IPL Prof Amadors Presentation

Pau Duman / Intellectual Property Rights / Prof.
Amador / Page 1
IPL 134 Trademarks
Prof. Vicente B. Amador
Senior Partner
Sycip Salazar Hernandez !atmaitan
Acquisition of marks by Registration
S!"I#$ 1%%. &o' (arks are Acquired. ) "he rights
in a mark shall be acquired through registration made
*alidly in accordance 'ith the pro*isions of this la'. +Sec.
%)A, R A. $o. 1--a.
(aintaining trademark rights through actual use
1%/.%. "he applicant or the registrant shall file a declaration
of actual use of the mark 'ith e*idence to that effect, as
prescribed by the Regulations 'ithin three +0. years from
the filing date of the application. #ther'ise, the application
shall be refused or the mark shall be remo*ed from the
Register by the Director.
1%/.0. #ne +1. application may relate to se*eral goods
and/or ser*ices, 'hether they belong to one +l. class or to
se*eral classes of the $ice !lassification.
De*elopers 1roup of !ompanies, Inc. *s. Shangri)la
International &otel (anagement, Inc. et. al. !A) 1. R. !2
$o. 30031
De*elopers is the registered o'ner of the mark Shangri)4a
and S 4ogo in the Philippines under Regn. $o. 0156/ issued
on (ay 01, 1570, 'hich it started using in 157%.
SI&( is the beneficial o'ner of the Shangri)4a and the S
4ogo, 'hich it started using in 15-% as part of its corporate
name and as a mark for its hotels starting in 1583. It
claims that this mark is internationally 'ell)kno'n and is
protected under the Paris !on*ention.
1. Issue9 Real Party in Interest:
;S4I&( is not the o'ner of the Shangri)la hotels, but
through a licensing agreement, operates the same hotels.
4ogically, a member of a group of companies cannot claim
o'nership o*er the alleged properties of its mother
company or any member of the conglomeration, 'hich has
distinct and separate personality of its o'n. "hus,
defendant S4I( cannot claim to legally o'n the sub<ect
Shangri)la trademark and S)logo by *irtue of the alleged
o'nership of the same by =uok 1roup.>
%. Issue9 Is there trademark infringement:
;1ranting that =uok?s use of the Shangri)la' tradename
and S)4ogo since 15-% benefits defendant)appellant S4I&(
as a member of the conglomerate, the same is not the
actual use required under Republic Act $o. 1--. "he la'
requires the actual use in commerce of the said tradename
and S)4ogo in the Philippines. "he bulk of defendants)
appellants? e*idence sho' that the alleged use of the
Shangri)la tradename 'as done abroad and not in the
Philippines. "he name Shangri)la 'as only actually used in
the Philippines 'hen the hotels 'ith the same name 'ere
constructed in 1578. Defendants)appellants? actual use in
commerce of the sub<ect tradename and S)logo in the
Philippines commenced only in 1578.
"he alleged defendants)appellants? publication of
ad*ertisement 'orld'ide is una*ailing. "o reiterate the
Supreme !ourt ruling @ Such right gro's out of their actual
use. Adoption is not use. #ne may make ad*ertisements,
Pau Duman / Intellectual Property Rights / Prof. Amador / Page %
issue circulars, gi*e out price lists on certain goodsA but
these alone 'ould not gi*e eBclusi*e right of use.>
If this case is decided under the IP !ode, 'ill the outcome
be different:
Secondary meaning or acquired distincti*eness
may be gained only 'ith respect to marks under
paragraphs +<.,+k. and +l.
Precedents on Secondary (eaning
Phil. $ut Industry Inc. *s. Standard Crands Inc., 1R
4)%0603, Duly 01, 1583A P4A$"RS trademark
Ang *s. "eodoro, 1R $o. 4)/7%%-, December 1/,
15/A A$1 "ICAE trademark
Sec. 1%0.%. As regards signs or de*ices mentioned in
paragraphs +<., +k., and +l., nothing shall pre*ent the
registration of any such sign or de*ice 'hich has become
distincti*e in relation to the goods for 'hich registration is
requested as a result of the use that ha*e been made of it
in commerce in the Philippines.
"he #ffice may accept as prima facie e*idence that the
mark has become distincti*e, as used in connection 'ith the
applicantFs goods or ser*ices in commerce, proof of
substantially eBclusi*e and continuous use thereof by the
applicant in commerce in the Philippines for fi*e +3. years
before the date on 'hich the claim of distincti*eness is
made.
S#!I" DS PR#DGI"S $S"4, S.A. and $S"4
P&I4IPPI$S, I$!. *s. !#GR" #H APPA4S and !H!
!#RP#RA"I#$, 1.R. $o. 11%61%. April /, %661.
$estle?s (arks9 (AS"R R#AS" and (AS"R C4$D.I
!H!?s (arks9 IH4A2#R (AS"RI
$estle filed notice of opposition to !H!?s application for
H4A2#R (AS"R
!H! argued that its trademark, H4A2#R (AS"R, is not
confusingly similar 'ith the formerFs trademarks, (AS"R
R#AS" and (AS"R C4$D.
1. (AS"R is either a generic or descripti*e 'ord #ther
'ords used 'ith the trademarks are *ery different from
each other J in meaning, spelling, pronunciation, and
sound.
Cureau of Patents denied !H!?s trademark application, but
!A re*ersed its decision and ruled in fa*or of !H!.
!A held that the physical discrepancies bet'een appellant
!H!Fs and appelleeFs respecti*e logos are so ostensible that
the casual purchaser cannot likely mistake one for the
other.
Supreme !ourt re*ersed the !A9

1. "he !ourt of Appeals applied some <udicial precedents
'hich are not on all fours 'ith this case.

%. In infringement or trademark cases in the Philippines, no
set rules can be deduced in ascertaining 'hether one
trademark is confusingly similar to or is a colorable imitation
of another. ach case must be decided on its o'n merits.
%. "he cases cited by the !ourt of Appeals to <ustify the
application of the totality or holistic test to this case
are inapplicable, the factual circumstances being
substantially different.
0.
CI#HRI$ and CGHHRI$ for pains caused headaches and
colds are spelled and pronounced differently and are
prescribed by physicians
Pau Duman / Intellectual Property Rights / Prof. Amador / Page 0
A4A!"A for goods under !lass - for pharmaceutical and
nutritional preparation is distinguishable from A4AS=A for
goods under !lass /8 for food ingredients. "he latter does
not require prescription.
/. I"he determination of 'hether t'o trademarks are
indeed confusingly similar must be taken from the *ie'point
of the ordinary purchasers 'ho are, in general,
undiscerningly rash in buying the more common and less
eBpensi*e household products like coffee, and are therefore
less inclined to closely eBamine specific details of similarities
and dissimilarities bet'een competing products.I

3. (AS"R is the dominant feature of opposerFs mark.
(AS"R is printed predominantly on the label and
emphasiKed in "2, radio and printed ad*ertising materials
'ith personalities like Robert Da'orski and Atty. Ric Puno
Dr., 'ho are gi*en the titles (aster of the 1ame and (aster
of the "alk Sho'.
-. In addition, the 'ord I(AS"RI is neither a generic nor a
descripti*e term. As such, said term can not be in*alidated
as a trademark and, therefore, may be legally protected.
Rather, the term I(AS"RI is a suggesti*e term brought
about by the ad*ertising scheme of $estle.
8. "he term I(AS"RI, therefore, has acquired a certain
connotation to mean the coffee products (AS"R R#AS"
and (AS"R C4$D produced by $estle. As such, the use
by !H! of the term I(AS"RI in the trademark for its coffee
product H4A2#R (AS"R is likely to cause confusion or
mistake or e*en to decei*e the ordinary purchasers.
"erritorial character of trademarks
Philip (orris Inc. et. al. *s. Hortune "obacco !orp.,
Duly 1-, 1550
;L"Mhere is no proof 'hatsoe*er that any of plaintiff?s
products 'hich they seek to protect from any ad*erse effect
of the trademark applied for by defendant, is in actual use
and a*ailable for commercial purposes any'here in the
Philippines.NNN
In assailing the <ustification arri*ed at by respondent court
'hen it recalled the 'rit of preliminary in<unction,
petitioners are of the impression that actual use of their
trademarks in Philippine commercial dealings is not an
indispensable element under Article % of the Paris
!on*ention in that9
+%. Ono condition as to the possession of a domiciled or
establishment in the country 'here protection is claimed
may be required of persons entitled to the benefits of the
Gnion for the en<oyment of any industrial property rights.
Eet petitioner?s perception along this line is nonetheless
resol*ed by Sections % and %)A of the "rademark 4a' 'hich
speaks about the necessity of actual commercial use of the
trademark in the local forum9 O
Hollo'ing uni*ersal acquiescence and comity, our municipal
la' on trademarks regarding the requirement of actual use
in the Philippines must subordinate an international
agreement inasmuch as the apparent clash is being decided
by a municipal tribunal. O Gnder the doctrine of
incorporation as applied in most countries, rules of
international la' are gi*en a standing equal, if not superior,
to national legislati*e enactments.>
Cut see Section 1%0+e. N N N In determining
'hether a mark is 'ell kno'n, account shall
be taken of the kno'ledge of the rele*ant sector of the
public, rather than of the public at large, including
Pau Duman / Intellectual Property Rights / Prof. Amador / Page /
kno'ledge in the Philippines 'hich has been obtained as a
result of the promotion of the markA
;"hrough ad*ertisement, a 'ell)established and 'ell)earned
reputation may be gained in countries 'here the trademark
o'ner has itself no established business connection.
1ood'ill may thus be seen to be much less confined
territorially than say, a hundred or fifty years ago. It is no
longer true that a trademark of itself cannot tra*el to
markets 'here there is no article to 'ear the badge and no
trader to offer the article. Ad*ertisement of trademark is
geared to'ard promotion of use of the marked article and
the attraction of potential buyers and usersA by fiBing the
identity of the marked article in the public mind, it prepares
the 'ay for gro'th in such commerce 'hether the
commerce be handled by the trademark o'ner itself or by
its licensees or independent traders.>
See also9
S!"I#$ 0. International !on*entions and Reciprocity. )
Any person 'ho is a national or 'ho is domiciled or has a
real and effecti*e industrial establishment in a country
'hich is a party to any con*ention, treaty or agreement
relating to intellectual property rights or the repression of
unfair competition, to 'hich the Philippines is also a party,
or eBtends reciprocal rights to nationals of the
Philippines by la', shall be entitled to benefits to the eBtent
necessary to gi*e effect to any pro*ision of such con*ention,
treaty or reciprocal la', in addition to the rights to 'hich
any o'ner of an intellectual property right is other'ise
entitled by this Act. +n.
ssential Steps to Protection
Actual use in commerce
Application process
early filing date or priority date
Bamination process
conflict 'ith other marks applied for or m
registered or 'ith prior users of the trademark

&o' to #btain Protection
Actual use in commerce
Application for registration
"he old "rademark 4a' follo'ed an actual use system,
'hile the IP !ode follo'ed a hybrid filing)actual use system
Phile actual use 'as required for at least t'o months
before application under old "( la', the IP !ode allo's
application 'ithout use and requires it only 'ithin three
years from filing date
S!"I#$ 1%/. Requirements of Application. ) 1%/.1.
"he application for the registration of the mark shall be in
Hilipino or in nglish and shall contain the follo'ing9
+a. A request for registrationA
+b. "he name and address of the applicantA
+c. "he name of a State of 'hich the applicant is a
national or 'here he has domicileA and the name of a State
in 'hich the applicant has a real and effecti*e industrial or
commercial establishment, if anyA
+d. Phere the applicant is a <uridical entity, the la'
under 'hich it is organiKed and eBistingA
+e. "he appointment of an agent or representati*e, if the
applicant is not domiciled in the PhilippinesA
+f. Phere the applicant claims the priority of an earlier
application, an indication of9
i. "he name of the State 'ith 'hose national office the
earlier application 'as filed or if filed 'ith an office other
than a national office, the name of that office,
ii. "he date on 'hich the earlier application 'as filed,
and
iii. Phere a*ailable, the application number of the
earlier applicationA
+g. Phere the applicant claims color as a distincti*e
feature of the mark, a statement to that effect as 'ell as
the name or names of the color or colors claimed and an
indication, in respect of each color, of the principal parts of
the mark 'hich are in that colorA
+h. Phere the mark is a three)dimensional mark, a
statement to that effectA
+i. #ne or more reproductions of the mark, as
prescribed in the RegulationsA
+<. A transliteration or translation of the mark or of
some parts of the mark, as prescribed in the
RegulationsA
+k. "he names of the goods or ser*ices for 'hich the
registration is sought, grouped according to the classes of
the $ice !lassification, together 'ith the number of the
class of the said !lassification to 'hich each group of goods
or ser*ices belongsA and
+l. A signature by, or other self)identification of, the
applicant or his representati*e.
1%/.%. "he applicant or the registrant shall file a declaration
of actual use of the mark 'ith e*idence to that effect, as
prescribed by the Regulations 'ithin three +0. years from
the filing date of the application. #ther'ise, the application
shall be refused or the mark shall be remo*ed from the
Register by the Director.
1%/.0. #ne +1. application may relate to se*eral goods
and/or ser*ices, 'hether they belong to one +l. class or to
se*eral classes of the $ice !lassification.
1%/./. If during the eBamination of the application, the
#ffice finds factual basis to reasonably doubt the *eracity of
any indication or element in the application, it may require
the applicant to submit sufficient e*idence to remo*e the
doubt. +Sec. 3, R.A. $o. 1--a.
S!"I#$ 1%8. Hiling Date @ determines the right of priority
of the application, the eBamination and publication so it is
important to comply 'ith the requirements for a filing date
under this pro*ision
Question9 AC! filed an application for trademark DH 'ith
the IP #ffice on 1/1/6/ claiming the priority date of its GS
application filed 'ith the GSP"# on -/1/60. Is the applicant
entitled to a priority date of -/1/60.
S!"I#$ 101. Priority Right. ) 101.1. An application
for registration of a mark filed in the Philippines by a person
referred to in Section 0, and 'ho pre*iously duly filed an
application for registration of the same mark in one of those
countries, shall be considered as filed as of the day the
application 'as first filed in the foreign country.
101.%. $o registration of a mark in the Philippines by a
person described in this section shall be granted until such
mark has been registered in the country of origin of the
applicant.
4imitation on right to sue
101.0. $othing in this section shall entitle the o'ner of a
registration granted under this section to sue for acts
committed prior to the date on 'hich his mark 'as
registered in this country9 Pro*ided, "hat, not'ithstanding
the foregoing, the o'ner of a 'ell)kno'n mark as defined in
Section 1%0.1+e. of this Act, that is not registered in the
Pau Duman / Intellectual Property Rights / Prof. Amador / Page -
Philippines, may, against an identical or confusingly similar
mark, oppose its registration, or petition the cancellation of
its registration or sue for unfair competition, 'ithout
pre<udice to a*ailing himself of other remedies pro*ided for
under the la'.
Phen a first foreign application is 'ithdra'n
101./. In like manner and sub<ect to the same conditions
and requirements, the right pro*ided in this section may be
based upon a subsequent regularly filed application in the
same foreign country9 Pro*ided, "hat any foreign
application filed prior to such subsequent application has
been 'ithdra'n, abandoned, or other'ise disposed of,
'ithout ha*ing been laid open to public inspection and
'ithout lea*ing any rights outstanding, and has not ser*ed,
nor thereafter shall ser*e, as a basis for claiming a right of
priority. +Sec. 08, R.A. $o. 1--a.
S!"I#$ 1%7. Single Registration for 1oods and/or
Ser*ices) se*eral classes of goods and/or ser*ices may be
included in one +1. application, but the application shall
result in one registration additional fees are imposed
goods determine the protection afforded under the related
goods doctrine
declaration of use 'ithin three years from filing date
must pro*ide e*idence of actual use on specific
products and registration 'ill mention only such
products
S!"I#$ 106.Signature and #ther (eans of Self)
Identification.
hand)'ritten signature, printed or stamped signature
communications made by telefacsimile accepted
follo'ed by original 'ithin thirty days
$o attestation, notariKation, authentication, legaliKation or
other certification of any signature or other means of self)
identification referred to in the preceding paragraphs, 'ill
be required, eBcept, 'here the signature concerns the
surrender of a registration
S!"I#$ 10%.Application $umber and Hiling Date are gi*en
'hen the filing requirements are met
S!"I#$ 100. Bamination and Publication @ eBamination
on the issue of registrability, and if appro*ed the trademark
application 'ill be published in the #fficial 1aKette

S!"I#$ 1%-. Disclaimers. "he #ffice may allo' or require
the applicant to disclaim an unregistrable component of an
other'ise registrable mark but such disclaimer shall not
pre<udice or affect the applicantFs or o'nerFs rights then
eBisting or thereafter arising in the disclaimed matter, nor
such shall disclaimer pre<udice or affect the applicantFs or
o'nerFs right on another application of later date if the
disclaimed matter became distincti*e of the applicantFs or
o'nerFs goods, business or ser*ices. +Sec. 10, R.A. $o.
1--a.
!onflict 'ith ri*al applicants or users
Phat are the rights of a prior user of a trademark *is
a *is the registered o'ner but <unior user of an
identical mark:
"RIPS Agreement says that ;the rights Lof a
registered o'nerM shall not pre<udice any eBisting
prior rights.>
Section %0-. Preser*ation of Bisting Rights. )
$othing herein shall ad*ersely affect the rights on
the enforcement of rights in patents, utility models,
industrial designs, marks and 'orks, acquired in
good faith prior to the effecti*e date of this Act. +n.
Pursuant to "RIPS, the IP !ode makes rights to
trademarks a*ailable on the basis of use
Gnder Section 1%/.%, the applicant or the registrant
shall file a declaration of actual use of the mark 'ith
e*idence to that effect, as prescribed by the
Regulations 'ithin three +0. years from the filing
date of the application. #ther'ise, the application
shall be refused or the mark shall be remo*ed from
the Register by the Director.

"he only possible eBception may be 'ell)kno'n trademarks,
'hich may bar other applications ;'hether or not it is
registered here>
Question9 AC! filed an application for trademark DH 'ith
the IP #ffice on -/1/6/ claiming the priority date of its GS
application filed 'ith the GSP"# on 1/1/6/. "he IP #ffice
granted the registration 'hen AC! filed its certificate of
registration from the GSP"#.
AC! then sued RES for trademark infringement for acts
committed for the preceding / years during 'hich it used
the mark.
Pill the action prosper:
Pill your ans'er be the same if DH is a 'ell)kno'n mark:
Intellect"al Property La# 134
Trademarks
!omparati*e "able
!opyright Patents "rademarks
#riginal
intellectual
creations in the
literary or artistic
domain
"echnical solution
of a problem in
any field of human
acti*ity
2isible sign
capable of
distinguishing
goods or ser*ices
of enterprise
#riginality $o*elty, in*enti*e
step and industrial
applicability
Distincti*eness
Reproduction,
dramatiKation,
first public
distribution,
rental, public
display, public
performance other
communication to
public
(aking, using,
selling, offering for
sale and importing
Gse in commerce
'ithout consent of
a mark or a
dominant feature
in connection 'ith
sale, offering for
sale, distribution,
ad*ertising in a
manner likely to
cause confusion

Hrom creation
'ithout any formality
Hrom filing,
publication, grant
Hrom filing,
publication,
grant
During lifetime and
36 years after death
"'enty years from
filing date
"en years
rene'able
'ithout
limitation
Stimulation of artistic
creati*ity for the
public good
Promotion of
inno*ation for free
eBploitation
Protection of
good'ill and
the public
against
confusion
Section 1%1.1.I(arkI means any *isible sign capable of
distinguishing the goods +trademark. or ser*ices +ser*ice
mark. of an enterprise and shall include a stamped or
marked container of goodsA +Sec. 07, R.A. $o. 1--a.
Is the (1( Roaring 4ion registrable as a trademark in the
Philippines:
Is the &arley Da*idson roaring engine registrable as a
trademark in the Philippines:
In 'hat 'ays is a collecti*e mark different from a
trademark:
Section 1%1.%. I!ollecti*e markI means any *isible
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
ser*ices of different enterprises 'hich use the sign under
the control of the registered o'ner of the collecti*e markA
+Sec. /6, R.A. $o. 1--a.
&o' are trademarks classified based on their
distincti*eness:
Spectrum of Distincti*eness
1eneric @ no trademark significance, cannot be
eBclusi*ely appropriated eBcept as a part of an
other'ise composite mark, and e*en then must be
disclaimed, e.g, =amiseta, Pancake &ouse
Descripti*e @ tells us the intended purpose,
function, use,siKe, desirable characteristics of goods,
nature of goods or effects upon users,
e.g., ")D#IS"S for floor and roof systemsA self)laudatory
marks like "AS"E for bread, !&AP S"I!= for lip balmA
change of form not'ithstanding, SP!S for spectacles,
DEA$S&I$ for shoe polish from dye and shineA
=PI=S"AR" for car batteriesA but may be registrable upon
proof of secondary meaning
Suggesti*e @ indirect or *ague reference to
information about the product and requires a
thought process, R#A!& (#"4 for cockroach trap,
!#PPR"#$ for tan oil, P4AEC#E for magaKine, !E!4#$
for 'ire fence, S"R#$1&#4D for nails
Arbitrary or Hanciful @ usually coined 'ords, R#4R
for 'atches, =#DA= for cameras
Phy Distincti*eness (atters
Pearl T Dean +Phil.., Incorporated *s. Shoemart,
Incorporated, and $orth dsa (arketing, Incorporated, 1.R.
$o. 1/7%%%, August 13, %660
Issue9 "( infringement, $on)distincti*e mark
Hacts9
1. PTD manufactures ad*ertising display units or light
boBes, 'hich utiliKe specially printed posters
sand'iched bet'een plastic sheets and illuminated
'ith back lights.
%. It secured a "( registration for IPoster AdsI 'hich
petitionerFs president said 'as a contraction of
Iposter ad*ertising.I
0. Cut the goods co*ered 'ere Istationeries such as
letterheads, en*elopes, calling cards and ne'sletters,I
'hich PTD did not actually manufacture.
"he S! held9
1. "he trademark registration did not co*er poster ads.
If at all, the cause of action should ha*e been for
unfair competition, a situation 'hich 'as possible
e*en if P T D had no registration.
%. $onetheless, respondents are not liable for unfair
competition.
0. "here 'as no e*idence that P T DFs use of IPoster AdsI
'as distincti*e or has been associated by the public 'ith
PTD by reason of long and eBclusi*e use in its business.
IFPoster AdsF 'as too generic a name so it 'as difficult to
identify it 'ith any company. &ence, in the mind of the
public, the goods and ser*ices carrying the trademark
IPoster AdsI could not be distinguished from the goods and
ser*ices of other entities.
/. IPoster AdsI cannot acquire secondary meaning.
S#!I" DS PR#DGI"S $S"4, S.A. and $S"4
P&I4IPPI$S, I$!. *s. !#GR" #H APPA4S and !H!
!#RP#RA"I#$, 1.R. $o. 11%61%. April /, %661.
$estle?s (arks9 (AS"R R#AS" and (AS"R C4$D.I
!H!?s (arks9 IH4A2#R (AS"RI
$estle filed notice of opposition to !H!?s application for
H4A2#R (AS"R
!H! argued that its trademark, H4A2#R (AS"R, is not
confusingly similar 'ith the formerFs trademarks, (AS"R
R#AS" and (AS"R C4$D.
1. (AS"R is either a generic or descripti*e 'ord #ther
'ords used 'ith the trademarks are *ery different from
each other J in meaning, spelling, pronunciation, and
sound.
Cureau of Patents denied !H!?s trademark application, but
!A re*ersed its decision and ruled in fa*or of !H!.
!A held that the physical discrepancies bet'een appellant
!H!Fs and appelleeFs respecti*e logos are so ostensible that
the casual purchaser cannot likely mistake one for the
other.
Supreme !ourt re*ersed the !A9

1. "he !ourt of Appeals applied some <udicial precedents
'hich are not on all fours 'ith this case.

%. In infringement or trademark cases in the Philippines, no
set rules can be deduced in ascertaining 'hether one
trademark is confusingly similar to or is a colorable imitation
of another. ach case must be decided on its o'n merits.
0. "he cases cited by the !ourt of Appeals to <ustify the
application of the totality or holistic test to this case are
inapplicable, the factual circumstances being substantially
different.
CI#HRI$ and CGHHRI$ for pains caused headaches and
colds are spelled and pronounced differently and are
prescribed by physicians
A4A!"A for goods under !lass - for pharmaceutical and
nutritional preparation is distinguishable from A4AS=A for
goods under !lass /8 for food ingredients. "he latter does
not require prescription.
/. I"he determination of 'hether t'o trademarks are
indeed confusingly similar must be taken from the *ie'point
of the ordinary purchasers 'ho are, in general,
undiscerningly rash in buying the more common and less
eBpensi*e household products like coffee, and are therefore
less inclined to closely eBamine specific details of similarities
and dissimilarities bet'een competing products.I

3. (AS"R is the dominant feature of opposerFs mark.
(AS"R is printed predominantly on the label and
emphasiKed in "2, radio and printed ad*ertising materials
'ith personalities like Robert Da'orski and Atty. Ric Puno
Dr., 'ho are gi*en the titles (aster of the 1ame and (aster
of the "alk Sho'.
-. In addition, the 'ord I(AS"RI is neither a generic nor a
descripti*e term. As such, said term can not be in*alidated
as a trademark and, therefore, may be legally protected.
Rather, the term I(AS"RI is a suggesti*e term brought
about by the ad*ertising scheme of $estle.
8. "he term I(AS"RI, therefore, has acquired a certain
connotation to mean the coffee products (AS"R R#AS"
and (AS"R C4$D produced by $estle. As such, the use
by !H! of the term I(AS"RI in the trademark for its coffee
product H4A2#R (AS"R is likely to cause confusion or
mistake or e*en to decei*e the ordinary purchasers.
Phat elements of this art design are registrable as
trademarks and ho' do you classify them in terms of
distincti*eness :
Phat elements in this pictorial illustration are registrable as
trademarks in the Philippines and ho' do you classify them
in terms of distincti*eness:
"rademarks, Patents and !opyright as Sub<ects of
!ommercial "ransactions
S!"I#$ /. Definitions. ) /.1. "he term Iintellectual
property rightsI consists of9
a. !opyright and Related RightsA
b. "rademarks and Ser*ice (arksA
c. 1eographic IndicationsA
d. Industrial DesignsA
e. PatentsA
f. 4ayout)Designs +"opographies. of Integrated
!ircuitsA and
g. Protection of Gndisclosed Information +n, "RIPS..
/.%. "he term Itechnology transfer arrangementsI refers
to contracts or agreements in*ol*ing the transfer of
systematic kno'ledge for the manufacture of a product, the
application of a process, or rendering of a ser*ice including
management contractsA and the transfer, assignment or
licensing of all forms of intellectual property rights, including
Pau Duman / Intellectual Property Rights / Prof. Amador / Page 1%
licensing of computer soft'are eBcept computer soft'are
de*eloped for mass market.
Section 136. 4icense !ontracts. @ Any license contract
concerning the registration of a mark, or an application
therefor, shall pro*ide for effecti*e control by the licensor of
the quality of the goods or ser*ices of the licensee in
connection 'ith 'hich the mark is used. If the license
contract does not pro*ide for such quality control or if such
quality control is not effecti*ely carried out, the license
contract shall not be *alid.
"echnology "ransfer Arrangement
Section /.%. "he term Itechnology transfer arrangementsI
refers to contracts or agreements in*ol*ing the transfer of
systematic kno'ledge for the manufacture of a product, the
application of a process, or rendering of a ser*ice including
management contractsA and the transfer, assignment or
licensing of all forms of intellectual property rights, including
licensing of computer soft'are eBcept computer soft'are
de*eloped for mass market.
Requirement for nforceability
Section 5%. $on)Registration 'ith the Documentation,
Information and "echnology "ransfer Cureau. ) "echnology
transfer arrangements that conform 'ith the pro*isions of
Sections 7- and 78 need not be registered 'ith the
Documentation, Information and "echnology "ransfer
Cureau. $on)conformance 'ith any of the pro*isions of
Sections 78 and 77, ho'e*er, shall automatically render the
technology transfer arrangement unenforceable,
unless said technology transfer arrangement is appro*ed
and registered 'ith the Documentation, Information and
"echnology "ransfer Cureau under the pro*isions of Section
51 on eBceptional cases. +n.
Don?ts of IP 4icensing
S!"I#$ 78. Prohibited !lauses. ) Bcept in cases under
Section 51, the follo'ing pro*isions shall be deemed prima
facie to ha*e an ad*erse effect on competition and trade9
78.1. "hose 'hich impose upon the licensee the obligation
to acquire from a specific source capital goods, intermediate
products, ra' materials, and other technologies, or of
permanently employing personnel indicated by the licensorA
78.%. "hose pursuant to 'hich the licensor reser*es the
right to fiB the sale or resale prices of the products
manufactured on the basis of the licenseA
78.0. "hose that contain restrictions regarding the *olume
and structure of productionA
78./. "hose that prohibit the use of competiti*e
technologies in a non)eBclusi*e technology transfer
agreementA
78.3. "hose that establish a full or partial purchase option
in fa*or of the licensorA
78.-. "hose that obligate the licensee to transfer for free
to the licensor the in*entions or
impro*ements that may be obtained through the use of the
licensed technologyA
78.8. "hose that require payment of royalties to the
o'ners of patents for patents 'hich are not usedA
78.7. "hose that prohibit the licensee to eBport the
licensed product unless <ustified for the protection of the
legitimate interest of the licensor such as eBports to
countries 'here eBclusi*e licenses to manufacture and/or
distribute the licensed product+s. ha*e already been
grantedA
78.5. "hose 'hich restrict the use of the technology
supplied after the eBpiration of the technology transfer
arrangement, eBcept in cases of early termination of the
technology transfer arrangement due to reason+s.
attributable to the licenseeA
78.16. "hose 'hich require payments for patents and other
industrial property rights after their eBpiration, termination
arrangementA
78.11. "hose 'hich require that the technology recipient
shall not contest the *alidity of any of the patents of the
technology supplierA
78.1%. "hose 'hich restrict the research and de*elopment
acti*ities of the licensee designed to absorb and adapt the
transferred technology to local conditions or to initiate
research and de*elopment programs in connection 'ith ne'
products, processes or equipmentA
78.10. "hose 'hich pre*ent the licensee from adapting the
imported technology to local conditions, or introducing
inno*ation to it, as long as it does not impair the quality
standards prescribed by the licensorA
78.1/. "hose 'hich eBempt the licensor for liability for non)
fulfillment of his responsibilities under the technology
transfer arrangement and/or liability arising from third party
suits brought about by the use of the licensed product or
the licensed technologyA and
78.13. #ther clauses 'ith equi*alent effects. +Sec. 00)! +%.,
R.A 1-3a.
Do?s of IP 4icensing
S!"I#$ 77. (andatory Pro*isions. ) "he follo'ing
pro*isions shall be included in *oluntary license contracts9
77.1. "hat the la's of the Philippines shall go*ern the
interpretation of the same and in the e*ent of litigation, the
*enue shall be the proper court in the place 'here the
licensee has its principal officeA
77.%. !ontinued access to impro*ements in techniques and
processes related to the technology shall be made a*ailable
during the period of the technology transfer arrangementA
77.0. In the e*ent the technology transfer arrangement
shall pro*ide for arbitration, the Procedure of Arbitration of
the Arbitration 4a' of the Philippines or the Arbitration
Rules of the Gnited $ations !ommission on International
"rade 4a' +G$!I"RA4. or the Rules of !onciliation and
Arbitration of the International !hamber of !ommerce +I!!.
shall apply and the *enue of arbitration shall be the
Philippines or any neutral countryA and
77./. "he Philippine taBes on all payments relating to the
technology transfer arrangement shall be borne by the
licensor. +n.
Bceptions to the Don?ts and Do?s
S!"I#$ 51. Bceptional !ases. ) In eBceptional or
meritorious cases 'here substantial benefits 'ill accrue to
the economy, such as high technology content, increase in
foreign eBchange earnings, employment generation,
regional dispersal of industries and/or substitution 'ith or
use of local ra' materials, or in the case of Coard of
In*estments, registered companies 'ith pioneer status,
eBemption from any of the abo*e requirements may be
allo'ed by the Documentation, Information and "echnology
"ransfer Cureau after e*aluation thereof on a case by case
basis. +n.
Pau Duman / Intellectual Property Rights / Prof. Amador / Page 1/
$ot All (arks are !reated qual
Eou can?t go 'rong 'ith a mark like R#4R
(ontres RoleB, S. A. *s. RoleB Scientific !orporation, S!
Decision, April %7, %66/
Issue9 GnauthoriKed use of RoleB trademark and trade
name
Hacts9
1. Petitioner is the registered o'ner of the trademark
R#4R for 'atches in the Phils. and else'here.
R#4R is used as a trade name.
%. R#4R trademark is registered in numerous countries
'orld'ide. It is used as part of the corporate name of a
RoleB subsidiary in the Phils.
0. Respondent used and registered R#4R as part of its
corporate name in the Phils. ahead of the RoleB subsidiary.
Respondent manufactures laboratory supplies. Respondent
claims that confusion is unlikely because it is using R#4R
only as part of its corporate name, but not as a trademark.
&eld9
1. Gnder Sec. 08 of "( 4a' +and no' Sec. 1-3 of IP
!ode., trade names are protected against
subsequent use by a third party in a manner likely to
mislead the public.
%. Sec. 17 of !orp. !ode also protects the registered
corporate names of RoleB companies in the Phils. A
corporation?s right to use its corporate name is a property
right, 'hich it may protect against the 'hole 'orld.
0. "he R#4R name and mark is kno'n 'orld'ide as a
leading brand or name for timepieces. It is a 'orld
famous mark.
/. Respondent?s argument that confusion is not likely is
unacceptable because ;'hat is sought to be protected is not
the product alone, but the trade name itself of petitioner.
/. "he protection to 'hich the prior user of a corporate
name is entitled is not limited to guarding its goods
or business from actual market competition 'ith
identical or similar products of the parties but
eBtends to all cases in 'hich the use of the <unior
appropriator of the name is likely to lead to
confusion as to source, as 'here prospecti*e
purchasers 'ould be misled into thinking that the
complaining corporation has eBtended its business
into the field, or is in any 'ay connected 'ith the
acti*ities of the infringerA or 'hen it forestalls the
normal eBpansion of its business.
If you ha*e not heard of Intel, you don?t belong to this
century UUU
*erybody 4o*es (icrosoftUUU
Phy it is gi*en special treatment
Pribhdas D. (irpuri .*s. !ourt of Appeals, Director of Patents
and the CarbiKon !orporation, 1.R. $o. 11/367. $o*ember
15, 1555
Issue9 Pell)kno'n mark
Hacts9
1. scobar applied 'ith the CP"" for the registration of
the trademark ICarbiKonI for use in brassieres and
ladies undergarments. She claimed use of the mark
since 1586.
%. CarbiKon opposed the application on the basis of its
use of ;CarbiKon> for apparel.
0. scobar pre*ailed but her registration lapsed
because she failed to file affida*it of use.
/. CarbiKon opposed scobar?s re)application. #pposition
'as based on ne' grounds9 fraudulent registration in 158/,
*iolation of Art. 175 +0. the RP!, protection of 'ell)kno'n
mark under Art. -bis of Paris !on*ention
S! held9
1. #pposition is not barred by res <udicata because
'hile the first opposition 'as only based on claim of
confusing similarity second opposition 'as based on
ne' grounds not raised in the first case.
%. CarbiKon?s opposition is anchored on protection of
'ell)kno'n mark Article under -bis of the Paris
!on*ention
0. "he ;CarbiKon> trademark is 'ell)kno'n because9
+a. It has been used as early as 1500 on products such as
robes, pa<amas, lingerie, nightgo'ns and slipsA
+b. It 'as registered 'ith the GSP# in 150/ and 15/5A and
*ariations of the same trademark, i.e., ICARCIS#$I 'ith
Cee design and ICARCIS#$I 'ith the representation of a
'oman 'ere also registered 'ith the GSP# in 15-1 and
158-A
Pau Duman / Intellectual Property Rights / Prof. Amador / Page 1-
+c. It has been used in the Philippines and in many
countries all o*er the 'orld for o*er forty years.
+d. ICarbiKonI products ha*e been ad*ertised in
international publications and the marks registered in 0-
countries 'orld'ideA
It doesn?t pay to copy another?s mark
particularly if it?s 'ell kno'n
Section 1%0. Registrability. A mark cannot be registered if
it9N
+e. Is identical 'ith, or confusingly similar to, or
constitutes a translation of a mark 'hich is considered by
the competent authority of the Philippines to be 'ell)kno'n
internationally and in the Philippines, 'hether or not it is
registered here, as being already the mark of a person
other than the applicant for registration, and used for
identical or similar goods or ser*ices9
Pro*ided, "hat in determining 'hether a mark is 'ell)
kno'n, account shall be taken of the kno'ledge of the
rele*ant sector of the public, rather than of the public at
large, including kno'ledge in the Philippines 'hich has been
obtained as a result of the promotion of the markA
S!"I#$ 1%0.Registrability. A mark cannot be registered if
it9N
+f. Is identical 'ith, or confusingly similar to, or
constitutes a translation of a mark considered 'ell)kno'n in
accordance 'ith the preceding paragraph, 'hich is
registered in the Philippines 'ith respect to goods or
ser*ices 'hich are not similar to those 'ith respect to 'hich
registration is applied for9 Pro*ided,
Par +e. co*ers situation 'here9
a mark is considered by Philippine authorities to be
'ell)kno'n internationally and in the Phils.
the mark may or may not be registered in the Phils.
the mark is used for identical or similar goods and
ser*ices to those of the ri*al user
the 'ell)kno'n mark bars the ri*al mark
Par +f. co*ers situation 'here9
a mark is considered 'ell)kno'n internationally and
in the Phils.
such mark is also registered in the Phils.
the goods or ser*ices for 'hich the mark is
registered are not similar to those in respect of 'hich
ri*al mark is applied for
'ell)kno'n mark bars the ri*al mark if ;connection>
'ith and ;pre<udice> to o'ner of mark are sho'n
Rule16%. !riteria. In determining 'hether a mark is 'ell
kno'n, the follo'ing criteria or any combination thereof
may be taken into account9
+a. "he duration, eBtent and geographical area of any use of
the mark, in particular, the duration, eBtent and
geographical area of any promotion of the mark, including
the ad*ertising or publicity and the presentation at fairs, or
eBhibitions, of the goods and ser*ices
to 'hich the mark appliesA
+b. the market share, in the Philippines and in other
countries, of the goods and ser*ices to 'hich the mark
appliesA
+ c. the degree of the inherent or acquired distinction of the
markA
+d. the quality, image or reputation acquired by the markA
+e. the eBtent to 'hich the mark has been registered in the
'orld
+f. the eBclusi*ity of registration attained by the mark in the
'orldA
+g. the eBtent to 'hich the mark has been used in the
'orldA
+h. the eBclusi*ity of use attained by the mark in the 'orldA
+i. "he commercial *alue attributed to the mark in the
'orldA
+<. "he record of successful protection of the rights in the
mark
+k.the outcome of litigations dealing 'ith the issue of
'hether the mark is a 'ell)kno'n mark
+l. the presence or absence of identical or similar marks
*alidly registered for or used on identical or similar goods
and ser*ices and o'ned by persons other than the person
claiming that his mark is a 'ell)kno'n mark.
Protection of "rade $ames
Paris !on*ention mandates that member countries
shall protect the trade names of nationals of other
members ;'ithout the obligation of filing or
registration>
Section 17 of the !orporation !ode pre*ents the use
as corporate names of designations ;protected by
la'>
1. Phat is the national treatment principle in IP la':
ach P"# member shall accord to nationals of other
(embers treatment no less fa*orable than that 'hich it
accords to its o'n nationals 'ith regard to the protection of
intellectual property
%. Phat is the most)fa*ored national treatment in IP
la':
Pith regard to the protection of intellectual
property, any ad*antage, fa*or, pri*ilege or immunity
granted by (embers to the nationals of any other country
shall be accorded immediately and unconditionally to the
nationals of all other (embers.
Section 1%0. Registrability. A mark cannot be registered if
it9N
+e. Is identical 'ith, or confusingly similar to, or
constitutes a translation of a mark 'hich is considered by
the competent authority of the Philippines to be 'ell)kno'n
internationally and in the Philippines, 'hether or not it is
registered here, as being already the mark of a person
other than the applicant for registration, and used for
identical or similar goods or ser*ices9
Pro*ided, "hat in determining 'hether a mark is 'ell)
kno'n, account shall be taken of the kno'ledge of the
rele*ant sector of the public, rather than of the public at
large, including kno'ledge in the Philippines 'hich has been
obtained as a result of the promotion of the markA
Phy do I ha*e to 'orry about it:
S!"I#$ 1%0.Registrability. A mark cannot be registered if
it9N
+f. Is identical 'ith, or confusingly similar to, or
constitutes a translation of a mark considered 'ell)kno'n in
accordance 'ith the preceding paragraph, 'hich is
registered in the Philippines 'ith respect to goods or
ser*ices 'hich are not similar to those 'ith respect to 'hich
registration is applied for9 Pro*ided,
"hat use of the mark in relation to those goods or ser*ices
'ould indicate a connection bet'een those goods or
ser*ices, and the o'ner of the registered mark9 Pro*ided
further, "hat the interests of the o'ner of the registered
mark are likely to be damaged by such useA
Eou are truly something special
Rule16%. !riteria. In determining 'hether a mark is 'ell
kno'n, the follo'ing criteria or any combination thereof
may be taken into account9
+a. "he duration, eBtent and geographical area of any use of
the mark, in particular, the duration, eBtent and
geographical area of any promotion of the mark, including
the ad*ertising or publicity and the presentation at fairs, or
eBhibitions, of the goods and ser*ices
to 'hich the mark appliesA
+b. the market share, in the Philippines and in other
countries, of the goods and ser*ices to 'hich the mark
appliesA
+ c. the degree of the inherent or acquired distinction of the
markA
+d. the quality, image or reputation acquired by the markA
+e. the eBtent to 'hich the mark has been registered in the
'orld
+f. the eBclusi*ity of registration attained by the mark in the
'orldA
+g. the eBtent to 'hich the mark has been used in the
'orldA
+h. the eBclusi*ity of use attained by the mark in the 'orldA
+i. "he commercial *alue attributed to the mark in the
'orldA
+<. "he record of successful protection of the rights in the
mark
+k.the outcome of litigations dealing 'ith the issue of
'hether the mark is a 'ell)kno'n mark
+l. the presence or absence of identical or similar marks
*alidly registered for or used on identical or similar goods
and ser*ices and o'ned by persons other than the person
claiming that his mark is a 'ell)kno'n mark.
!all it by any other name and it 'on?t mean the same
Section 1%1.0. I"rade nameI means the name or
designation identifying or distinguishing an enterpriseA +Sec.
07, R.A. $o. 1--a.
A mark can be a trade name and *ice *ersa
R#4R, =#DA=, I$"4, (I!R#S#H", A(AS#$, CARCIS#$
Protection of "rade $ames
Paris !on*ention mandates that member countries
shall protect the trade names of nationals of other
members ;'ithout the obligation of filing or
registration>
Section 17 of the !orporation !ode pre*ents the use
as corporate names of designations ;protected by
la'>
Phen is it immoral and 'hen decepti*e:
Section 1-3. "rade $ames or Cusiness $ames. ) 1-3.1. A
name or designation may not be used as a trade name if by
its nature or the use to 'hich such name or designation
may be put, it is contrary to public order or morals and if, in
particular, it is liable to decei*e trade circles or the public as
to the nature of the enterprise identified by that name.
$o registration is required for protection
1-3.%.+a. $ot'ithstanding any la's or regulations
pro*iding for any obligation to register trade names, such
names shall be protected, e*en prior to or 'ithout
registration, against any unla'ful act committed by third
parties.
+b. In particular, any subsequent use of the trade name
by a third party, 'hether as a trade name or a mark or
collecti*e mark, or any such use of a similar trade name or
mark, likely to mislead the public, shall be deemed
unla'ful.
nterprise must be be transferred 'ith the trade name
1-3.0. "he remedies pro*ided for in Sections 130 to 13-
and Sections 1-- and 1-8 shall apply mutatis mutandis.
1-3./. Any change in the o'nership of a trade name shall
be made 'ith the transfer of the enterprise or part thereof
identified by that name. "he pro*isions of Subsections
1/5.% to 1/5./ shall apply mutatis mutandis.
Domain name as a trademark
A name may be a mark
A C$!& is 'hat you 'ear to sit on one
Is it alright to use your name as a mark 'hen you?re dead:
Section 1%0.1. A mark cannot be registered if itN N+e.
!onsists of the name, portrait or signature identifying a
particular li*ing indi*idual eBcept by his 'ritten consent, or
the name, signature or portrait of a deceased President of
the Philippines during the lifetime of his 'ido', if any,
eBcept by the 'ritten consent of the 'ido'A
Phat you hear is 'hat you paid for
Pau Duman / Intellectual Property Rights / Prof. Amador / Page %6
If "R" A4#GD doesn?t tell you 'hat it is, it time to quit
this courseUU
Don?t use it if it tells you 'hat the product is
Section 1%0. A mark cannot be registered if it9
+<. consists eBclusi*ely of signs or of indications that may
ser*e in trade to designate the kind, quality, quantity
intended purpose, *alue, geographical origin, time or
production of the goods or the rendering of the ser*ices or
other characteristics of the goods or ser*ices.
O unless you are ready to use it for the at least fi*e years
before you can claim it as your o'n
1%0.% As regards signs or de*ices mentioned in paragraphs
+<., +k., and +l., nothing shall pre*ent the registration of any
such sign or de*ice 'hich has become distincti*e in relation
to the goods for 'hich registration is requested as a result
of the use that ha*e been made of it in commerce in the
Philippines.
and e*en then, it?s <ust prima facie after fi*e yearsUUU
"he #ffice may accept as prima facie e*idence that the
mark has become distincti*e, as used in connection 'ith the
applicantFs goods or ser*ices in commerce, proof of
substantially eBclusi*e and continuous use thereof by the
applicant in commerce in the Philippines for fi*e +3. years
before the date on 'hich the claim of distincti*eness is
made.
If it has a secondary meaning, it must ha*e a primary
Doctrine of secondary meaning or acquired distincti*eness
limited to marks under paragraphs +<.,+k. and +l.,
and eBcludes absolutely unregistrable trademarks
Phil. $ut Industry Inc. *s. Standard Crands Inc., 1R
4)%0603, Duly 01, 1583A P4A$"RS
Ang *s. "eodoro, 1R $o. 4)/7%%-, December 1/,
15/A A$1 "ICAE
It?s the consumer?s mind that counts
"ests of Strength
Strength refers to the distincti*eness of the mark
Hanciful)suggesti*e)descripti*e continuum is often
used to determine strength or 'eakness of marks
It is a question of consumer recognition
It is not determined by the *alue of the goods on
'hich it is used
Oand the more users there are, the less distincti*e it is
Strength is also determined by number of third)party
uses
e.g., In a cro'ded field, (RS. #H "&
P#R4D is not likely to be confused 'ith (ISS
P#R4D, (iss Porld G= *s. (rs. American
Pageant, Inc. 73- H. %d 1//3
Do you order it single or double:
A mark may be used singly or in combination 'ith
other marks
e.g., company name is used as house mark in addition to
another mark on labels9 S#$E 2AI#, =44#11 P#P)"AR"S,
=ellogg *s. 1eneral Hoods !orp., 1-- GSPQ %8
(ultiple marks may be used together by multiple
users
e.g., la'n mo'er manufactured by Eardman and retailed by
Sears Roebuck can be
If it?s difficult to remember, it?s better than one that isn?t
"ypes of (arks
Arbitrarily arranged letters gi*en 'ide protection
because they are difficult to remember
An alphanumeric telephone number may be used a
trademark, but if it includes a generic term,
composite mark can be descripti*e and may be
protected only upon proof of secondary meaning
Cut numbers used to indicate siKe, capacity, model
or style are not used as trademarks
Abbre*iations and nicknames may function as marks,
e.g., !#= for !oca)!ola, CGD for Cud'eiser
Slogans can ser*e as marks, e.g.. Phere "here?s
4ifeO "here?s Cud, but not Soil It)Pash it)$e*er)
$eeds Pressing for apparel
If it is ornamental, keep it as a house dVcor
#rnamental symbols and designs may ser*e as source
designations, but not if eBclusi*ely ornamental, e.g., red,
'hite and blue panels on basketball, In re Soccer Sport
Supply !o., 368 H %d 1/66A colored bands around top of
men?s socks is not distincti*e, In re Schenectady 2arnish
!o., %76 H%d 1-5A but a mark consisting of three parallel
colored lines of each side of ADIDAS shoes 'as registered
on proof of secondary meaning, In re Dassler, 10/ GSPQ
%-3
If is useful for practical purposes, it doesn?t function as a
mark
Product and !ontainer Shapes may be protected under
unfair competition la' if follo'ing elements are present9
$on)functionality
Proof of secondary meaning
4ikelihood of confusion
e.g., shape of classic automobile, Herrari SpA *s. (cCurnie,
11 GSPQ%d 17/0A o*erall design of sports shoes, 4. A. 1ear
*s. "hom (cAn Shoe, 1% GSPQ%d 1661
O but if is neither functional nor ornamental, it might be
'orth a try
4e*i?s pocket tab is a *alid trademark, not primarily
functional, and not merely ornamental, 4e*i Strauss T !o.
*s. Clue Cell, %66 GSPQ /0/
Eou can?t appropriate 'hat others need to compete
If one manufacturer should make an ad*ance in
effecti*eness of operation or simplicity of form, or in utility
of colorA and if that ad*ance did not entitle him to a
monopoly by means of a machine or process or a product or
a design patentA and if by means of unfair trade suits he
could shut out other manufacturers 'ho plainly intended to
share in the benefits of unpatented utilities O
he 'ould be gi*en gratuitously a monopoly more effecti*e
than that of the unobtainable patent in a ratio of eternity to
se*enteen years @ Pope automatic (erchandising !o. *s.
(c!rum)&o'ell !o., 151 H. 585, %%0 GS 806
Pau Duman / Intellectual Property Rights / Prof. Amador / Page %%
If the Supreme !ourt said so, you better belie*e itU
Hunctional features cannot be appropriated as trademarks
Asia Cre'ery Inc. *s. San (iguel !orp., Duly 3, 1550
"erritorial character of trademarks
Philip (orris Inc. et. al. *s. Hortune "obacco !orp.,
Duly 1-, 1550
Cut see Section 1%0+e. N N N In determining
'hether a mark is 'ell kno'n, account shall
be taken of the kno'ledge of the rele*ant sector of the
public, rather than of the public at large, including
kno'ledge in the Philippines 'hich has been obtained as a
result of the promotion of the markA
Required Gse As !ondition Hor Registration

S!"I#$ 1%/.%. "he applicant or the registrant shall
file a declaration of actual use of the mark 'ith e*idence to
that effect, as prescribed by the Regulations 'ithin three
+0. years from the filing date of the application. #ther'ise,
the application shall be refused or the mark shall be
remo*ed from the Register by the Director.
Declaration must specify the goods and outlets 'here they
are sold
Adoption alone of a trademark 'ould not *est eBclusi*e
right upon the proprietor
"rademark is a creation of use
Required Gse As !ondition Hor (aintenance
Section 1/3. N N N the registrant shall file a declaration of
actual use and e*idence to that effect, or shall sho' *alid
reasons based on the eBistence of obstacles to such use, as
prescribed by the regulations, 'ithin one +1. year from the
fifth anni*ersary of the date of registration of the mark.
#ther'ise, the mark shall be remo*ed from the Register by
the #ffice.
Pearl T Dean +Phil.., Incorporated *s. Shoemart,
Incorporated and $orth dsa (arketing, Incorporated, 1.R.
$o. 1/7%%%, August 13, %660
Issue9 "( infringement, !lass of 1oods
Hacts9
'ith back lights.
Iposter ad*ertising.I
0. Cut the goods co*ered by the registration 'ere 'ere
Istationeries such as letterheads, en*elopes, calling cards
and ne'sletters,I 'hich PTD did not actually manufacture.
"he S! held9
1. Gnder ruling in Haberge Inc. *s. Intermediate Appellate
!ourt, in*ol*ing Section %6 of the old "rademark 4a', Ithe
certificate of registration issued by the Director of Patents
can confer +upon petitioner. the eBclusi*e right to use its
o'n symbol only to those goods specified in the certificate,
sub<ect to any conditions and
limitations specified in the certificate . . . . #ne 'ho has
adopted and used a trademark on his goods does not
pre*ent the adoption and use of the same trademark by
others for products 'hich are of a different description.I
Haberge, Inc. 'as correct and 'as in fact recently reiterated
in !anon =abushiki =aisha *s. !ourt of Appeals.
%. Assuming arguendo that IPoster AdsI could *alidly qualify
as a trademark, the failure of P T D to secure a trademark
registration for light boBes meant that there could not ha*e
been any trademark infringement since registration 'as an
essential element thereof.
0. $ote Sec. 1/8, ;identical or similar>
Pau Duman / Intellectual Property Rights / Prof. Amador / Page %/
!anon =abushiki =aisha *s. !ourt of Appeals and $SR
Rubber !orporation, 1.R. $o. 1%6566. Duly %6, %666
Issue9 Related 1oods Doctrine
Hacts9
1. $SR Rubber !orporation +pri*ate respondent. filed an
application 'ith the CP""" for registration of the mark
!A$#$ for sandals.
%. !anon =abushiki =aisha opposed the application.
0. !anon?s certificates of registration for the mark. !A$#$
in the Philippines and other countries co*ering goods in
class % +paints, chemical products, toner, and dye stuff..
/. CP"" and !A dismissed the opposition.
3. Cefore the S!, !anon claims that its use of !A$#$ on
paints, chemical products, toner, and dye stuff, 'hich are
used as shoe polisher and polishing agents <ustified the
re<ection of $SR?s application for !A$#$ for sandals.
"he S! held9
1. #rdinarily, a trademark is a a property right that is
protected by la'.
%. Cut 'hen a trademark is used by another on product
in 'hich the opposer does not deal, the use of the
same trademark on the latterFs product cannot be
*alidly ob<ected to.
0. Related 1oods Doctrine9 "here is a 'orld of
difference bet'een the paints, chemical products,
toner, and dyestuff of petitioner and the sandals of
pri*ate respondent.
/. $atural Bpansion of Cusiness Doctrine9
It 'ould be taBing oneFs credibility to a*er at this point that
the production of sandals could be considered as a possible
Inatural or normal eBpansionI of its business operationI.
3. In Haberge, Incorporated *s. Intermediate Appellate
!ourt, the Director of patents allo'ed the <unior user to use
the trademark of the senior user on the ground that the
briefs manufactured by the <unior user, the product for
'hich the trademark CRG" 'as sought to be registered,
'as unrelated and non)competing 'ith the products of the
senior user consisting of after sha*e lotion, sha*ing cream,
deodorant, talcum po'der, and toilet soap.
-. Paris !on*ention !laim9 IA tradename shall be
protected in all the countries of the Gnion 'ithout
the obligation of filing or registration, 'hether or not
it forms part of a trademark.;
8. =abushi =aisha Isetan *s. Intermediate Appellate
!ourt 9 IRegarding the applicability of Article 7 of the
Paris !on*ention, this #ffice belie*es that there is no
automatic protection afforded an entity 'hose
tradename is alleged to ha*e been infringed through
the use of that name as a trademark by a local
entity.
Bcused $on)Gses
S!"I#$ 13%. $on)use of a (ark Phen Bcused. )
13%.1. $on)use of a mark may be eBcused if caused by
circumstances arising independently of the 'ill of the
trademark o'ner. 4ack of funds shall not eBcuse non)use of
a mark.
13%.%. "he use of the mark in a form different from the
form in 'hich it is registered, 'hich does not alter its
distincti*e character, shall not be ground for cancellation or
remo*al of the mark and shall not diminish the protection
granted to the mark.
13%.0. "he use of a mark in connection 'ith one or more of
the goods or ser*ices belonging to the class in respect of
'hich the mark is registered shall pre*ent its cancellation or
remo*al in respect of all other goods or ser*ices of the
same class.
Gses by Related !ompanies
13%./. "he use of a mark by a company related 'ith the
registrant or applicant shall inure to the latterFs benefit, and
such use shall not affect the *alidity of such mark or of its
registration9 Pro*ided, "hat such mark is not used in such
manner as to decei*e the public. If use of a mark by a
person is controlled by the registrant or applicant 'ith
respect to the nature and quality of the goods or ser*ices,
such use shall inure to the benefit of the registrant or
applicant. +n.
Administrati*e Actions for "( nforcement
+i. #pposition
+ii. !ancellation
+iii. Administrati*e actions before the Cureau of 4egal
Affairs
+i*. Cureau of !ustoms Corder !ontrol
!i*il Actions for "( nforcement
+i. "rademark infringement
+ii. Gnfair competition
+iii. Halse designation of #rigin
+i*. !riminal Actions
Rights of Registered #'ner
S!"I#$ 1/8. Rights !onferred. ) 1/8.1. "he o'ner
of a registered mark shall ha*e the eBclusi*e right to
pre*ent all third parties not ha*ing the o'nerFs consent
from using in the course of trade identical or similar signs or
containers for goods or ser*ices 'hich are identical or
similar to those in respect of 'hich the trademark is
registered 'here such use 'ould result in a likelihood of
confusion. In case of the use of an identical sign for
identical goods or ser*ices, a likelihood of confusion shall be
presumed.
1/8.%. "he eBclusi*e right of the o'ner of a 'ell)kno'n
mark defined in Subsection 1%0.1+e. 'hich is registered in
the Philippines, shall eBtend to goods and ser*ices 'hich are
not similar to those in respect of 'hich the mark is
registered9 Pro*ided, "hat use of that mark in relation to
those goods or ser*ices 'ould indicate a connection
bet'een those goods or ser*ices and the o'ner of the
registered mark9 Pro*ided further, "hat the interests of the
o'ner of the registered mark are likely to be damaged by
such use. +n.
$on)actionable Gse
S!"I#$ 1/7. Gse of Indications by "hird Parties for
Purposes #ther than those for 'hich the (ark is Gsed. )
Registration of the mark shall not confer on the registered
o'ner the right to preclude third parties from using bona
fide their names, addresses, pseudonyms, a geographical
name, or eBact indications concerning the kind, quality,
quantity, destination, *alue, place of origin, or time of
production or of supply, of their goods or ser*ices9
Pro*ided, "hat such use is confined to the purposes of mere
identification or information and cannot mislead the public
as to the source of the goods or ser*ices. +n.
Section 131. !ancellation ) N N N
Pau Duman / Intellectual Property Rights / Prof. Amador / Page %-
Section 131.%. $ot'ithstanding the foregoing
pro*isions, the court or the administrati*e agency *ested
'ith <urisdiction to hear and ad<udicate any action to
enforce the rights to a registered mark shall like'ise
eBercise <urisdiction to determine 'hether the registration
of said mark may be cancelled in accordance 'ith this Act.
"he filing of a suit to enforce the registered mark 'ith the
proper court or agency shall eBclude any other court or
agency from assuming <urisdiction o*er a subsequently filed
petition to cancel the same mark.
#n the other hand, the earlier filing of petition to cancel the
mark 'ith the Cureau of 4egal Affairs shall not constitute a
pre<udicial question that must be resol*ed before an action
to enforce the rights to same registered mark may be
decided.
Section 10/ #pposition
+1. any person 'ho may be damaged by registrationA
may be a registrant or user of an identical or similar
mark
+%. opposition shall be in 'riting and *erified by the
oppositor or by any person on his behalf 'ho kno's
the facts
+0. specify the grounds on 'hich it is based and include
a statement of the facts relied upon
+/. certificates of registration of marks registered in other
countries or other supporting documents mentioned in the
opposition shall be filed
+3. 'ithin thirty days from publication in the #1, eBtendible
up to 1%6 days
Section 131, !ancellation
+1. any person 'ho belie*es that he is or 'ill be
damaged by the registration
+%. Period for filing9
+a.Pithin fi*e +3. years from the date of the
registration of the mark under this Act
+b. At any time, if the registered mark becomes the
generic name for the goods or ser*ices, or a portion thereof,
for 'hich it is registered, or has been abandoned, or its
registration 'as obtained fraudulently or contrary to the
pro*isions of this Act, or if the registered mark is being used
by, or 'ith the permission of, the registrant so as to
misrepresent the source of the goods or ser*ices on or in
connection 'ith 'hich the mark is used
"he primary significance of the registered mark to the
rele*ant public rather than purchaser moti*ation shall be
the test for determining 'hether the registered mark has
become the generic name of goods or ser*ices on or in
connection 'ith 'hich it has been used
+c. At any time, if the registered o'ner of the mark
'ithout legitimate reason fails to use the mark 'ithin the
Philippines, or to cause it to be used in the Philippines by
*irtue of a license during an uninterrupted period of three
+0. years or longer.
"RAD(AR= I$HRI$1($"
S!"I#$ 133. RemediesA Infringement. ) Any person
'ho shall, 'ithout the consent of the o'ner of the
registered mark9
133.1. Gse in commerce any reproduction, counterfeit,
copy, or colorable imitation of a registered mark or the
same container or a dominant feature thereof in connection
'ith the sale, offering for sale, distribution, ad*ertising of
any goods or ser*ices including other preparatory steps
necessary to carry out the sale of any goods or ser*ices on
or in connection 'ith 'hich such use is likely to cause
confusion, or to cause mistake, or to decei*eA or
133.%. 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, 'rappers, receptacles or
ad*ertisements intended to be used in commerce upon or in
connection 'ith the sale, offering for sale, distribution, or
ad*ertising of goods or ser*ices on or in connection 'ith
'hich such use is likely to cause confusion, or to cause
mistake, or to decei*e, shall be liable in a ci*il action for
infringement by the registrant for the remedies hereinafter
set forth9
lements of infringement9
1. Gse of registered trademark or colorable imitation thereof
or its dominant feature
+i. for the sale, distribution or ad*ertising of goods and
ser*ices and other preparatory steps, or
+ii. on labels, signs, prints, packages, 'rappers, receptacles
or ad*ertisements
%. Pithout the consent of the o'ner
0. Such use is likely to cause confusion, or to cause
mistake, or to decei*e
Bact imitation is not required
+i. Dominant feature test
+ii. &olistic test
Actual sale is not required, preparatory steps are sufficient
Actual confusion is not necessary, likelihood is enough
+i. !onfusion as to goods
+ii. !onfusion as to origin

Section 1/8.% on 'ell)kno'n mark speaks of ;connection>
'ith and ;damage> to o'ner of the mark arising from the
use of the mark on dissimilar goods

merald 1arment (anufacturing !orp. *s. !ourt of Appeals
docketed as 1.R. $o. 166657, promulgated by the Supreme
!ourt on December %5, 1553 'as a litigation bet'een &.D.
4ee !ompany, Inc. of Dela'are, GSA and a Philippine
company, merald 1arment, 'hereby pri*ate respondent
&.D. 4ee !ompany, as registrant of the trademark I4I in
the Philippines sought cancellation of the trademark
IS"E4IS"I! (R. 4I from the Supplemental Register in the
name of the Philippine company."he Cureau of Patents and
"rademarks declared that S"E4IS"I! (R. 4 confusingly
similar to (R. 4 on the basis of the dominant)feature
test. "he 'ord mark 4 is the dominant feature of both
marks the use of 'hich is likely to confuse consumers.#n
the other hand, the &#4IS"I! "S" mandates that the
entirely of the marks in question must be considered in
determining confusing similarity. (ibid) Quoting Hruit of the
4oom, Inc. *s. !ourt of Appeals, 100 S!RA /63 +157/., the
Supreme !ourt ad*anced that I (I)n determining whether
the marks are confusingly similar, a comparison of the
words is not the only determinant factor. The trademarks in
their entirely as they appear in their respective labels or
hang tags must also be considered in relation to the goods
to which they are attached. The discerning eye of the
observer must focus not only on the predominant words but
also on the other features appearing in both labels in order
that they may draw his conclusion whether one is
confusingly similar to the other."
Section 133.1 on infringement no' speaks of ;colorable
imitation of a registered mark O or a dominant feature
thereof.>
Del (onte !orporation *s. !ourt of Appeals 1.R. $o. 4)
870%3, Danuary %3, 1556
+i. Side)by)side comparison is not the final test of
similarity
+ii. general confusion made by the article upon the eye
of the casual purchaser 'ho is unsuspicious
+iii. consumer must depend upon his recollection of the
appearance of the product 'hich he intends to
purchase
+i*. consider the mark as a 'hole and not as dissected
+*. age, training and education of the usual purchaser, the
nature and cost of the article, 'hether the article is bought
for immediate consumption and also the conditions under
'hich it is usually purchased
A(I1# (A$GHA!"GRI$1, Inc. *s. !4G"" PAC#DE !#.,
I$!. 1.R. $o. 105066. (arch 1/, %661
Peabody9
1. 1#4D "#, under !ertificate of Registration $o. -858
dated September %%, 1537A
%. D2I!, representation of a sock and magnifying glass
on the toe of a sock, under !ertificate of Registration $o.
10/-3 dated Danuary %3, 15-7A
0. D2I!, consisting of a Fplurality of gold colored lines
arranged in parallel relation 'ithin a triangular area of toe
of the stocking and spread from each other by lines of
contrasting color of the ma<or part of the stockingF under
!ertificate of Registration $o. 10778 dated (ay 5, 15-7A
and
/. 4I$$ISD, under !ertificate of Registration $o. 13//6
dated April 10, 1586.

Amigo9 F1#4D "#P, 4ineniKed for Btra Pear.F It has the
dominant color F'hiteF at the center and a Fblackish bro'nF
background 'ith a magnified design of the sockFs garter,
and is labeled FAmigo (anufacturing Inc., (andaluyong,
(etro (anila, (ade in the PhilippinesF.
Cureau of Patents T "rademarks and !ourt of Appeals
declared the marks confusingly similar. "he Supreme !ourt
affirmed.
aM Peabody presented Cureau registrations indicating the
dates of first use in the Philippines of the trademark and the
de*ices as follo's9 a. (arch 1-, 153/, 1old "oeA b.
Hebruary 1, 153%, the Representation of a Sock and a
(agnifying 1lassA c. Danuary 06, 150%, the 1old "oe
RepresentationA and Hebruary %7, 153%, I4ineniKed.I
bM "he registration of the abo*e marks in fa*or of
respondent constitutes prima facie e*idence, 'hich
petitioner failed to o*erturn satisfactorily, of respondentFs
o'nership of those marks, the dates of appropriation and
the *alidity of other pertinent facts stated therein.
cM (oreo*er, the *alidity of the !ertificates of Registration
'as not questioned.
dM Amigo failed to present proof of the date of alleged first
use of the trademark I1old "op and De*iceI. "hus, e*en
assuming that Peabody started using it only on (ay 13,
15-%, 'e can make no finding that Amigo started using it
ahead of Peabody.
eM Phile pronunciations of the t'o marks do create
confusion, respondent?s mark is a combination of the
abo*ementioned trademarks registered separately by the
petitioner in the Philippines and the Gnited States.

fM "he difference in sound occurs only in the final letter at
the end of the marks. F1#4D "#F and F1#4D "#PF are
printed in identical lettering. Coth sho' LaM representation
of a manFs foot 'earing a sock. F1#4D "#PF blatantly
incorporates petitionerFs F4I$$ISDF 'hich by itself is a
registered mark.I
gM "he similarities are of such degree, number and quality
that the o*erall impression gi*en is that the t'o brands of
socks are decepti*ely the same, or at least *ery similar to
each another.
S! re<ected respondent?s argument that Peabody did not
present e*idence of first use to be entitled to protection.
Since Peabody registered its trademarks under the principal
register, the requirement of prior use had already been
fulfilled. "here eBists a prima facie presumption of the
correctness of the contents of the certificates, including the
date of first use. Petitioner has failed to rebut this
presumption.
PAR4 T DA$ +P&I4.., I$!#RP#RA"D *s. S&#(AR",
I$!#RP#RA"D, and $#R"& DSA (AR="I$1,
I$!#RP#RA"D, 1.R. $o. 1/7%%%, August 13, %660
Issue9 "( infringement
Hacts9
'ith back lights.
Iposter ad*ertising.I Cut the goods specified
0. Cut the goods co*ered 'ere Istationeries such as
letterheads, en*elopes, calling cards and ne'sletters,I
'hich PTD did not actually manufacture.
"he S! held9
1. Gnder ruling in Haberge Inc. *s. Intermediate Appellate
!ourt, in*ol*ing Section %6 of the old "rademark 4a', Ithe
certificate of registration issued by the Director of Patents
can confer +upon petitioner. the eBclusi*e right to use its
o'n symbol only to those goods specified in the certificate,
sub<ect to any conditions and limitations specified in the
certificate . . . . #ne 'ho has adopted and used a trademark
on his goods does not pre*ent the adoption and use of the
same trademark by others for products 'hich are of a
different description.I Haberge, Inc. 'as correct and 'as in
fact recently reiterated in !anon =abushiki =aisha *s. !ourt
of Appeals.
%. Assuming arguendo that IPoster AdsI could *alidly qualify
as a trademark, the failure of P T D to secure a trademark
registration for specific use on the light boBes meant that
there could not ha*e been any trademark infringement
since registration 'as an essential element thereof.
Pord) Analysis Approach and Sound Alikes
+i. ;SA4#$PAS> and ;4I#$PAS,> "R"P##D and
DRP##D @ likely to cause confusion
+ii. IPRA$14RI and IPRA$!#,I not likely to cause
confusion
$ature of the 1oods and !hannels of "rade
+i. ;SS#> for petroleum and for cigarettes
Purchasers? Attitude
(cdonald?s !orporation and (c1eorge Hood Industries, Inc.
*s. 4.!. Cig (ak Curger, Inc et al,1.R. $o. 1/0550, August
17, %66/

1. Remedial la'A Petition for Re*ie' on !ertiorari
%. "rademark infringementA unfair competitionA re*ie'
of factual findings
+a. nature of business
+b. kind of goods sold
+c . use of ;Cig (ak> as corporate name
+d. holistic test
+e. dominant)feature test
+f. passing off
+g. trademark use
0. "rademark infringementA cause of action and elements
aM "he cause of action based on the first part of Section %%
lements
bM 1eneric and descripti*e character
cM Prior users of trademark
dM lement of confusion9 confusion as to goods and
confusion as to origin
eM (arket consideration and price differences
fM Dominant)feature test *s. &olistic test
/. Gnfair competitionA elements
aM elements of an action for unfair competition
bM dissimilarities in the packaging
3. Remedies

(ighty !orporation, t !l. 2. TD 1allo Pinery, et al. S!
1.R. $o. 13/0/%, Duly 1/, %66/
1. Petition for certiorariA questions of fact and questions
of la'
%. Applicable la' at the time the case 'as filed
+a. Section %05
+b. !urati*e statute
0. Article -bis of the Paris !on*ention9 elements of
trademark infringement
/. Hirst use of trademarks
+a. PR stores
+b. Affida*it of non)use
3. Distinctions bet'een trademark infringement
and unfair competition 9 "el #onte case
+a. lements under Section %%
+b. 'ines and cigarettes are related goods
+c. Product indicated in the certificate of registration
+d. "ypes of confusion 9 goods *s. origin9 "he Supreme
!ourt adopted these t'o)part analysis inn $terling
%roducts International, Incorporated v.
&arbenfabriken 'ayer !ktiengesellschaft, et al., and
in the recent decision in #c"onald(s )orporation
#c*eorge &ood Industries, Inc. vs. +.). 'ig #ak
'urger, Inc., 1.R. $o. 1/0550, August 17, %66
+e. Dominant Heature "est *s. &olistic "est
+f. #c"onald(s )orporation #c*eorge &ood Industries,
Inc. vs. +.). 'ig #ak 'urger, Inc., 1.R. $o. 1/0550,
August 17, %66/, demonstrated that the application
of one test eBcludes the other. &ere the Supreme
!ourt applied the test of dominancy and re<ected the
holistic test
$ociete "es %roduits ,estl-, $.!. v. )ourt of !ppeals, 'here
the !ourt eBplicitly re<ected the holistic test in this 'ise9

.T/he totality or holistic test is contrary to the elementary
postulate of the law on trademarks and unfair competition
that confusing similarity is to be determined on the basis of
visual, aural, connotative comparisons and o*erall
impressions engendered by the marks in controversy as
they are encountered in the realities of the marketplace.
(mphasis supplied)
"rademark !onflicts and Prior Gse
S!"I#$ 1-7. Gnfair !ompetition, Rights, Regulation
and Remedies. ) 1-7.1. A person 'ho has identified in the
mind of the public the goods he manufactures or deals in,
his business or ser*ices from those of others, 'hether or
not a registered mark is employed, has a property right in
the good'ill of the said goods, business or ser*ices so
identified, 'hich 'ill be protected in the same manner as
other property rights.
1-7.%. Any person 'ho shall employ deception or any other
means contrary to good faith by 'hich he shall pass off the
goods manufactured by him or in 'hich he deals, or his
business, or ser*ices for those of the one ha*ing established
such good'ill, or 'ho shall commit any acts calculated to
produce said result, shall be guilty of unfair competition,
and shall be sub<ect to an action therefor.
1-7.0. In particular, and 'ithout in any 'ay limiting the
scope of protection against unfair competition, the follo'ing
shall be deemed guilty of unfair competition9
+a. Any person, 'ho is selling his goods and gi*es them
the general appearance of goods of another manufacturer
or dealer, either as to the goods themsel*es or in the
'rapping of the packages in 'hich they are contained, or
the de*ices or 'ords thereon, or in any other feature of
their appearance, 'hich 'ould be likely to influence
purchasers to belie*e that the goods offered are those of a
manufacturer or dealer, other than the actual manufacturer
or dealer, or 'ho other'ise clothes the goods 'ith such
appearance as shall decei*e the public and defraud another
of his legitimate trade, or any subsequent *endor of such
goods or any agent of any *endor engaged in selling such
goods 'ith a like purposeA
+b. Any person 'ho by any artifice, or de*ice, or 'ho
employs any other means calculated to induce the false
belief that such person is offering the ser*ices of another
'ho has identified such ser*ices in the mind of the publicA
or
+c. Any person 'ho shall make any false statement in
the course of trade or 'ho shall commit any other act
contrary to good faith of a nature calculated to discredit the
goods, business or ser*ices of another.
Pau Duman / Intellectual Property Rights / Prof. Amador / Page 0%
1-7./. "he remedies pro*ided by Sections 13-, 138 and
1-1 shall apply mutatis mutandis. +Sec. %5, R.A. $o. 1--a.
Gnfair !ompetition
+i. $o registration of mark is required in unfair competition
+ii. Defendant shall ha*e gi*en to his goods the general
appearance of the goods of the complaining party, either in
the 'rapping of the packages in 'hich they are contained,
or the de*ices or 'ords thereon or in any other feature of
their appearance 'hich 'ould be likely to influence
purchasers to belie*e that the goods offered are those of
the complaining partyA
+iii. the defendant should ha*e clothed the goods 'ith such
appearance for the purpose of decei*ing the public and
defrauding the complaining party of his legitimate trade
+i*.Gnfair competition usually arises in cases of trade dress
imitation
+*.Plaintiff in an unfair competition action must sho' that
his goods ha*e acquired good'ill and reputation among
consumers
+*i. "he true test of unfair competition is 'hether the acts
of defendant are such as are calculated to decei*e the
ordinary buyer making his purchases under the ordinary
conditions 'hich pre*ail in the particular trade to 'hich the
contro*ersy relates
+*ii.Hraudulent intent on the part of defendant to pass off
his goods or business as or for that of plaintiff is necessary
Section 1-7.% sub<ects to liability for unfair competition
;any person 'ho shall make any false statement in the
course of trade or 'ho shall commit any other act contrary
to good faith of a nature calculated to discredit the goods,
business or ser*ices of another
"his is called disparaging use of marks or trade libel in other
<urisdiction
Bamples9 1enital lectric for panties @ 1eneral lectricA
Inutel Inside @ Intel InsideA Phere "here?s Cugs, "here?s
4ife for insecticides @ Phere "here?s 4ife, "here?s Cud
Section 1-5.1 Halse Designation of #rigin O any false
designation of origin, false or misleading description of fact,
or false or misleading representation of fact, 'hich9
+a. Is likely to cause confusion, or to cause mistake, or to
decei*e as to the affiliation, connection, or association of
such person 'ith another person, or as to the origin,
sponsorship, or appro*al of his or her goods, ser*ices, or
commercial acti*ities by another personA or
+b. In commercial ad*ertising or promotion,
misrepresents the nature, characteristics, qualities, or
geographic origin of his or her or another personFs goods,
ser*ices, or commercial acti*ities, shall be liable to a ci*il
action for damages and in<unction pro*ided in Sections 13-
and 138 of this Act by any person 'ho belie*es that he or
she is or is likely to be damaged by such act.
1-5.%. Any goods marked or labeled in contra*ention of the
pro*isions of this Section shall not be imported into the
Philippines or admitted entry at any customhouse of the
Philippines. "he o'ner, importer, or consignee of goods
refused entry at any customhouse under this section may
ha*e any recourse under the customs re*enue la's or may
ha*e the remedy gi*en by this Act in cases in*ol*ing goods
refused entry or seiKed. +Sec. 06, R.A. $o. 1--a.
Remedies and Reliefs In Gnfair !ompetition
S!"I#$ 13-. Actions, and Damages and In<unction
for Infringement.
+1. damages suffered shall be either
+i. the reasonable profit 'hich the complaining party 'ould
ha*e made, had the defendant not infringed his rights, or
+ii. the profit 'hich the defendant actually made out of the
infringementA or
+iii. if not ascertainable, a reasonable percentage based
upon the amount of gross sales of the defendant or the
*alue of the ser*ices in connection 'ith 'hich the mark or
trade name 'as used
+%. impounding during the pendency of the action, sales
in*oices and other documents e*idencing sales
+0. 'here actual intent to mislead the public or to defraud
the complainant is sho'n, in the discretion of the court, the
damages may be doubled
+/. 'here actual intent to mislead the public or to defraud
the complainant is sho'n, in the discretion of the court, the
damages may be doubled
+3. complainant, upon proper sho'ing, may also be granted
in<unction
+-. under Section 138, destruction of infringing goods and
materials used for infringementA remo*al of infringing mark
not enough to <ustify release of goods
Search and seiKure in ci*il cases no' allo'ed under
Supreme !ourt circular A.(. $#. 6%)1)6-)S!
S!. %. The writ of search and sei0ure. @ Phere any delay is
likely to cause irreparable harm to the intellectual property
right holder or 'here there is demonstrable risk of e*idence
being destroyed, the intellectual property right holder or his
duly authoriKed representati*e in a pending ci*il action for
infringement or 'ho intends to commence such
an action may apply e1 parte for the issuance of a 'rit of
search and seiKure directing the alleged infringing defendant
or eBpected ad*erse party to admit into his premises the
persons named in the order and to allo' the search,
inspection, copying, photographing, audio and audio*isual
recording or seiKure of any document and article specified in
the order
Administrati*e Actions for "( nforcement
Section 1--, 1oods Cearing Infringing (arks or "rade
$ames may be barred from commerce through customs
eBclusion proceeding
!riminal Penalties for !ounterfeiting
S!"I#$ 186. Penalties. ) Independent of the ci*il
and administrati*e sanctions imposed by la', a criminal
penalty of imprisonment from t'o +%. years to fi*e +3.
years and a fine ranging from Hifty thousand pesos
+P36,666. to "'o hundred thousand pesos+P%66,666., shall
be imposed on any person 'ho is found guilty of committing
Pau Duman / Intellectual Property Rights / Prof. Amador / Page 0/
any of the acts mentioned in Section 133, Section 1-7 and
Subsection 1-5.1. +Arts. 177 and 175, Re*ised Penal !ode.
"rademarks #nline
2eriSign, estimates that 86W of domain names associated
'ith top brands are not registered by the true brand o'ner,
prompting rights holders to defensi*ely register their marks
as domain names
"rademark o'ners are also facing ne' types of
infringement, including user)traffic di*ersion through
key'ords and meta tags, or unauthoriKed linking and
framing
(etatags
A Fmeta tagF or Fmeta dataF is a key'ord or phrase
embedded in a 'ebsiteFs &"(4 +hyperteBt markup
language. code as a means for Internet search engines to
identify and categoriKe the contents of the 'ebsite
In the Gnited States of America, in the case of Crookfield
!ommunications Inc. *. Pest !oast ntertainment !orp, 36
G.S.P.Q. %d 13/3 +5th !ir. 1555., the !ourt regarded the
practice of meta tagging as potential trademark
infringement, stating that such use might suggest
sponsorship or authoriKation by the trademark o'ner, or
that consumers looking for the products of the trademark
o'ner might be misdirected and di*erted to a competitorFs
'ebsite and be at least initially confused in their search for
the trademarked goods
Sale of "rademarks as =ey'ords
Retailers, for eBample, ha*e purchased key'ords so that
their banner ad*ertisements are displayed 'hene*er certain
trademarked products are the ob<ect of a search
Retailers, for eBample, ha*e purchased key'ords so that
their banner ad*ertisements are displayed 'hene*er certain
trademarked products are the ob<ect of a search
In Playboy nterprises Inc. *. $etscape !ommunications
!orporation, !.D. !alif., $o. SA !2 55)0%6 A&S +eB. +Dune
%/, 1555., the !ourt denied preliminary relief stating that
the FPlayboyF and FPlaymateF key'ords sold by the defendant
'ere used by searchers as common or generic 'ords, not
the marks
Pop)Gp Ad*ertisements
Pop)up ads are used as marketing tools designed to capture
consumersF attention, and are based on soft'are designed
to track usersF online acti*ity and then deli*er targeted
ad*ertising based on their preferences
In American case of Pashington Post $e's'eek Interacti*e
!o. *. 1ator !orp., !i*il Action $o.6%)565)A, Duly 1-, %66%,
the !ourt issued a preliminary in<unction that prohibited the
defendant from enabling third)party ad*ertising to appear
on a userFs computer screen 'hile the user 'as *ie'ing
'ebsites o'ned or affiliated 'ith the plaintiffs, 'ho 'ere
online ne's companies. "he !ourt found that the soft'are
*iolated the plaintiffsF trademarks by causing pop)up
ad*ertising to appear in proBimity to them.

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