LAW ON TRADEMARK

From the book of Atty Ernesto Salao and class discussion on Intellectual Property Code

Significant innovations:
1. Rqt of prior use of the mark as a requisite for the filing of the trademark regis has been
removed
2. Use or regis in the Phil of well-known marks is no longer required for its protection to
similar goods. If the well-know marks are registered, such regis can protect its use even to
non-related products
3. Supplemental register has been abolished

Trademark a distinctive mark of authenticity through which the merchandise of a particular

producer or manufacturer may be distinguished from that of others, and it sole fxn is designate
distinctively the origin of the products to which it is attached.
- Visible sign

Collective mark any visible sign designated as such in the app for regis and capable of
distinguishing the origin of any other common char, inc quality of goods of diff enterprises which
use the sign under the control of the regis owner of the collective mark.

Acquiring a Mark
The rights in a mark shall be obtained through registration.

If the applicant is not the owner of the mark, he has no right to apply for its registration.

BIRKENSTOCK v. PHILIPPINE SHOE EXPO MKTG (2013)

In order to register a TM one must be the owner thereof anf must have actually used the mark in
commerce in the Phil for 2 mos prior to the application for regis. Registration of a TM, by itself, is
not a mode of acquiring ownership. It is not the application or registration of a TM that vest
ownership thereof, but it is the ownershio of a TM that confers the right to regis the same. A TM
is an industrial prop over which the owner is entitle to prop rights which cannot be appropriated by
unscrupulous entities that, in one way or another, happen to regis such TM ahead of its true owner.

Function of symbols:
1. To point out distinctly the origin or ownership of the goods where it is affixed
2. To assure the public that they procuring the genuine article
3. Advertise the articles they symbolize

Today, TM is not merely a symbol of origin and goodwill; it is often the most effective agent of
actual creation and protection of goodwill. It imprints upon the public mind and anonymous and
impersonal guaranty of satisfaction, creating a desire for further satisfaction.

Non-registrable marks marks is registrable as long as it does not fall under the category
mentioned in Sec 123.
 1. Consist of immoral, deceptive and scandalous matter
2. Consists of the flag, coat of arms, insignia of the Phil, of its pol subd, or of any foreign
nation
3. Identical with a registered mark belonging to a diff proprietor
4. Identical or confusingly similar to or constitutes a translation a mark well-known
internationally whether regis here or not
5. Likely to mislead to public as to is quality, char and geographical origin
6. Consists exclusively of signs that are generic for the goods
7. Consists of color alone
8. Contrary to public order or morality

Falsely suggesting connection justly riding on the goodwill of another

FREDCO MFTG v. HARVARD COLLEGE (2O11)

Fredcos regis of the mark should not have been allowed since it falsely suggests connection with
Harvard Fredco does not have any affiliation with Harvard Univ or even with Cambridge,
Massachusetts.
Harvard is the Trade name of the world famous Harvard Univ, and it is also the TM of the Harvard
Univ. Under the Paris Convention and RA 166, Harvard Univ is entitled to protection in the
Philippines of its trade name Harvard even without registration of such trade name in the Phil.
The name Harvard and the logos, emblems or symbols are endemic and cannot be separated from
the inst. As such, even before Harvard Univ applied for regis of the mark in the Phil, the mark was
already protected y the Paris Convention.

Identical with registered mark

ANA ANG v. TORIBIO TEODORO (1942)

From all of this we deduce that Ang Tibay is not a descriptive term within the meaning of the
Trademark Law but rather a fanciful or coined phrase which may properly and legally be
appropriated as a trademark or trade name. In this connection we do not fail to note that when the
petitioner herself took the trouble and expense of securing the regis of these words as trademark
of her products. The mere relation or assoc of the articles is not controlling. The proprietary
connotation that a trade-mark or trade-name has acquired is of more paramount importance. It is
not farfetched to surmise that the selection by pet of the same was motivated by the desire to get
a free ride on the reputation and selling power it has acquired in the hands of respondent.

Colorable imitation a close or ingenious imitation as to be calculated to deceive an ordinary person

MCDONALDS v. L.C. BIG MAK BURGER

Pet has the exclusive right to use the Big Mac mark. On the other hand, respondent would benefit
by associate their low-end hamburgers, through the use of the Big Mak mark with Pets high-end
hamburgers, leading to likelihood of confusion in the identity of business.
The Court has recognized that the registered TM owner enjoys protection in product and market
areas that are the normal potential expansion of business.
MCDONALDS v. MACJOY FASTFOOD
Applying the dominancy test to the instant case, the Court finds that McDonalds and Macjoy
marks are confusing with each other and that an ordinary purchaser can conclude an association or
relation between the marks. Besides and most importantly, both TM are used in the sale of
fastfood products. The variations in the marks are inconsequential. These miniature variations are
overshadowed by the appearance of the predominant features.

The likelihood of confusion is tantamount to a finding of infringement.

2 kinds of confusion:
1. Confusion of goods an otherwise prudent purchaser is induced to purchase one product in
the belief that he is purchasing another
2. Confusion of business assuming to originate from the same company

Test to determine colorable imitation:

1. Dominancy test focuses in the similarity of the prevalent feature of the competing TMs,
which might cause confusion or deception, and thus infringement. If the competing
trademark contains the main, essential or dominant feature of another, and confusion or
deception is likely to result, infringement takes place.
The question is whether the use of the marks involved is likely to cause confusion or mistake in
the mind of the public or deceive purchasers.

SKECHERS v. INTER PACIFIC INDUSTRIAL TRADING

Respondents shoes may not be an exact replica of Pets shoes, but the features and overall design
are so similar and alike that confusion is highly likely. Neither can the difference in price be a
complete defense in trademark infringement.
Protection of TM is intended not only to preserve the goodwill and reputation of the TM owner but
also to safeguard the public against confusion on these goods.

ASIA BREWERY v. CA
There is absolutely no similarity in the dominant features of both TMs. Infringement is determined
by the test of dominancy rather than difference of variations in the details of one Tm and of
another. Similarity in size, form, and color, while relevant is not conclusive.

PROSOURCE INTL v. HORPHAG RESEARCH

(PCO-GENOLS and PYCNOGENOLS)
When the 2 words are pronounced, the sound effects are confusingly similar. Not to mention that
they are both described by their manufacturers as food supplement, and thus identified as such by
their public consumers. The Court takes account of the aural effects of the words and letters
contained in the marks.

2. Holistic Test entails a consideration of the entirety of the marks as applied to the
products, the labels and packaging, in determining confusing similarity.

DEL MONTE CORP v. CA (Sunshine)

Side-by-side comparison is not the final test of similarity. The ordinary buyer does not usually make
such scrutiny nor does he has always the time to do so. An average shopper is usually in a hurry and
does not inspect every product in the shelf.
We must consider the mark as a whole and not as dissected. If the buyer is deceived it is
attributable to the marks as a totality, not usually to any part of it. The Court therefore should be
guided by its first impression, for a buyer acts quickly and is governed by a casual glance.
The person who infringes a TM does not normally copy out but only makes colorable changes,
employing enough points to confuse the public with enough point of differences to confuse the
courts. What is undeniable is the fact that when a manufacturer prepares his product, he has
before him a boundless of choices of words, colors and symbols sufficient to distinguish his product
from the others.

FRUIT OF THE LOOM v. CA

(Fruit of the Loom and the Fruit of Eve)
Comparison of the words is not the only determinant factor. The TM in their entirety as they
appear in their respective label or hang tags must also be considered in relation to the goods in
which they are attached.
The similarities of the competing TM in this case are completely lost in the substantial difference
in the design and respective appearance of their hang tags. The ordinary purchaser must be
thoughtful of having, and credited with, at least a modicum of intelligence.

BERRIES AGRICULTURAL v. ABYADANG

Likelihood of confusion is more manifest when Holistic test is applied, taking into consideration the
packaging, for both use the same type of material (foil type) and have identical color schemes, and
marks are both predominantly red in color with the same phrase broad spectrum fungicide written
underneath.

Actual confusion NOT necessary only likelihood of confusion

Use of a mark identical with or confusingly similar with a well-known mark even if such well-known
mark is not registered in the Phil is disallowed!

If the well-known mark is registered in the Phil, prohibition to the use of mark extends to non-
related goods or services!

Under Phil Law, a trade name of a national of a State that is a party to the Paris Convention,
whether or not the trade name forms part of the trademark, is protected with the oblig of filing
or registration. Harvard Case

Use of a well-known mark on unrelated goods or services

246 CORP v. HON. DAWAY (Rolex and Rolex Music Lounge)

A junior user of a well-known mark on goods or services which are not similar to the goods and
services , and are therefore unrelated, to the specified in the certificate of registration of the
well-known mark, is PRECLUDED from using the same on the ENTIRELY UNRELATED goods or
services subj to the ff requisites:
1. Mark is well-known internationally and in the Phil
2. Use of the well-known mark on the entirely unrelated goods or service would indicate a
connection between the unrelated goods or services
3. Interest of the owner of the well-known mark are likely to de damaged

ECOLE DE CUISINE MANILLE v. RENAUD COINTREAU (Cordon Blue of the Phil)

Foreign marks which are not registered are still afforded protection against infringement and/or
unfair competition.
RA 8293 (IPC) dispensed with the reqt of prior actual use at the time of registration.

Criteria to determine when a mark is well-known knowledge of relevant sector of the public,
rather than of the public at large

Competent authority IPO, DTI, SC as the final arbiter

Mark that is considered GENERIC

Generic terms those which constitute the common descriptive term of an article, or comprise the
genus of which the particular product is a species

A term is descriptive if it conveys the characteristics, function, qualities or ingredients of a

product to one who has never seen it and does not know what it is

LYCEUM OF THE PHIL v. CA

Lyceum is generic in character as the word university. Since Lyceum or liceo denotes a school or
institution of learning, it is not unnatural to use this word to designate an entity which is organized
and operating as an educational institution.

ASIA BREWERY v. CA
Pale Pilsen is a descriptive term. Hence, non-registrable and not appropriable by any beer
manufacturer.

Marks indicating geographical origin

Geographical descriptive term noun or adjective that designates geographical location and would
tend to be regarded by buyers as descriptive of the geographical location of origin of the goods or
services

Question: Is the mark the name of the place from which the goods actually come? If yes, then the
geographic term is probably used in a descriptive sense, and secondary meaning is required for
protection.

SHANG PROPERTIES v. ST. FRANCIS DEVT CORP

St. Francis is a descriptive geographical term. The descriptive geographical terms are in the public
domain in the sense that every seller should have the right to inform customers of the geographic
origin of the goods.

Rights over a trademark or service are acquired through registration.

Procedure:
Application applicant may be a natural or juridical person; all must be named

Disclaimer disclaim unregistrable component of an otherwise registrable mark

Declaration of actual use registrant shall file a dec of actual use if the mark with evidence within
3 yrs from the filling date. Otherwise, the reg shall be refused or removed from the Register.
**proof of use in commerce in the processing of TM app is not required.

Filing date First to file rule. Date which all the reqt are submitted:
-express/ implicit indication that regis is sought
-identity of applicant
-contract info of applicant
-a reproduction of the mark sought to be registered
-list of goods/ services for which regis is sought
-payment of fee

Priority date applications filed in other countries

Reciprocity any national, domiciled in a country which is a party to any convention, treaty relating
to intellectual prop rights or the repression of UC, to which the Phil is a party, or extends
reciprocal rights to nationals of the Phil by law, shall be entitled to benefits to extent necessary to
give effect to conventions, treaty or reciprocal law, in addition to rights bestowed by the IPC.

Examination procedure check compliance to reqt of filing date (if denied, 4 mos to amend app),
publishing

Opposition with 30 days from publishing

Issuance of Cert no opposition, opposition denied by the Dir of BLA, paid fee

Duration of Cert of Reg 10 yrs provided that applicant shall file a dec of actual use

Renewal renewed for a period of 10 yrs (6 mos before expiry)

Rights Conferred exclusive right to prevent all third parties not having the owners consent from
using the course of trade identical or similar signs or containers for goods or services which are
identical to those in respect to which the registered where such use would result to the likelihood
of confusion (Dermaline v. Myra Pharmaceuticals).
Limitation on Trademarks involving medicines (RA 9502) aims to bring down prices of medicines

There shall be no infringement of TM or trade names of incorporated or sold patented drugs and
medicines allowed of this Act, as well as imported or sold off-patent drugs and medicines: Provided,
That, said drugs and medicines bear the registered marks that have not been tampered, unlawfully
modified, or infringed upon.

Law allows third person the right to import the medicines. The unqualified right of private third
parties such as petitioners to import or possess unregistered imported drugs in the Phil is further
confirmed by the IRR of RA 9502.

Rights conferred to owner of well-known mark extend to goods and services which are not similar
to those in respect of which mark is registered

Cancellation of Registration filed at the BLA within 5 yrs from the date of registration of the
mark

Grounds:
1. Mark becomes generic name for the goods/ services
2. Mark has been abandoned
3. Mark was fraudulently obtained
4. Mark used to represent the source of goods/ services
5. Fails to use the mark for an uninterrupted period of 3 yrs or longer

REMEDIES AGAINST TRADEMARK INFRINGEMENT

Civil Remedies
1. Infringement
Elements of Infringement (Prosource v. Horphag)
1. TM being infringe is regis in the IPO
2. TM is reproduce, counterfeited, copied or colorably imitated by the infringer
3. Infringing mark is used in connection with the sale, offering for sale or advertising
4. Use of application of the infringing mark is likely to cause confusion or mistake or deceive
purchasers
5. It is without the consent of the TM owner

The element of the likelihood of confusion that is the gravamen of TM infringement

Trademark dilution lessening of the capacity of a famous mark to identify and distinguish goods or
services, regardless of the presence or absence of competition or likelihood of confusion, mistake
or deception

2. Injunction
LEVI STRAUSS v. CLINTON APPARELLE -
To be eligible for protection from dilution, there has to be a finding that:
 1. TM sought to be protected is famous and distinctive
2. Use of respondent of Paddocks and Design began after petitioners mark became famous
3. Such subsequent use defames petitioners mark

3. Action for fraudulent declaration

4. Damages and Injunction
Measure of damages reasonable profit which the complaining party would have made, had
the defendant not infringed his rights OR the profit which the defendant actually made out
of the infringement
5. Destruction of Infringing material

Limitation remedies given to an owner cannot be availed of

1. Prior user
2. Printer of infringing mark - injunction
3. Advertisement injunction
4. Imported drugs RA 9502 (Universally Accessible Cheaper And Quality Medicines Act of
2008)

TRADE NAME name / designation identifying or distinguishing an enterprise

- Distinguished ones business entity from the rest of the industry
- Protected even without registration

COFFEE PARTNERS v. SAN FRANCISCO COFFEE

A trade name need not be registered with the IPO before an infringement suit may be filed by its
owner against the owner of an infringing mark. All that is required is that the trade name is
previously used in trade or commerce in the Phil.

UNFAIR COMPETITION
Law thus holds any person who shall employ deception or any other means contrary to GF by which
he shall pass of the goods manufactured by him or in which he deals, or his business or services for
those of the one having established such goodwill, or who shall commit any acts calculated to
produce said results, guilty of unfair competition, and shall be subject to an action therefor.

Scope of UC
1. Any person, who is selling his goods and GIVES THE APPEARANCE of another
manufacturer, either in the goods themselves of the wrapping of the package, which could
likely to influence purchasers to believe that the goods offered are those of the
manufacturer, other than the actual manufacturer
2. Any person, who by artifice or device, INDUCE THE FALSE BELIEF that such person
offers the services of another who has identified such service in the mind of the public
3. Any person, who SHALL MAKE FALSE STATEMENT in course of trade to discredit to
business, goods or service of another
The essential elements of an action for UC are (1) confusing similarity in the general appearance of
the goods, and (2) intent to deceive the public and defraud the competitor (McDonalds v. L.C. Big
Mak).

UC is broader than TM infringement and includes the passing off of good with or without trademark
infringement. TM infringement is a form of UC. TM infringement constitutes UC when there is not
merely likelihood of confusion, but also actual or probable deception on the public because of the
general appearance of the goods. There can be TM infringement without UC when the infringer
discloses on the labels containing the mark that he manufactures the goods thus preventing the
public from being deceive that the goods originate from the owner.

Infringement of TM vs. UC
Unauthorized use of TM Passing off of ones goods as those of another
Intent is unnecessary Fraudulent intent is essential
Prior registration of the mark is a prerequisites Registration not necessary
to the action

False designation of origin

The law on trademarks and trade names precisely precludes a person from profiting from the
business reputation built by another and from deceiving the public as to the origins of products
(Uyco, et. al. v. Lo).

UC under the Art 28 of the CC

In order to qualify the competition as unfair, it must have 2 characteristics:
1. It must involve an injury to a competitor or trade rival, and
2. It must involves acts which are characterized as contrary to good conscience, or shocking
to judicial sensibilities, or otherwise unlawful.

Willaware v. Jesichris
Petitioners hiring of former employees of respondent and petitioners act of copying the subject
plastic parts of respondents were tantamount to unfair competition.

Criminal Penalty
Independent of civil and administrative sanction is the criminal penalty of imprisonment and fine is
imposed by RA 8293.