POLICARPIO PAGULAYAN & AZURA L A W O F F I C E P P A &
L A W
February 27, 2012
GOODMAN FIELDER INTERNATIONAL PHILIPPINES, INC., Unit 1104, 11 th Floor, Robinsons Galleria Corporate Center, EDSA corner Ortigas Avenue Quezon City
Attention : ANA MARIE MOTA Subject : MOTHERS CHOICE BRANDING
Gentlemen:
We refer to your queries on the legal implications in using the existing brand of Mothers Choice to Goodman Fielders dairy product.
Under the Intellectual Property Code, specifically the law on trademarks, service marks and trade names, the owner of an existing trademark, service mark and trade name that is duly registered with the Intellectual Property Office, shall have the exclusive right to the use of the trade mark or trade name and to prevent other persons from using the same. Thus, Section 147 of the Intellectual Property Code provides that:
Sec. 147. Rights Conferred.
147.1. xxx The owner of a registered mark shall have the exclusive right to prevent all third parties not having the owners consent from using in the course of trade identical or similar signs or containers for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use, of an identical sign for identical goods or services, a likelihood of confusion shall be presumed.
xxx
Unit 903 Richmonde Plaza, San Miguel Avenue cor. Lourdes Drive, Ortigas Center, Pasig City 1605 Telephone Nos. (632) 632-9039; 515-5558; 514-5559, Facsimile No. (632) 638-7251; E-mail address: ppa_lawoffice@yahoo.com ppalaw@pldtdsl.net, and lcplaw@pdtdsl.net
POLICARPIO PAGULAYAN & AZURA L A W O F F I C E P P A &
L A W
In interpreting the above mentioned provision, the following requisites must concur:
1-the registered trademark/trade name is being used in the course of trade by a person other than the owner of the registered owner of the trade name; 2-the third person is using a mark/trade name which is identical or similar to the registered trademark/trade name; 3-the third person is using signs or containers for goods or services which are identical or similar to those in respect of which the trademark/trade name is registered; 4-the use of the registered trademark/trade name by the third person would result in a likelihood of confusion; and 5- the use of the registered trademark is without the consent of its owner.
Based on the above provision of law, any person or entity that would use the trade name Mothers Choice without the consent of the registered owner of the said trade name would be facing a potential law suit for infringement with liability for damages, as the case may be. The registered owner, shall also have the right to ask the court for an injunction to prevent the other person from using the trade mark/trade name and to destroy the infringing goods.
Considering that Goodman Fielder International Philippines, Inc. intends to use the brand name Mothers Choice to its dairy products, there is a possibility that this would create confusion to the mind of the public. Aside from the likelihood of confusion, Goodman Fielders intention to use the trade name to its dairy product is identical or similar to the existing brand of Mothers Choice being used in sauces/seasonings, that is the food industry.
Should there be a need for clarification, please let us know. Thank you.
Very truly yours,
RUFINO L. POLICARPIO III JO PAUL B. GATAPIA Of the Firm Of the Firm
Unit 903 Richmonde Plaza, San Miguel Avenue cor. Lourdes Drive, Ortigas Center, Pasig City 1605 Telephone Nos. (632) 632-9039; 515-5558; 514-5559, Facsimile No. (632) 638-7251; E-mail address: ppa_lawoffice@yahoo.com ppalaw@pldtdsl.net, and lcplaw@pdtdsl.net
POLICARPIO PAGULAYAN & AZURA L A W O F F I C E P P A &