You are on page 1of 4

Republic Act 8293 The Intellectual Property Code of the Philippines (On LAW ON TRADEMARKS, UNFAIR COMPETITION and

FALSE DESIGNATION only) Definition of Terms: 1. "Mark" means any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods. 2. "Collective 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 quality of goods or services of different enterprises which use the sign under the control of the registered owner of the collective mark. 3. "Trade name" means the name or designation identifying or distinguishing an enterprise. Trademark vs. Trade name Trademark is used to indicate the origin or ownership of the goods to which it is affixed. Trade name is a name used in trade to designate a particular business of creation individuals considered as an entity. A trade name, unlike trademarks, is not necessarily attached of affixed to the goods of the owner. Infringement Who is liable for infringement? Any person who shall, without the consent of the owner of the registered mark: a. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark or the same container or a dominant feature thereof in connection with the sale, offering for sale, distribution, advertising of any goods or services including other preparatory steps necessary to carry out the sale of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or b. Reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant feature thereof and apply such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive, shall be liable in a civil action for infringement by the registrant for the remedies hereinafter set forth: Provided, That the infringement takes place at the moment any of the acts stated in Subsection 155.1 or this subsection are committed regardless of whether there is actual sale of goods or services using the infringing material. Elements of Trademark Infringement: 1. The validity of the plaintiffs mark; 2. The plaintiffs ownership of the mark;

3. The use of the mark or its colorable imitation by the alleged infringer results in likelihood of confusion. Colorable imitation a close or ingenious imitation as to be calculated to deceive ordinary persons, or such a resemblance to the original as to deceive an ordinary purchaser giving such attention as a purchaser usually gives, as to cause him to purchase the one supposing it to be the other. Types of Confusion Arising from similar or Colorable imitaion Marks Confusion of Goods when products are competing. Confusion of Business (source or origin confusion) when products are non competing but related enough to produce confusion of affiliation. Unfair Competition Who has the right to be protected against unfair competition? Any person who has identified in the mind of the public the goods he manufactures or deals in, his business or services from those of others, whether or not a registered mark is employed has a property right in the goodwill of the said goods, business or service so identified, which will be protected in the same manner as other property rights. Who is liable for unfair competition? a. Any person who shall employ deception or any other means contrary to good faith by which he shall pass off 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 result, shall be guilty of unfair competition, and shall be subject to an action therefor. b. In particular, and without in any way limiting the scope of protection against unfair competition, the following shall be deemed guilty of unfair competition: B1. Any person, who is selling his goods and gives them the general appearance of goods of another manufacturer or dealer, either as to the goods themselves or in the wrapping of the packages in which they are contained, or the devices or words thereon, or in any other feature of their appearance, which would be likely to influence purchasers to believe that the goods offered are those of a manufacturer or dealer, other than the actual manufacturer or dealer, or who otherwise clothes the goods with such appearance as shall deceive the public and defraud another of his legitimate trade, or any subsequent vendor of such goods or any agent of any vendor engaged in selling such goods with a like purpose; B2. Any person who by any artifice, or device, or who employs any other means calculated to induce the false belief that such person is offering the services of another who has identified such services in the mind of the public; or B3. Any person who shall make any false statement in the course of trade or who shall commit any other act contrary to good faith of a nature calculated to discredit the goods, business or services of another. Elements of Unfair Competition: 1. Confusing similarity in the general appearance of the goods, and 2. Intent to deceive the public and defraud a competitor.

Trademark Infringement vs. Unfair Competition a. Infringement of trademark is the unauthorized use of a trademark; unfair competition os the passing off of ones goods as those of another. b. In infringement, fraudulent intent is unnecessary; in unfair competition fraudulent intent is essential. c. In infringement prior registration of the trademark is a prerequisite to the action; in unfair competition, registration is not necessary When trademark infringement constitutes unfair competition? Trademark infringement constitutes unfair competition when there is not merely likelihood of confusion but also actual and probable deception on the public because of the general appearance of the goods. False Designation of Origin or False Description or Representation Who is liable for false designation of origin? a. Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which: 1. Is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person; or 2. In commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities, shall be liable to a civil action for damages and injunction provided in Sections 156 and 157 of this Act by any person who believes that he or she is or is likely to be damaged by such act.

La Chemise Lacoste vs. Fernandez Facts: La Chemise Lacoste is a foreign corporation, organized and existing under the laws of France and not doing business in the Philippines. It is undeniable from the records that it is the actual owner of the abovementioned trademarks used on clothings and other goods specifically sporting apparels sold in many parts of the world and which have been marketed in the Philippines since 1964. It is a manufacturer of clothings and sporting apparels sold in the international market and bearing the trademarks "LACOSTE" "CHEMISE LACOSTE", "CROCODILE DEVICE" and a composite mark consisting of the word "LACOSTE" and a representation of a crocodile/alligator. In 1975, Hemandas & Co., a duly licensed domestic firm applied for the trademark "CHEMISE LACOSTE & CROCODILE DEVICE" and was later on granted of the same. Thereafter, Hemandas & Co. assigned to respondent Gobindram Hemandas all
rights, title, and interest in the trademark "CHEMISE LACOSTE & DEVICE". In 1980, the petitioner filed its application for registration of the trademark "Crocodile Device" and "Lacoste" and only the former was approved. In March 1983, La Chemise Lacoste filed with the NBI a letter-complaint

alleging therein the acts of unfair competition being committed by Hemandas. Contention of the Private Respondents: La Chemise does not have the right to sue because they are not engaged in doing business in the Philippines. Ruling: The Company is not here seeking to enforce any legal or control rights arising from, or growing out of, any business which it has transacted in the Philippine Islands. The sole purpose of the action is to protect its reputation, its corporate name, its goodwill, whenever that reputation, corporate name or goodwill have, through the natural development of its trade, established themselves.' And it contends that its rights to the use of its corporate and trade name: Is a property right, a right in rem, which it may assert and protect against all the world, in any of the courts of the world-even in jurisdictions where it does not transact business-just the same as it may protect its tangible property, real or personal, against trespass, or conversion. Since it is the trade and not the mark that is to be protected, a trade-mark acknowledges no territorial boundaries of municipalities or states or nations, but extends to every market where the trader's goods have become known and Identified by the use of the mark. The law on trademarks and tradenames is based on the principle of business integrity and common justice. This law, both in letter and spirit, is laid upon the premise that, while it encourages fair trade in every way and aims to foster, and not to hamper, competition, no one, especially a trader, is justified in damaging or jeopardizing another's business by fraud, deceipt, trickery or unfair methods of any sort. This necessarily precludes the trading by one dealer upon the good name and reputation built up by another.