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IPL- Prof Amador's Presentation

IPL- Prof Amador's Presentation

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Pau Duman / Intellectual Property Rights / Prof. Amador / Page 1
IPL 134 TrademarksProf. Vicente B. AmadorSenior PartnerSycip Salazar Hernandez & Gatmaitan
Acquisition of marks by RegistrationSECTION 122.How Marks are Acquired. - The rightsin a mark shall be acquired through registration madevalidly in accordance with the provisions of this law. (Sec. 2-A, R A. No. 166a)Maintaining trademark rights through actual use124.2.The applicant or the registrant shall file a declarationof actual use of the mark with evidence to that effect, asprescribed by the Regulations within three (3) years fromthe filing date of the application. Otherwise, the applicationshall be refused or the mark shall be removed from theRegister by the Director.124.3.One (1) application may relate to several goodsand/or services, whether they belong to one (l) class or toseveral classes of the Nice Classification.Developers Group of Companies, Inc. vs. Shangri-laInternational Hotel Management, Inc. et. al. CA- G. R. CVNo. 53351Developers is the registered owner of the mark Shangri-Laand S Logo in the Philippines under Regn. No. 31904 issuedon May 31, 1983, which it started using in 1982.SIHM is the beneficial owner of the Shangri-La and the SLogo, which it started using in 1962 as part of its corporatename and as a mark for its hotels starting in 1975. Itclaims that this mark is internationally well-known and isprotected under the Paris Convention.1.Issue: Real Party in Interest? “SLIHM is not the owner of the Shangri-la hotels, butthrough a licensing agreement, operates the same hotels.Logically, a member of a group of companies cannot claimownership over the alleged properties of its mothercompany or any member of the conglomeration, which hasdistinct and separate personality of its own. Thus,defendant SLIM cannot claim to legally own the subjectShangri-la trademark and S-logo by virtue of the allegedownership of the same by Kuok Group.” 2. Issue: Is there trademark infringement? “Granting that Kuok’s use of the Shangri-law tradename andS-Logo since 1962 benefits defendant-appellant SLIHM as amember of the conglomerate, the same is not the actual userequired under Republic Act No. 166. The law requires theactual use in commerce of the said tradename and S-Logoin the Philippines. The bulk of defendants-appellants’ evidence show that the alleged use of the Shangri-latradename was done abroad and not in the Philippines. Thename Shangri-la was only actually used in the Philippineswhen the hotels with the same name were constructed in1987. Defendants-appellants’ actual use in commerce of thesubject tradename and S-logo in the Philippines commencedonly in 1987.The alleged defendants-appellants’ publication of advertisement worldwide is unavailing. To reiterate theSupreme Court ruling – Such right grows out of their actualuse. Adoption is not use. One may make advertisements,
 
Pau Duman / Intellectual Property Rights / Prof. Amador / Page 2
issue circulars, give out price lists on certain goods; butthese alone would not give exclusive right of use.” If this case is decided under the IP Code, will the outcomebe different?Secondary meaning or acquired distinctivenessmay be gained only with respect to marks underparagraphs (j),(k) and (l)Precedents on Secondary Meaning
Phil. Nut Industry Inc. vs. Standard Brands Inc., GRL-23035, July 31, 1975; PLANTERS trademark
Ang vs. Teodoro, GR No. L-48226, December 14,194; ANG TIBAY trademarkSec. 123.2.As regards signs or devices mentioned inparagraphs (j), (k), and (l), nothing shall prevent theregistration of any such sign or device which has becomedistinctive in relation to the goods for which registration isrequested as a result of the use that have been made of itin commerce in the Philippines.The Office may accept as prima facie evidence that themark has become distinctive, as used in connection with theapplicant's goods or services in commerce, proof of substantially exclusive and continuous use thereof by theapplicant in commerce in the Philippines for five (5) yearsbefore the date on which the claim of distinctiveness ismade.SOCIETE DES PRODUITS NESTLE, S.A. and NESTLEPHILIPPINES, INC. vs. COURT OF APPEALS and CFCCORPORATION, G.R. No. 112012. April 4, 2001.Nestle’s Marks: MASTER ROAST and MASTER BLEND."CFC’s Marks: "FLAVOR MASTER"Nestle filed notice of opposition to CFC’s application forFLAVOR MASTERCFC argued that its trademark, FLAVOR MASTER, is notconfusingly similar with the former's trademarks, MASTERROAST and MASTER BLEND.1. MASTER is either a generic or descriptive word Otherwords used with the trademarks are very different fromeach other — in meaning, spelling, pronunciation, andsound.Bureau of Patents denied CFC’s trademark application, butCA reversed its decision and ruled in favor of CFC.CA held that the physical discrepancies between appellantCFC's and appellee's respective logos are so ostensible thatthe casual purchaser cannot likely mistake one for the other.Supreme Court reversed the CA: 1. The Court of Appeals applied some judicial precedentswhich are not on all fours with this case. 2. In infringement or trademark cases in the Philippines, noset rules can be deduced in ascertaining whether onetrademark is confusingly similar to or is a colorable imitationof another. Each case must be decided on its own merits.2.The cases cited by the Court of Appeals to justify theapplication of the totality or holistic test to this caseare inapplicable, the factual circumstances beingsubstantially different.3.BIOFERIN and BUFFERIN for pains caused headaches andcolds are spelled and pronounced differently and areprescribed by physicians
 
Pau Duman / Intellectual Property Rights / Prof. Amador / Page 3
ALACTA for goods under Class 6 for pharmaceutical andnutritional preparation is distinguishable from ALASKA forgoods under Class 47 for food ingredients. The latter doesnot require prescription.4. "The determination of whether two trademarks areindeed confusingly similar must be taken from the viewpointof the ordinary purchasers who are, in general,undiscerningly rash in buying the more common and lessexpensive household products like coffee, and are thereforeless inclined to closely examine specific details of similaritiesand dissimilarities between competing products." 5. MASTER is the dominant feature of opposer's mark.MASTER is printed predominantly on the label andemphasized in TV, radio and printed advertising materialswith personalities like Robert Jaworski and Atty. Ric Puno Jr.,who are given the titles Master of the Game and Master of the Talk Show.6. In addition, the word "MASTER" is neither a generic nor adescriptive term. As such, said term can not be invalidatedas a trademark and, therefore, may be legally protected.Rather, the term "MASTER" is a suggestive term broughtabout by the advertising scheme of Nestle.7. The term "MASTER", therefore, has acquired a certainconnotation to mean the coffee products MASTER ROASTand MASTER BLEND produced by Nestle. As such, the useby CFC of the term "MASTER" in the trademark for its coffeeproduct FLAVOR MASTER is likely to cause confusion ormistake or even to deceive the ordinary purchasers.Territorial character of trademarks
Philip Morris Inc. et. al. vs. Fortune Tobacco Corp.,July 16, 1993 “[T]here is no proof whatsoever that any of plaintiff’sproducts which they seek to protect from any adverse effectof the trademark applied for by defendant, is in actual useand available for commercial purposes anywhere in thePhilippines.***In assailing the justification arrived at by respondent courtwhen it recalled the writ of preliminary injunction,petitioners are of the impression that actual use of theirtrademarks in Philippine commercial dealings is not anindispensable element under Article 2 of the ParisConvention in that:(2) …no condition as to the possession of a domiciled orestablishment in the country where protection is claimedmay be required of persons entitled to the benefits of theUnion for the enjoyment of any industrial property rights.Yet petitioner’s perception along this line is nonethelessresolved by Sections 2 and 2-A of the Trademark Law whichspeaks about the necessity of actual commercial use of thetrademark in the local forum: …Following universal acquiescence and comity, our municipallaw on trademarks regarding the requirement of actual usein the Philippines must subordinate an internationalagreement inasmuch as the apparent clash is being decidedby a municipal tribunal. … Under the doctrine of incorporation as applied in most countries, rules of international law are given a standing equal, if not superior,to national legislative enactments.” 
But see Section 123(e) * * * In determiningwhether a mark is well known, account shallbe taken of the knowledge of the relevant sector of thepublic, rather than of the public at large, including

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