or implicit indication that the registration of a mark is sought;

(b) #he identity of the applicant;

(c) Indications sufficient to contact the applicant or his representative if any;

(d) ' reproduction of the mark &hose registration is sought; and

15



(e) #he list of the goods or services for &hich the registration is sought. (Sec. 12, IPC)

!oteB !o filing date shall be accorded until the re,uired fee is paid. (Sec. 12.2, IPC)

• Priority right 'n application for registration of a mark filed in the Philippines by a person

referred to in ection 7 and &ho previously duly filed an application for registration of thesame mark in one of those countries shall be considered as filed as of the day theapplication &as first filed in the foreign country. (Sec. 131.1, IPC) 2o&ever no registrationof a mark in the Philippines by a person described in this section shall be granted until such

mark has been registered in the country of origin of the applicant. (Sec. 131.2, IPC) #hisright does not entitle the o&ner of a registration granted under this section to sue for actscommitted prior to the date on &hich his mark &as registered in this country e:cept for &ellkno&n marks. (Sec. 131.3, IPC)

• Procedure for registration –

(a) +:amination to determine &hether the application satisfies the re,uirements for thegrant of a filing date under ection 56H. (Sec. 132, IPC)

(b) +:amination to determine &hether the application meets the re,uirements of ection56< and the mark is registrable under ection 567. (Sec. 133, IPC)

(c) Denial of the application or amendment thereof or publication of the application. (Sec133.2 an$ Sec. 133.3, IPC)

(d) "pposition to the application; notice; hearing; decision by e:aminer; appeal to theDirector of the >ureau of #rademarks; appeal to the IP" Director eneral; appeal to the/ourt of 'ppeals;

(e) Issuance of certificate of registration. (Sec. 13, IPC)

(f) Publication in the IP" a$ette of the fact of registration. (Sec. 13, IPC)

• Duration of registration #he duration of a trademark registration is 5 years rene&able for

periods of 5 years each rene&al. #he re,uest for rene&al must be made &ithin @ monthsbefore or after the e:piration of the registration. (Sec. 1', IPC)

• Postregistration re,uirement – #he registrant is re,uired to file a declaration of actual use

and evidence to that effect &ithin 5 year from the fifth anniversary of the date of registrationof the mark; other&ise the mark shall be removed from the 0egister. (Sec. 1', IPC) >#nonuse of a mark may be e:cused if caused by circumstance arising independently of the

&ill of the trademark o&ner. 3ack of funds is not an acceptable e:cuse. (Sec. 12, IPC)

• /ancellation of registration – ' petition to cancel a registration of a mark under this 'ct may

be filed &ith the >ureau of 3egal 'ffairs by any person &ho believes that he is or &ill bedamaged by the registration of a mark under this 'ct as follo&sB

(a) 8ithin five (?) years from the date of the registration of the mark under this 'ct.

(b) 't any time if the registered mark becomes the generic name for the goods or servicesor a portion thereof for &hich it is registered or has been abandoned or its registration

&as obtained fraudulently or contrary to the provisions of this 'ct or if the registeredmark is being used by or &ith the permission of the registrant so as to misrepresent thesource of the goods or services on or in connection &ith &hich the mark is used. If theregistered mark becomes the generic name for less than all of the goods or services for

&hich it is registered a petition to cancel the registration for only those goods or servicesmay be filed. ' registered mark shall not be deemed to be the generic name of goods oservices solely because such mark is also used as a name of or to identify a uni,ue

16



product or service. #he primary significance of the registered mark to the relevant publicrather than purchaser motivation shall be the test for determining &hether the registeredmark has become the generic name of goods or services on or in connection &ith &hichit has been used.

0"!DB5. +!+0I/6. 82+! M'0% I '>'!D"!+D. –!"!+ 1"0 I!I1I/'!# P+0I"D. ? A+'07. 82+! 0+I#0'#I"! I ">#'I!+D 10'D3+!#3A

<. 0+I#+0+D M'0% I +D >A "#2+0 1"0 P0P"+ "1 D+/+P#I"! MI3+'DI! "010'D DI0+/#+D #" P>3I/.?. 't any time if the registered o&ner of the mark &ithout legitimate reason fails to use the mark &ithin

the Philippines or to cause it to be used in the Philippines by virtue of a license during anuninterrupted period of three (7) years or longer.

0I/'0" C IM>I'!

(c) 't any time if the registered o&ner of the mark &ithout legitimate reason fails to use themark &ithin the Philippines or to cause it to be used in the Philippines by virtue of alicense during an uninterrupted period of three (7) years or longer. (Sec. 11, IPC)

• #here being no evidence of use of the mark by others before 5L76 or that appellee

abandoned use thereof the registration of the mark &as made in accordance &ith the#rademark 3a&. ranting that appellant used the mark &hen appellee stopped using itduring the period of time that the overnment imposed restrictions on importation orespondent9s brassiere bearing the trademark such temporary nonuse did not affect therights of appellee because it &as occasioned by government restrictions and &as nopermanent intentional and voluntary. #o &ork an abandonment the disuse must bepermanent and not ephemeral; it must be intentional and voluntary and not involuntary oreven compulsory. #here must be a thoroughgoing discontinuance of any trademark use othe mark in ,uestion4 (/allman nfair /ompetition and #rademark 6nd +d. p. 57<5). #heuse of the trademark by other manufacturers did not indicate an intention on the part oappellee to abandon it. (Roe%o vs. ai$en ?o%, G.R. No. 1*2*9, a%ch 31, 19' )

•

#he nonuse of a trademark or an article of merchandise due to legal restrictions orcircumstances beyond one9s control is not to be considered as an abandonment. aid rule

&as correctly applied to the case at bar &here the use of the trademark &as interruptedduring the apanese occupation and in fact &as discontinued &hen the importation of theproduct covered by the trademark &as prohibited by the /entral >ank 0egulations. (Phi!Nu# In$us#%" vs. S#an$a%$, 230, u!" 31, 19)

• 'ssignment and #ransfer of 'pplication and 0egistration – 'n application for registration or

its registration may be assigned or transferred &ith or &ithout the transfer of the businessusing the mark. 2o&ever it &ill be null and void if it &ould mislead the public especially asregards the nature source manufacturing process characteristics or suitability for theirpurpose of the goods or services to &hich the mark is applied. uch assignment or transfer

shall be in &riting and &ith the signatures of the contracting parties. It shall be recorded &iththe IP" other&ise it shall have no effect against third parties. (Sec. 1'9, IPC)

- Sec!ion %*+( Assi7nen# an$ :%ans6e% o6 A&&!ica#ion an$ Re7is#%a#ion. 5<L.5. 'n application for

registration of a mark or its registration may be assigned or transferred &ith or &ithout the transfeof the business using the mark. (n)

- 5<L.6. uch assignment or transfer shall ho&ever be null and void if it is liable to mislead thepublic particularly as regards the nature source manufacturing process characteristics osuitability for their purpose of the goods or services to &hich the mark is applied.

17



- 5<L.7. #he assignment of the application for registration of a mark or of its registration shall be in &riting and re,uire the signatures of the contracting parties. #ransfers by mergers or other forms ofsuccession may be made by any document supporting such transfer.

- 5<L.<. 'ssignments and transfers of registrations of marks shall be recorded at the "ffice onpayment of the prescribed fee; assignment and transfers of applications for registration shall onpayment of the same fee be provisionally recorded and the mark &hen registered shall be in thename of the assignee or transferee.

- 5<L.?. 'ssignments and transfers shall have no effect against third parties until they are recorded atthe "ffice. (ec. 75 0.'. !o. 5@@a)

• 3icense contracts – 'ny license contract concerning the application of a mark or its

registration shall provide for effective control by the licensor of the ,uality of the goods orservices of the licensee in connection &ith &hich the mark is used. If the contract shall noprovide the foregoing it shall not be valid. aid contracts must be recorded &ith the IP"other&ise it shall not bind third parties. (Sec. 10.1, IPC)

RIG-:S 5? :-; 5N;R 5? R;GIS:;R;4 ARK.

Sec!ion %*( Ri7h#s Con6e%%e$ . 5<H.5. #he o&ner of a registered mark shall have the e:clusive right to

prevent all third parties not having the o&ner9s consent from using in the course of trade identical or similarsigns or containers for goods or services &hich are identical or similar to those in respect of &hich thetrademark is registered &here such use &ould result in a likelihood of confusion R#2I I 1'C"0'>3+ #"

P3'I!#I11 "1 '! I!10I!+M+!# /'+ >+/'+ #2+ 3'8 IC+ P0+MP#I"! I 2I 1'C"0S. Incase of the use of an identical sign for identical goods or services a likelihood of confusion shall be presumed.5<H.6. #he e:clusive right of the o&ner of a &ellkno&n mark defined in ubsection 567.5(e) &hich isregistered in the Philippines shall e:tend to goods and services &hich are not similar to those in respect of

&hich the mark is registeredB Provided #hat use of that mark in relation to those goods or services &ouldindicate a connection bet&een those goods or services and the o&ner of the registered markB Provided further#hat the interests of the o&ner of the registered mark are likely to be damaged by such use. (n)

IC. 8ellkno&n Marks

• ' &ellkno&n mark is one &hich a competent authority of the Philippines has designated to

be &ellkno&n internationally and in the Philippines. In determining &hether a mark is &ellkno&n account shall be taken of the kno&ledge of the relevant sector of the public ratherthan the public at large including kno&ledge in the Philippines &hich has been obtained asa result of the promotion of the mark. (Sec. 123.1EeF an$ E6F,IPC)

82" I /"MP+#+!# '#2"0I#A=

/"0# DI0+/#"0 +!+0'3

• 'dditional right of o&ner – #he e:clusive right of the o&ner of a &ellkno&n mark &hich is

registered in the Philippines shall e:tend to goods and services &hich are not similar tothose in respect of &hich the mark is registered; provided that (i) the use of the mark inrelation to those goods or services &ould indicate a connection bet&een those goods orservices and the o&ner of the registered mark and (ii) the interests of the o&ner of theregistered mark are likely to be damaged by such use. (Sec. 1'.2, IPC)

C. Infringement of #rademark; nfair /ompetition

• 0ights conferred on trademark – (a) #he o&ner of a registered mark shall have the

e:clusive right to prevent all third parties not having the o&ner9s consent from using in thecourse of trade identical or similar signs or containers for goods or services &hich areidentical or similar to those in respect of &hich the trademark is registered &here such use

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&ould result in a likelihood of confusion. In case of the use of an identical sign for identicagoods or services a likelihood of confusion shall be presumed.

(b) #he e:clusive right of the o&ner of a &ellkno&n mark defined in ubsection 567.5(e) &hich is registered in the Philippines shall e:tend to goods and services &hich are nosimilar to those in respect of &hich the mark is registeredB Provided #hat use of that mark inrelation to those goods or services &ould indicate a connection bet&een those goods orservices and the o&ner of the registered markB Provided further #hat the interests of theo&ner of the registered mark are likely to be damaged by such use

• 3imitations on such right – Duration of registration (5 years) and #erritorial limitations

(rights can be enforced &ithin the territory of registration e:cept &ellkno&n marks)

• 8hen is there infringement = – #here is infringement if a registered mark is used in

commerce by a person &ithout the consent of the registered o&ner thereof. uchinfringement may involveB

82'# is use of commerce=

sale offering for sale distribution advertising of any goods or services including othepreparatory steps necessary to carry out the sale of any goods or services on or inconnection &ith &hich such use is likely to cause confusion or to cause mistake or todeceive;

(a) se in commerce any reproduction counterfeit copy or colorable imitation of aregistered mark or the same container or a dominant feature thereof in connection &iththe sale offering for sale distribution advertising of any goods or services includingother preparatory steps necessary to carry out the sale of any goods or services on or inconnection &ith &hich such use is likely to cause confusion or to cause mistake or todeceive; or

(b) 0eproduce counterfeit copy or colorably imitate a registered mark or a dominanfeature thereof and apply such reproduction counterfeit copy or colorable imitation tolabels signs prints packages &rappers receptacles or advertisements intended to be

used in commerce upon or in connection &ith the sale offering for sale distribution oadvertising of goods or services on or in connection &ith &hich such use is likely tocause confusion or to cause mistake or to deceive shall be liable in a civil action foinfringement by the registrant for the remedies hereinafter set forth. (Sec. 1, IPC)

SPA4ING >ASK;:>A

A!! #"&es o6 ac#s &%e&a%a#o%".

INN5C;N: IN?RING;R IS ;C=S;4

(a) imilarly only an in*unction against the presentation of infringing advertising matter infuture issues may be imposed on innocent infringing ne&spapers and maga$ines. (Sec

19, IPC)

Innocent infringer he is not a privy to any purposes relating to deception.

liability is only to an in*unction against future printer

• In order to bring a civil action for infringement it is not re,uired that there be an actual sale

of the goods or services using the infringing material. Infringement takes place upon themere use or reproduction of the registered mark. (Sec. 1, IPC)

• 0emedies available to the o&ner &hose registered mark &as infringed

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(a) ue for damages (ec. [email protected])

(b) 2ave the infringing goods impounded (ec. [email protected])

(c) 'sk for double damages (ec. [email protected])

(d) 'sk for in*unction. (ec. 5?@.<)

(e) 2ave the infringing goods disposed of outside the channels of commerce (ec. 5?H.5)

(f) 2ave the infringing goods destroyed (ec. 5?H.5)

(g) 1ile criminal action (ec. 5H)

(h) 'dministrative sanctions.

• "&ners of a registered mark is re,uired to give notice of the fact that his mark is registered

in order to recover profits or damages in case of infringement. 2o&ever kno&ledge of thefact of registration is presumed if the &ords J0egistered MarkK or the symbol (0egistered) isdisplayed together &ith the mark.

Sec!ion %&-( Ac#ions, an$ 4aa7es an$ InJunc#ion 6o% In6%in7een# . [email protected]. #he o&ner of a registered mark

may recover damages from any person &ho infringes his rights and the measure of the damages suffered

shall be either the reasonable profit &hich the complaining party &ould have made had the defendant noinfringed his rights or the profit &hich the defendant actually made out of the infringement

or in the event such measure of damages cannot be readily ascertained &ith reasonable certainty then thecourt may a&ard as damages a reasona."e #ercen!ae based upon the amount of ross sa"es o$ !hede$endan! or !he va"/e o$ !he services in connec!ion wi!h which !he mark or !rade name &as used in the

infringement of the rights of the complaining party. (ec. 67 first par. 0.'. !o. 5@@a)

[email protected]. "n application of the complainant the court may impound during the pendency of the action salesinvoices and other documents evidencing sales. (n)[email protected]. In cases &here actual intent to mislead the public or to defraud the complainant is sho&n in the

discretion of the court the damages may be doubled. TD'M'+U5?@.<. #he complainant upon proper sho&ing may also be granted in*unction

Sec!ion %&( Poe% o6 Cou%# #o 5%$e% In6%in7in7 a#e%ia! 4es#%o"e$ . 5?H.5 In any action arising under this

'ct in &hich a violation of any right of the o&ner of the registered mark is established the court may order thatgoods found to be infringing be &ithout compensation of any sort disposed of outside the channels ofcommerce in such a manner as to avoid any harm caused to the right holder or destroyed; and all labelssigns prints packages &rappers receptacles and advertisements in the possession of the defendant bearingthe registered mark or trade name or any reproduction counterfeit copy or colorable imitation thereof alplates molds matrices and other means of making the same shall be delivered up and destroyed.5?H.6. In regard to counterfeit goods the simple removal of the trademark affi:ed shall not be sufficient otherthan in e:ceptional cases &hich shall be determined by the 0egulations to permit the release of the goods into

the channels of commerce. (ec. 6< 0.'. !o. 5@@a)P8+D+ pd criminal case

a registered mark shall have no effect against any person &ho in good faith before the filing date or thepriority date &as using the mark for the purposes of his business or enterpriseB Provided #hat his right mayonly be transferred or assigned together &ith his enterprise or business or &ith that part of his enterprise orbusiness in &hich the mark is used.

sed in shangrila

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>ureau of legal affairs &here u file infringement case

!aay pending petition for cancelation of infringement=

8ill adm case &ill suspend the infringement case= !". I# 8I33 proceed simultaeneously. >ut aa&k&ardsituation. /ourt &ill defer voluntary;y the proceedings.

5?5.6. !ot&ithstanding the foregoing provisions the court or the administrative agency vested &ith *urisdictionto hear and ad*udicate any action to enforce the rights to a registered mark shall like&ise e:ercise *urisdictionto determine &hether the registration of said mark may be cancelled in accordance &ith this 'ct. #he filing of a

suit to enforce the registered mark &ith the proper court or agency shall e:clude any other court or agencyfrom assuming *urisdiction over a subse,uently filed petition to cancel the same mark. "n the other hand theearlier filing of petition to cancel the mark &ith the >ureau of 3egal 'ffairs shall not constitute a pre*udicia,uestion that must be resolved before an action to enforce the rights to same registered mark may be decided(ec. 5H 0.'. !o. 5@@a)

/"0# M'A D+#+0MI!+ #2+ /'!/+33'#I"! "'!D I'!/+ "1 "0D+0

• 3imitations to actions for infringement –

(b) !o action for infringement could be taken against a person &ho in good faith and beforethe filing date or priority date &as using the mark for the purposes of his business orenterprise. !ote ho&ever that such person may assign or transfer his right to use the

registered mark only together &ith his business or enterprise.

(c) "nly an in*unction against future printing may be imposed upon an innocent infringingprinter.

(d) imilarly only an in*unction against the presentation of infringing advertising matter infuture issues may be imposed on innocent infringing ne&spapers and maga$ines. (Sec19, IPC)

Innocent infringer he is not a privy to any purposes relating to deception.

liability is only to an in*unction against future printer

• 0ight of 1oreign /orporation to ue in #rademark or ervice Mark +nforcement 'ction 'ny foreign national or *uridical person &ho meets the re,uirements of ection 7 of this 'ctand does not engage in business in the Philippines may bring a civil or administrative actionhereunder for opposition cancellation infringement unfair competition or false designationof origin and false description &hether or not it is licensed to do business in the Philippinesunder e:isting la&s. (Sec. 10, IPC)

• ' foreign corporation &hich has never done any business in the Philippines and &hich is

unlicensed and unregistered to do business here but is &idely and favorably kno&n in thePhilippines through the use therein of its products bearing its corporate and tradename hasa legal right to maintain an action in the Philippines to restrain the residents and inhabitantsthereof from organi$ing a corporation therein bearing the same name as the foreign

corporation &hen it appears that they have personal kno&ledge of the e:istence of such aforeign corporation and it is apparent that the purpose of the proposed domestic corporationis to deal and trade in the same goods as those of the foreign corporation. (a Cheiseacos#e vs. ?e%nan$e, G.R. No. 9, a" 21, 19*')

• nfair competition – is the use by a person of deception or other means contrary to good

faith by &hich he passes off the goods manufactured by him or in &hich he deals or hisbusiness or services for those of another person &ho has established good&ill in the goodssuch person manufactures or deals in or his business or services or &ho shall commit anyacts calculated to produce said result. ome acts of unfair competition are as follo&sB

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(a) iving one-s goods the general appearance of goods of another manufacturer;

(b) Inducing the false belief that one is offering the services of another &ho has identifiedsuch services in the minds of the public;

(c) Making any false statement calculated to discredit the goods business or services oanother.

• Infringement of trademark vs. unfair competition

(a) Infringement of trademark is the unauthori$ed use of a trademark &hereas unfaicompetition is the passing off of one9s goods as those of another. Purpose man is to rideon the popularity of the trademark

(b) In infringement of trademark fraudulent intent is unnecessary &hereas in unfaicompetition fraudulent intent is essential.

(c) In infringement of trademark the prior registration of the trademark is a prere,uisite tothe action &hereas in unfair competition registration is not necessary. (4e! on#e Co%&.vs. CA, G.R. No. *32, an. 2, 1990)

In#en# $eceive #he consue%s. ea$s in#o# hinknin7 #ha# #he" e%e bu"in7 #he oene%o6

#he a%k

-A: C5NS:I:=:;S AC: 5?

Sec!ion %-0( =n6ai% Co&e#i#ion, Ri7h#s, Re7u!a#ion an$ Ree$ies. [email protected]. ' person &ho has identified in the

mind of the public the goods he manufactures or deals in his business or services from those of others &hether or not a registered mark is employed has a property right in the good&ill of the said goods businessor services so identified &hich &ill be protected in the same manner as other property rights.+#'>3I2 1I0# "1 2I M'0% 2' P0"P+0#A 0I2# "1 #2+ ""D8I33.2+ '2 >+!I!#2+ >I!+ '!D 2I "" '0+ D+/+I>+

[email protected]. 'ny person &ho shall employ deception or any other means contrary to good faith by &hich he shalpass off the goods manufactured by him or in &hich he deals or his business or services for those of the one

having established such good&ill or &ho shall commit any acts calculated to produce said result shall beguilty of unfair competition and shall be sub*ect to an action [email protected]. In particular and &ithout in any &ay limiting the scope of protection against unfair competition thefollo&ing shall be deemed guilty of unfair competitionB

(a) 'ny person &ho is selling his goods and gives them the general appearance of goods of anothermanufacturer or dealer either as to the goods themselves or in the &rapping of the packages in &hichthey are contained or the devices or &ords thereon or in any other feature of their appearance &hich

&ould be likely to influence purchasers to believe that the goods offered are those of a manufacturer ordealer other than the actual manufacturer or dealer or &ho other&ise clothes the goods &ith suchappearance as shall deceive the public and defraud another of his legitimate trade or any subse,uenvendor of such goods or any agent of any vendor engaged in selling such goods &ith a like purpose;(b) 'ny person &ho by any artifice or device or &ho employs any other means calculated to induce the

false belief that such person is offering the services of another &ho has identified such services in themind of the public; or(c) 'ny person &ho shall make any false statement in the course of trade or &ho shall commit anyother act contrary to good faith of a nature calculated to discredit the goods business or services ofanother.>0'!D

5@V.<. #he remedies provided by ections 5?@ 5?H and 5@5 shall apply mutatis mutandis. (ec. 6L 0.'. !o.5@@a)

Sec!ion %-+( ?a!se 4esi7na#ions o6 5%i7inB ?a!se 4esc%i&#ion o% Re&%esen#a#ion . [email protected]. 'ny person &ho on

or in connection &ith any goods or services or any container for goods uses in commerce any &ord term22



name symbol or device or any combination thereof or any false designation of origin false or misleadingdescription of fact or false or misleading representation of fact &hichB

(a) Is likely to cause confusion or to cause mistake or to deceive as to the affiliation connection orassociation of such person &ith another person or as to the origin sponsorship or approval of his orher goods services or commercial activities by another person; or(b) In commercial advertising or promotion misrepresents the nature characteristics ,ualities ogeographic origin of his or her or another person9s goods services or commercial activities shall beliable to a civil action for damages and in*unction provided in ections 5?@ and 5?H of this 'ct by anyperson &ho believes that he or she is or is likely to be damaged by such act.

"!+ '/# I!10I!+M+!# '!D !1'I0 /"MP+#I#I"!

• /riminal Penalties – Independent of the civil and administrative sanctions imposed by la& a

criminal penalty of imprisonment from t&o (6) years to five (?) years and a fine ranging from1ifty thousand pesos (P?) to #&o hundred thousand pesos(P6) shall beimposed on any person &ho is found guilty of committing any of the acts mentioned inection 5?? ection 5@V and ubsection [email protected]. (Sec. 10, IPC)

+nd

Trademark Notes and Cases

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Transcript of Trademark Notes and Cases