1.

a.) Review jurisprudence under RA 166 on whether there in infringement even if goods are not similar
and non-competing and answer if Faberge v. CA was controlling jurisprudence under RA 166.
Explain your answer.

If we follow the doctrine laid down in Faberge, Inc. v. IAC, a case decided by the 3rd Division of the
Supreme Court in 1992 and a case which I personally think is an extraordinary case which departs
from the proper interpretation of the law, there is no infringement if goods are non-competing
(i.e. a junior appropriator of a trademark commits no infringement by manufacturing briefs with
respect to the senior registrant who limited its product line to after-shave lotion, shaving cream,
deodorant, talcum power, and toilet soap). Speaking through Justice Melo, the Court in this case
held that goods must be specifically identified in the Certificate of Registration under Sec. 20 of
RA 166 and the exclusive right of the trademark owner is only limited to those goods specified
therein. The Court pronounced that Sec. 20 is controlling over Sec. 4(d), effectively reversing
earlier decisions in Chua Che v. Philippine Patent Office (1965) and Sta. Ana v. Maliwat (1968),
both of which were decided by the Supreme Court En Banc, which merely used “likelihood of
confusion, deception or mistake” as standard and did not require that the goods or articles to
which the mark was being applied be similar, relying on Sec. 4(d).

HOWEVER, I do not think that Faberge, Inc. v. IAC should be controlling for the following reasons:

Firstly, the Supreme Court in the said case effectively reversed its earlier ruling in Chua Che v.
Philippine Patent Office and Sta. Ana v. Maliwat, both of which were En Banc decisions. Such act
is in violation of Art. VIII, Sec. 4(3) of the 1987 Constitution which states that “x x x no doctrine or
principle of law laid down by the court in a decision rendered En Banc or in Division may be
modified or reversed EXCEPT by the court sitting En Banc.

Secondly, a careful reading of Sec. 20 would tell us that said section does not deal in any way with
the scope of protection. It merely states that the Certificate of Registration shall be a prima facie
evidence of the validity of registration, the registrant’s ownership of the mark o trade name, and
of the registrant’s exclusive right to use the same in connection with the goods, business or
services specified in the certificate, subject to any conditions and limitations contained therein.
Sec. 20 did not define the rights of a trademark owner but merely established the evidentiary
value of a Certificate of Registration.

Thirdly, Faberge, Inc. v. IAC is no longer good law under the IP Code. The Code has introduced a
change in the phraseology of Sec. 20. Sec. 138 of the IP Code added the phrase “and those that
are related thereto.” In other words, even non-competing but related goods could be subject of
trademark infringement. The IP Code has also extended its protection even to goods or services
which are only similar to those with registered marks. Under Sec. 147.1, the trademark owner is
granted the “exclusive right to prevent all 3rd parties not having the owner’s 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.” Notably, the same import could be found
under Sec. 4(d) of RA 166. Furthermore, even goods and services which are not similar to goods
with registered marks could be protected as well so long as the use of such mark would indicate
a connection between such goods and the owner of the registered mark and that the interests of
such owner are likely to be damaged by such use. Sec. 147 is clear in defining the scope of
protection under the IP Code.

b.) What is the difference, if any, between Faberge ruling and Philippine Refining, Esso Standard, and
Hickok cases?

The main difference between Faberge and last 3 mentioned cases is the basis for determining
whether goods are non-competing or not. In the latter cases, the standard used by the Court is
the likelihood of confusion, which takes into consideration a multitude of factors (e.g. if they
belong to the same class or have the same descriptive properties or if they possess the same
physical attributes or essential characteristics or if they flow through the same or different
channels of trade) whereas in Faberge, the standard is limited to the enumeration in the
Certificate of Registration as provided for in Sec. 20. In other words, the standard in the latter-
mentioned cases is more subjective as its determination is according to the particular
circumstances of each case, following Sec. 4(d).

Even though the Philippine Refining, Esso Standard, and Hickok cases required that the goods be
competing for infringement to exist, they are much more flexible because they used more
subjective and flexible standards (i.e. whether a mark is so commonplace that it cannot be readily
distinguished from others and cannot identify a particular business under the Philippine Refining
case; or whether the goods are so related that the public may be, or is actually, deceived and
misled that they came from the same maker or manufacturer or is likely to cause confusion or
mistake or deceive purchasers of others as to the source or origin of such goods or services under
Esso Standard Eastern case).

c.) What is the rule now on the issue under the IP Code?

Since the IP Code has already defined the scope of protection in clear terms, particularly Sec. 147,
the prevailing rule now is that the protection is extended even to related or similar goods where
such use would result in a likelihood of confusion. Furthermore, as already mentioned, even goods
and services which are not similar to goods with registered marks could be protected as well so
long as the use of such mark would indicate a connection between such goods and the owner of
the registered mark and that the interests of such owner are likely to be damaged by such use.

2. Determine the differences between trademark rules and trade name rules.

Under the old law, trademark was the same as a trade name. However, under the IP Code, they
are treated differently. In order to acquire protection of a trade name, registration is not a
requirement since the basis of protection is prior use. As for remedies available, trade name
owners do not have a criminal remedy, only civil and administrative, when such trade name is not
registered. Furthermore, a trade name and the business it pertains to are treated as one. The only
way a trade name may be transferred or assigned is through the transfer of the business itself. On
the other hand, a trademark may be assigned independently of the business.