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LAW ON INTELLECTUAL PROPERTY III.

TRADEMARKS
CASE DOCTRINES Acquisition of Ownership of Mark
a. Birkenstock vs. Phil. Shoe Marketing [2013]
I. INTELLECTUAL PROPERTY RIGHTS
Republic Act No. (RA) 166, the governing law for Registration No.
Declaration of State Policy
a. IPAP vs. Ochoa [2016] 56334, requires the filing of a DAU on specified periods, to wit:
Section 2. Declaration of State Policy. - The State recognizes that an Section 12. Duration. Each certificate of registration shall remain in
effective intellectual and industrial property system is vital to the force for twenty years: Provided, That registrations under the provisions
development of domestic and creative activity, facilitates transfer of of this Act shall be cancelled by the Director, unless within one year
technology, attracts foreign investments, and ensures market access for following the fifth, tenth and fifteenth anniversaries of the date of issue
our products. It shall protect and secure the exclusive rights of of the certificate of registration, the registrant shall file in the Patent
scientists, inventors, artists and other gifted citizens to their intellectual Office an affidavit showing that the mark or trade-name is still in use or
property and creations, particularly when beneficial to the people, for showing that its non-use is due to special circumstance which excuse
such periods as provided in this Act. such non-use and is not due to any intention to abandon the same, and
The use of intellectual property bears a social function. To this end, the pay the required fee.
State shall promote the diffusion of knowledge and information for the The aforementioned provision clearly reveals that failure to file the DAU
promotion of national development and progress and the common within the requisite period results in the automatic cancellation of
good. registration of a trademark. In turn, such failure is tantamount to the
It is also the policy of the State to streamline administrative procedures abandonment or withdrawal of any right or interest the registrant has
of registering patents, trademarks and copyright, to liberalize the over his trademark.
registration on the transfer of technology; and to enhance the
enforcement of intellectual property rights in the Philippines. It must be emphasized that registration of a trademark, by itself, is not
In view of the expression of state policy having been made by the a mode of acquiring ownership. If the applicant is not the owner of the
Congress itself (through above-quoted provision), the IPAP is plainly trademark, he has no right to apply for its registration. Registration
mistaken in asserting that "there was no Congressional act that merely creates a prima facie presumption of the validity of the
authorized the accession of the Philippines to the Madrid Protocol." registration, of the registrants ownership of the trademark, and of the
exclusive right to the use thereof. Such presumption, just like the
The IPAP misapprehends the procedure for examination under presumptive regularity in the performance of official functions, is
the Madrid Protocol, The difficulty, which the IPAP illustrates, is rebuttable and must give way to evidence to the contrary.
minimal, if not altogether inexistent. The IPOPHL actually requires the
designation of the resident agent when it refuses the registration of a b. Superior Commercial Enterprises vs. Kunnan Enterprises [2010]
mark. Local representation is further required in the submission of the Cancellation of registration of a trademark has the effect of depriving
Declaration of Actual Use, as well as in the submission of the license the registrant of protection from infringement from the moment
contract. The Madrid Protocol accords with the intent and spirit of the judgment or order of cancellation has become final. In a trademark
IP Code, particularly on the subject of the registration of trademarks. infringement, title to the trademark is indispensable to a valid cause of
The Madrid Protocol does not amend or modify the IP Code on the action and such title is shown by its certificate of registration.
acquisition of trademark rights considering that the applications under
the Madrid Protocol are still examined according to the relevant As a mere distributor, petitioner Superior undoubtedly had no right to
national law, In that regard, the IPOPHL will only grant protection to a register the questioned mark in its name. Well-entrenched in our
mark that meets the local registration requirements.
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jurisdiction is the rule that the right to register a trademark should be Tests to Determine Confusing Similarity Between Marks
based on ownership. When the applicant is not the owner of the 1. Dominance Test
trademark being applied for, he has no right to apply for the a. Asia Brewery vs. CA [1993]
registration of the same. Under the Trademark Law, only the owner of It has been consistently held that the question of infringement of a
the trademark, trade name or service mark used to distinguish his trademark is to be determined by the test of dominancy. Similarity in
goods, business or service from the goods, business or service of others size, form and color, while relevant, is not conclusive. If the competing
is entitled to register the same. An exclusive distributor does not trademark contains the main or essential or dominant features of
acquire any proprietary interest in the principals trademark and cannot another, and confusion and deception is likely to result, infringement
register it in his own name unless it is has been validly assigned to him. takes place. Duplication or imitation is not necessary; nor it is necessary
that the infringing label should suggest an effort to imitate. The
Acquisition of Ownership of Trade Name question at issue in cases of infringement of trademarks is whether the
a. Cordon Bleu of the Philippines vs. Renaus Cointreau & Cie [2013] use of the marks involved would be likely to cause confusion or
Under Section 2 of R.A. No. 166, in order to register a trademark, one mistakes in the mind of the public or deceive purchasers.
must be the owner thereof and must have actually used the mark in
commerce in the Philippines for two (2) months prior to the application Factual milieu: The fact that the words pale pilsen are part of ABIs
for registration. Section 2-A of the same law sets out to define how one trademark does not constitute an infringement of SMCs trademark;
goes about acquiring ownership thereof. Under Section 2-A, it is clear pale pilsen are generic words descriptive of the color (pale), of a
that actual use in commerce is also the test of ownership but the type of beer (pilsen), which is a light bohemian beer with a strong
provision went further by saying that the mark must not have been so hops flavor that originated in the City of Pilsen in Czechoslovakia and
appropriated by another. Additionally, it is significant to note that became famous in the Middle Ages. Pilsen is a primarily
Section 2-A does not require that the actual use of a trademark must geographically descriptive word, hence, non-registerable and not
be within the Philippines. Thus, under R.A. No. 166, one may be an appropriable by any beer manufacturer.
owner of a mark due to its actual use but may not yet have the right to Considering further that SAN MIGUEL PALE PILSEN has virtually
register such ownership here due to the owners failure to use the same monopolized the domestic beer market for the past hundred years,
in the Philippines for two (2) months prior to registration. those who have been drinking no other beer but SAN MIGUEL PALE
Nevertheless, foreign marks which are not registered are still accorded PILSEN these many years certainly know their beer too well to be
protection against infringement and/or unfair competition. At this deceived by a newcomer in the market. If they gravitate to ABI's
point, it is worthy to emphasize that the Philippines and France, cheaper beer, it will not be because they are confused or deceived, but
Cointreaus country of origin, are both signatories to the Paris because they find the competing product to their taste.
Convention for the Protection of Industrial Property (Paris Convention).
b. McDonalds Corporation vs. LC Big Mak Burgers [2004]
In any case, the present law on trademarks, Republic Act No. 8293, In determining likelihood of confusion, jurisprudence has developed
otherwise known as the Intellectual Property Code of the Philippines, as two tests, the dominancy test and the holistic test. The dominancy test
amended, has already dispensed with the requirement of prior actual focuses on the similarity of the prevalent features of the competing
use at the time of registration. trademarks that might cause confusion. In contrast, the holistic test
requires the court to consider the entirety of the marks as applied to
the products, including the labels and packaging, in determining
confusing similarity.

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The dominancy test considers the dominant features in the competing inexpensive and common household item. The abovementioned test is
marks in determining whether they are confusingly similar. Under the improper as the law on trademarks and unfair competition provides
dominancy test, courts give greater weight to the similarity of the that confusing similarity is to be determined on the basis of aural,
appearance of the product arising from the adoption of the dominant visual, an overall impressions engendered by the marks in controversy
features of the registered mark, disregarding minor differences. Courts as they are encountered in the realities of the marketplace.
will consider more the aural and visual impressions created by the
marks in the public mind, giving little weight to factors like prices, Factual milieu: The word MASTER is neither a generic nor a descriptive
quality, sales outlets and market segments. term. As such, the said terms cannot be invalidated as a trademark, and
The test of dominancy is now explicitly incorporated into law in Section may legally be protected. The said terms is a suggestive term brought
155.1 of the Intellectual Property Code which defines infringement as about by the advertising scheme of Nestle. Suggestive terms are those,
the "colorable imitation of a registered mark xxx or a dominant feature which require imagination, thought, and perception to reach a
thereof." conclusion as to the nature of the goods. Such terms, which subtly
connote something about the product, are eligible for protection in the
Factual milieu: Applying the dominancy test, the Court finds that absence of secondary meaning. The term MASTER, therefore, has
respondents' use of the "Big Mak" mark results in likelihood of acquired a certain connotation to mean the coffee products MASTER
confusion. First, "Big Mak" sounds exactly the same as "Big Mac." ROAST and MASTER BLEND produced by Nestle. As such, the use of
Second, the first word in "Big Mak" is exactly the same as the first word CFC by the term as part of its trademark for its coffee product FLAVOR
in "Big Mac." Third, the first two letters in "Mak" are the same as the MASTER is likely to cause confusion or mistake or even deceive the
first two letters in "Mac." Fourth, the last letter in "Mak" while a "k" ordinary purchasers.
sounds the same as "c" when the word "Mak" is pronounced. Fifth, in
Filipino, the letter "k" replaces "c" in spelling, thus "Caloocan" is spelled d. McDonalds Corporation vs. MACJOY Fastfood Corporation [2007]
"Kalookan." In determining similarity and likelihood of confusion, jurisprudence has
In short, aurally the two marks are the same, with the first word of both developed two tests, the dominancy test and the holistic test. The
marks phonetically the same, and the second word of both marks also dominancy test focuses on the similarity of the prevalent features of the
phonetically the same. Visually, the two marks have both two words competing trademarks that might cause confusion or deception. In
and six letters, with the first word of both marks having the same letters contrast, the holistic test requires the court to consider the entirety of
and the second word having the same first two letters. In spelling, the marks as applied to the products, including the labels and
considering the Filipino language, even the last letters of both marks packaging, in determining confusing similarity. Under the latter test, a
are the same. comparison of the words is not the only determinant factor.
Clearly, respondents have adopted in "Big Mak" not only the dominant
but also almost all the features of "Big Mac." Applied to the same food Factual milieu: The holistic test is not the one applicable in this case, the
product of hamburgers, the two marks will likely result in confusion in dominancy test being the one more suitable.
the public mind. (1) To begin with, both marks use the corporate "M" design logo and
the prefixes "Mc" and/or "Mac" as dominant features. The first letter
c. Societes Des Produits Nestle vs. CA [2001] "M" in both marks puts emphasis on the prefixes "Mc" and/or "Mac" by
The application of the totality or holistic test is improper since the the similar way in which they are depicted i.e. in an arch-like, capitalized
ordinary purchaser would not be inclined to notice the specific features, and stylized manner.
similarities, or differences, considering that the product is an

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(2) For sure, it is the prefix "Mc," an abbreviation of "Mac," which of confusing similarity. Applying the dominancy test in the present
visually and aurally catches the attention of the consuming public. case, the Court finds that NANNY is confusingly similar to NAN. NAN is
Verily, the word "MACJOY" attracts attention the same way as did the prevalent feature of Nestles line of infant powdered milk products.
"McDonalds," "MacFries," "McSpaghetti," "McDo," "Big Mac" and the It is written in bold letters and used in all products. The line consists of
rest of the MCDONALDS marks which all use the prefixes Mc and/or PRE-NAN, NAN-H.A., NAN-1, and NAN-2. Clearly, NANNY contains the
Mac. prevalent feature NAN. The first three letters of NANNY are exactly the
(3) Besides and most importantly, both trademarks are used in the sale same as the letters of NAN. When NAN and NANNY are pronounced,
of fastfood products. the aural effect is confusingly similar.

e. Sketchers USA vs. Inter Pacific Industrial Trading [2011] 2. Holistic Test
The essential element of infringement under R.A. No. 8293 is that the a. Emerald Garment Manufacturing Corp. vs. CA [1995]
infringing mark is likely to cause confusion. Holistic test mandates that the entirety of the marks in question must
be considered in determining confusing similarity. In determining
Factual milieu: Applying the Dominancy Test to the case at bar, this whether the trademarks are confusingly similar, a comparison of the
Court finds that the use of the stylized "S" by respondent in its Strong words is not the only determinant factor. The trademarks in their
rubber shoes infringes on the mark already registered by petitioner entirety as they appear in their respective labels or hang tags must also
with the IPO. While it is undisputed that petitioners stylized "S" is be considered in relation to the goods to which they are attached.
within an oval design, to this Courts mind, the dominant feature of the
trademark is the stylized "S," as it is precisely the stylized "S" which Factual milieu: Applying the foregoing tenets to the present
catches the eye of the purchaser. Thus, even if respondent did not use controversy and taking into account the factual circumstances of this
an oval design, the mere fact that it used the same stylized "S", the case, we considered the trademarks involved as a whole and rule that
same being the dominant feature of petitioners trademark, already petitioner's "STYLISTIC MR. LEE" is not confusingly similar to private
constitutes infringement under the Dominancy Test. Thus, even if not all respondent's "LEE" trademark. Petitioner's trademark is the whole
the details are identical, as long as the general appearance of the two "STYLISTIC MR. LEE." Although on its label the word "LEE" is prominent,
products are such that any ordinary purchaser would be deceived, the the trademark should be considered as a whole and not piecemeal. The
imitator should be liable. dissimilarities between the two marks become conspicuous, noticeable
and substantial enough.
f. Societes Des Produits Nestle vs. Dy [2010] First, the products involved in the case at bar are, in the main, various
In cases involving trademark infringement, no set of rules can be kinds of jeans. Maong pants or jeans are not inexpensive. Accordingly,
deduced. Each case must be decided on its own merits. Jurisprudential the casual buyer is predisposed to be more cautious and discriminating
precedents must be studied in the light of the facts of each particular in and would prefer to mull over his purchase. Confusion and
case. deception, then, is less likely. Expensive and valuable items are normally
bought only after deliberate, comparative and analytical investigation.
Factual milieu: In the light of the facts of the present case, the Court Second, like his beer, the average Filipino consumer generally buys his
holds that the dominancy test is applicable. In recent cases with similar jeans by brand. He does not ask the sales clerk for generic jeans but for,
factual milieus, the Court has consistently applied the dominancy test. say, a Levis, Guess, Wrangler or even an Armani. He is, therefore, more
This is not the first time the Court takes into account the aural effects of or less knowledgeable and familiar with his preference and will not
the words and letters contained in the marks in determining the issue easily be distracted.

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Finally, the ordinary purchaser is not the "completely unwary consumer" 1. The trademark being infringed is registered in the Intellectual
but is the "ordinarily intelligent buyer" considering the type of product Property Office;
involved. As one would readily observe, private respondent's variation 2. The trademark is reproduced, counterfeited, copied, or colorably
follows a standard format "LEERIDERS," "LEESURES" and "LEELEENS." It imitated by the infringer;
is, therefore, improbable that the public would immediately and 3. The infringing mark is used in connection with the sale, offering for
naturally conclude that petitioner's "STYLISTIC MR. LEE" is but another sale, or advertising of any goods, business or services; or the infringing
variation under private respondent's "LEE" mark. mark is applied to labels, signs, prints, packages, wrappers, receptacles
or advertisements intended to be used upon or in connection with such
Another way of resolving the conict is to consider the marks involved goods, business or services;
from the point of view of what marks are registrable. 4. The use or application of the infringing mark is likely to cause
"LEE" is primarily a surname. Private respondent cannot, therefore, confusion or mistake or to deceive purchasers or others as to the goods
acquire exclusive ownership over and singular use of said term. . . . It or services themselves or as to the source or origin of such goods or
has been held that a personal name or surname may not be services or the identity of such business; and
monopolized as a trademark or tradename as against others of the 5. The use or application of the infringing mark is without the consent
same name or surname. of the trademark owner or the assignee thereof.

b. Bristol Myers Co. vs. Dir. of Patents & United American Pharma Factual milieu: The holistic test is applicable here considering that the
[1966] herein criminal cases also involved trademark infringement in relation
In determining whether two trademarks are confusingly similar, the test to jeans products. Accordingly, the jeans trademarks of Levis
is not simply to take their words and compare the spelling and Philippines and Diaz must be considered as a whole in determining the
pronunciation of said words. Rather, it is to consider the two marks in likelihood of confusion between them.
their entirety as they appear in the respective labels, in relation to the There were other remarkable differences between the two trademarks
goods to which they are attached. that the consuming public would easily perceive. Diaz aptly noted such
differences, as follows:
Factual milieu: The words BIOFERIN and BUFFERIN have the same The prosecution also alleged that the accused copied the "two horse
suffix and similar sounding prefixes, they appear in their respective design" of the petitioner-private complainant but the evidence will
labels with strikingly different backgrounds and surroundings, as to show that there was no such design in the seized jeans. Instead, what is
color, size, and design. shown is "buffalo design." Again, a horse and a buffalo are two different
Taken as they will appear to a prospective customer, the trademarks in animals which an ordinary customer can easily distinguish. x x x.
question are not apt to confuse. The product of the applicant is Moreover, based on the certificate issued by the Intellectual Property
expressly stated as dispensable only upon doctors prescription, while Office, "LS JEANS TAILORING" was a registered trademark of Diaz. He
that of the oppositor does not require the same. The chances of being had registered his trademark prior to the filing of the present cases. The
confused into purchasing one for the other are all the more rendered Intellectual Property Office would certainly not have allowed the
negligible. registration had Diazs trademark been confusingly similar with the
registered trademark for LEVIS 501 jeans.
c. Victorio Diaz vs. People and Levi Strauss [2013]
The elements of the offense of trademark infringement under the
Intellectual Property Code are the following:

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d. Philip Morris vs. Fortune Tobacco [2006] e. Del Monte Corp. and Philippine Packaging Corp. vs. CA [1990]
The dominancy test sets sight on the similarity of the prevalent features The question is not whether the two articles are distinguishable by their
of the competing trademarks that might cause confusion and label when set side by side but whether the general confusion made by
deception, thus constitutes infringement. Under this norm, the question the article upon the eye of the casual purchaser who is unsuspicious
at issue turns on whether the use of the marks involved would be likely and off his guard, is such as to likely result in his confounding it with
to cause confusion or mistake in the mind of the public or deceive the original. As observed in several cases, the general impression of the
purchasers. In contrast, the holistic test entails a consideration of the ordinary purchaser, buying under the normally prevalent conditions in
entirety of the marks as applied to the products, including the labels trade and giving the attention such purchasers usually give in buying
and packaging, in determining confusing similarity. that class of goods is the touchstone.
A number of courts have held that to determine whether a trademark
Factual milieu: After comparing the trademarks involved in their entirety has been infringed, we must consider the mark as a whole and not as
as they appear on the products, the striking dissimilarities are dissected. If the buyer is deceived, it is attributable to the marks as a
significant enough to warn any purchaser that one is different from the totality, not usually to any part of it. The court therefore should be
other. Indeed, although the perceived offending word MARK is itself guided by its first impression, for a buyer acts quickly and is governed
prominent in petitioners trademarks MARK VII and MARK TEN, the by a casual glance, the value of which may be dissipated as soon as the
entire marking system should be considered as a whole and not court assumes to analyze carefully the respective features of the mark.
dissected, because a discerning eye would focus not only on the We also note that the respondent court failed to take into
predominant word but also on the other features appearing in the consideration several factors which should have affected its conclusion,
labels. Only then would such discerning observer draw his conclusion to wit: age, training and education of the usual purchaser, the nature
whether one mark would be confusingly similar to the other and and cost of the article, whether the article is bought for immediate
whether or not sufficient differences existed between the marks. consumption and also the conditions under which it is usually
But, even if the dominancy test were to be used, as urged by the purchased. Among these, what essentially determines the attitude of
petitioners, but bearing in mind that a trademark serves as a tool to the purchaser, specifically his inclination to be cautious, is the cost of
point out distinctly the origin or ownership of the goods to which it is the goods. To be sure, a person who buys a box of candies will not
affixed, the likelihood of confusion tantamount to infringement appears exercise as much care as one who buys an expensive watch. As a
to be farfetched. The reason for the origin and/or ownership angle is general rule, an ordinary buyer does not exercise as much prudence in
that unless the words or devices do so point out the origin or buying an article for which he pays a few centavos as he does in
ownership, the person who first adopted them cannot be injured by any purchasing a more valuable thing. Expensive and valuable items are
appropriation or imitation of them by others, nor can the public be normally bought only after deliberate, comparative and analytical
deceived. investigation. But mass products, low priced articles in wide use, and
The view of an ordinary purchaser must be considered. The ordinary matters of everyday purchase requiring frequent replacement are
purchaser in this case means one accustomed to buy, and therefore to bought by the casual consumer without great care.
some extent familiar with, the goods in question. It cannot be over-
emphasized that the products involved are addicting cigarettes Well-Known Marks
purchased mainly by those who are already predisposed to a certain a. In-N-Out Burger vs. Sehwani Inc. [2008]
brand. Accordingly, the ordinary buyer thereof would be all too familiar Although petitioner had never done business in the Philippines, it was
with his brand and discriminating as well. widely known in this country through the use herein of products
bearing its corporate and trade name. Petitioners marks are

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internationally well-known, given the world-wide registration of the Harvard is the trade name of the world famous Harvard University, and
mark "IN-N-OUT," and its numerous advertisements in various it is also a trademark of Harvard University. Under Article 8 of the Paris
publications and in the Internet. Moreover, the IPO had already Convention, as well as Section 37 of R.A. No. 166, Harvard University is
declared in a previous inter partes case that "In-N-Out Burger and entitled to protection in the Philippines of its trade name Harvard even
Arrow Design" was an internationally well-known mark. without registration of such trade name in the Philippines. This means
that no educational entity in the Philippines can use the trade name
b. Fredco Manufacturing Corp. vs. President and Fellows of Harvard Harvard without the consent of Harvard University.
College [2011] To be protected under the two directives of the Ministry of Trade, an
Rule 102 of the Rules and Regulations on Trademarks, Service Marks, internationally well-known mark need not be registered or used in the
Trade Names and Marked or Stamped Containers, which implement Philippines. All that is required is that the mark is well-known
R.A. No. 8293, provides: internationally and in the Philippines for identical or similar goods,
Rule 102. Criteria for determining whether a mark is well-known. In whether or not the mark is registered or used in the Philippines.
determining whether a mark is well-known, the following criteria or any Even without applying the Paris Convention, Harvard University can
combination thereof may be taken into account: invoke Section 4(a) of R.A. No. 166 which prohibits the registration of a
mark which may disparage or falsely suggest a connection with
(a) the duration, extent and geographical area of any use of the mark, in persons, living or dead, institutions, beliefs x x x.
particular, the duration, extent and geographical area of any promotion
of the mark, including advertising or publicity and the presentation, at Rights Conferred by Registration
fairs or exhibitions, of the goods and/or services to which the mark a. Taiwan Kolin Corp. vs. Kolin Electronics [2015]
applies; A certificate of trademark registration confers upon the trademark
(b) the market share, in the Philippines and in other countries, of the owner the exclusive right to sue those who have adopted a similar mark
goods and/or services to which the mark applies; not only in connection with the goods or services specified in the
(c) the degree of the inherent or acquired distinction of the mark; certificate, but also with those that are related thereto.
(d) the quality-image or reputation acquired by the mark; The Court held that the goods should be tested against several factors
(e) the extent to which the mark has been registered in the world; before arriving at a sound conclusion on the question of relatedness.
(f) the exclusivity of registration attained by the mark in the world; Among these are:
(g) the extent to which the mark has been used in the world; (a) the business (and its location) to which the goods belong;
(h) the exclusivity of use attained by the mark in the world; (b) the class of product to which the goods belong;
(i) the commercial value attributed to the mark in the world; (c) the products quality, quantity, or size, including the nature of the
(j) the record of successful protection of the rights in the mark; package, wrapper or container;
(k) the outcome of litigations dealing with the issue of whether the (d) the nature and cost of the articles;
mark is a well-known mark; and (e) the descriptive properties, physical attributes or essential
(l) the presence or absence of identical or similar marks validly characteristics with reference to their form, composition, texture or
registered for or used on identical or similar goods or services and quality;
owned by persons other than the person claiming that his mark is a (f) the purpose of the goods;
well-known mark. (g) whether the article is bought for immediate consumption, that is,
day-to-day household items;
(h) the fields of manufacture;

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(i) the conditions under which the article is usually purchased; and similarity of the products involved and not on the arbitrary classification
(j) the channels of trade through which the goods flow, how they are or general description of their properties or characteristics. But the
distributed, marketed, displayed and sold. mere fact that one person has adopted and used a particular trademark
for his goods does not prevent the adoption and use of the same
Factual milieu: Mere uniformity in categorization, by itself, does not trademark by others on articles of a different description.
automatically preclude the registration of what appears to be an Wines and cigarettes are non-competing and are totally unrelated
identical mark, if that be the case. In this case, credence is accorded to products not likely to cause confusion vis--vis the goods or the
petitioners assertions that: business of the petitioners and respondents. Wines are bottled and
a.Taiwan Kolins goods are classified as home appliances as opposed to consumed by drinking while cigarettes are packed in cartons or
Kolin Electronics goods which are power supply and audio equipment packages and smoked. There is a whale of a difference between their
accessories; descriptive properties, physical attributes or essential characteristics like
b. Taiwan Kolins television sets and DVD players perform distinct form, composition, texture and quality.
function and purpose from Kolin Electronics power supply and audio
equipment; and Infringement and Remedies
c.Taiwan Kolin sells and distributes its various home appliance products a. Shangri-La International Hotel vs. Developers Group of Co. [2006]
on wholesale and to accredited dealers, whereas Kolin Electronics Ownership of a mark or trade name may be acquired not necessarily by
goods are sold and flow through electrical and hardware stores. registration but by adoption and use in trade or commerce. As between
Clearly then, it was erroneous for respondent to assume over the CA to actual use of a mark without registration, and registration of the mark
conclude that all electronic products are related and that the coverage without actual use thereof, the former prevails over the latter. For a rule
of one electronic product necessarily precludes the registration of a widely accepted and firmly entrenched, because it has come down
similar mark over another. In this digital age wherein electronic through the years, is that actual use in commerce or business is a pre-
products have not only diversified by leaps and bounds, and are geared requisite to the acquisition of the right of ownership.
towards interoperability, it is difficult to assert readily, as respondent By itself, registration is not a mode of acquiring ownership. When the
simplistically did, that all devices that require plugging into sockets are applicant is not the owner of the trademark being applied for, he has
necessarily related goods. no right to apply for registration of the same. Registration merely
creates a prima facie presumption of the validity of the registration, of
b. Mighty Corporation and La Campana vs. Gallo Winery [2004] the registrant's ownership of the trademark and of the exclusive right to
Section 20 of the Trademark Law provides that the certificate of the use thereof. Such presumption, just like the presumptive regularity
registration issued by the Director of Patents can confer upon in the performance of official functions, is rebuttable and must give way
petitioner the exclusive right to use its own symbol only to those goods to evidence to the contrary.
specified in the certificate, subject to any conditions and limitations
stated therein. b. Prosource International vs. Horphag Research [2009]
It is the element of "likelihood of confusion" that is the gravamen of
On the argument that wines and cigarettes are related goods, they are trademark infringement. But "likelihood of confusion" is a relative
not. Wines and cigarettes are not identical or competing products. concept. The particular, and sometimes peculiar, circumstances of each
Neither do they belong to the same class of goods. Classification alone case are determinative of its existence. Thus, in trademark infringement
cannot serve as the decisive factor in the resolution of whether or not cases, precedents must be evaluated in the light of each particular case.
wines and cigarettes are related goods. Emphasis should be on the

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In determining similarity and likelihood of confusion, jurisprudence has se, subject to exclusive appropriation. It is only the combination of the
developed two tests: the Dominancy Test and the Holistic or Totality words "SAN FRANCISCO COFFEE," which is respondents trade name in
Test. The Dominancy Test focuses on the similarity of the prevalent its coffee business, that is protected against infringement on matters
features of the competing trademarks that might cause confusion and related to the coffee business to avoid confusing or deceiving the
deception, thus constituting infringement. If the competing trademark public.
contains the main, essential and dominant features of another, and
confusion or deception is likely to result, infringement takes place. d. Gemma Ong vs. People [2011]
Duplication or imitation is not necessary; nor is it necessary that the The prosecution was able to establish that the trademark "Marlboro"
infringing label should suggest an effort to imitate. The question is was not only valid for being neither generic nor descriptive, it was also
whether the use of the marks involved is likely to cause confusion or exclusively owned by PMPI, as evidenced by the certificates of
mistake in the mind of the public or to deceive purchasers. Courts will registration issued by the Intellectual Property Office of the Department
consider more the aural and visual impressions created by the marks in of Trade and Industry.
the public mind, giving little weight to factors like prices, quality, sales Anent the element of confusion, the counterfeit cigarettes seized from
outlets, and market segments. Gemmas possession were intended to confuse and deceive the public
In contrast, the Holistic Test entails a consideration of the entirety of as to the origin of the cigarettes intended to be sold, as they not only
the marks as applied to the products, including the labels and bore PMPIs mark, but they were also packaged almost exactly as
packaging, in determining confusing similarity. The discerning eye of PMPIs products.
the observer must focus not only on the predominant words but also
on the other features appearing on both labels in order that the e. Republic Gas Corporation vs. Petron [2013]
observer may draw his conclusion whether one is confusingly similar to The mere unauthorized use of a container bearing a registered
the other. trademark in connection with the sale, distribution or advertising of
goods or services which is likely to cause confusion, mistake or
c. Coffee Partners vs. San Francisco Coffee [2010] deception among the buyers or consumers can be considered as
RA 8293, which took effect on 1 January 1998, has dispensed with the trademark infringement.
registration requirement (in case of trade names). Section 165.2 of RA Here, petitioners have actually committed trademark infringement
8293 categorically states that trade names shall be protected, even when they refilled, without the respondents consent, the LPG
prior to or without registration with the IPO, against any unlawful act containers bearing the registered marks of the respondents. As noted
including any subsequent use of the trade name by a third party, by respondents, petitioners acts will inevitably confuse the consuming
whether as a trade name or a trademark likely to mislead the public. public, since they have no way of knowing that the gas contained in the
Petitioners argument that "San Francisco" is just a proper name LPG tanks bearing respondents marks is in reality not the latters LPG
referring to the famous city in California and that "coffee" is simply a product after the same had been illegally refilled. The public will then
generic term, is untenable. Respondent has acquired an exclusive right be led to believe that petitioners are authorized refillers and
to the use of the trade name "SAN FRANCISCO COFFEE & ROASTERY, distributors of respondents LPG products, considering that they are
INC." since the registration of the business name with the DTI in 1995. accepting empty containers of respondents and refilling them for
Thus, respondents use of its trade name from then on must be free resale.
from any infringement by similarity. Of course, this does not mean that
respondent has exclusive use of the geographic word "San Francisco"
or the generic word "coffee." Geographic or generic words are not, per

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Unfair Competition The universal test question is whether the public is likely to be
a. Pilipinas Shell vs. Romars [2015] deceived.
Proceedings for applications for a search warrant are not criminal in In the case before us, we are of the view that the probability of
nature and, thus, the rule that venue is jurisdictional does not apply deception must be tested at the point of sale since it is at this point
thereto. Evidently, the issue of whether the application should have that the ordinary purchaser mulls upon the product and is likely to buy
been filed in RTC-Iriga City or RTC-Naga, is not one involving the same under the belief that he is buying another.
jurisdiction because, as stated in the afore-quoted case, the power to
issue a special criminal process is inherent in all courts. d. Manuel Espiritu (Bicol Gas) vs. Petron [2009]
Essentially, what the law punishes is the act of giving ones goods the
b. Willaware Products Corp. vs. Jesichris Manufacturing Corp. [2014] general appearance of the goods of another, which would likely
Prefatorily, we would like to stress that the instant case falls under mislead the buyer into believing that such goods belong to the latter.
Article 28 of the Civil Code on human relations, and not unfair Examples of this would be the act of manufacturing or selling shirts
competition under Republic Act No. 8293, as the present suit is a bearing the logo of an alligator, similar in design to the open-jawed
damage suit and the products are not covered by patent registration. A alligator in La Coste shirts, except that the jaw of the alligator in the
fortiori, the existence of patent registration is immaterial in the present former is closed, or the act of a producer or seller of tea bags with red
case. tags showing the shadow of a black dog when his competitor is
The concept of "unfair competition" under Article 28 is very much producing or selling popular tea bags with red tags showing the
broader than that covered by intellectual property laws. Under the shadow of a black cat.
present article, which follows the extended concept of "unfair
competition" in American jurisdictions, the term covers even cases of Here, there is no showing that Bicol Gas has been giving its LPG tanks
discovery of trade secrets of a competitor, bribery of his employees, the general appearance of the tanks of Petrons Gasul. The truckfull of
misrepresentation of all kinds, interference with the fulfillment of a Bicol Gas tanks that the KPE manager arrested on a road in Sorsogon
competitors contracts, or any malicious interference with the latters just happened to have mixed up with them one authentic Gasul tank
business. that belonged to Petron.

c. Levi Strauss vs. Tony Lim [2008] e. Coca-Cola Bottlers vs. Quintin Gomez [2008]
We cannot sustain Secretary Bellos opinion that to establish probable "Unfair competition," previously defined in Philippine jurisprudence in
cause, "it is enough that the respondent gave to his product the relation with R.A. No. 166 and Articles 188 and 189 of the Revised Penal
general appearance of the product" of petitioner. It bears stressing that Code, is now covered by Section 168 of the IP Code as this Code has
that is only one element of unfair competition. All others must be expressly repealed R.A. No. 165 and R.A. No. 166, and Articles 188 and
shown to exist. More importantly, the likelihood of confusion exists not 189 of the Revised Penal Code.
only if there is confusing similarity. It should also be likely to cause Articles 168.1 and 168.2 provide the concept and general rule on the
confusion or mistake or deceive purchasers. The mere fact that some definition of unfair competition. The law does not thereby cover every
resemblance can be pointed out between the marks used does not in unfair act committed in the course of business; it covers only acts
itself prove unfair competition. To reiterate, the resemblance must be characterized by "deception or any other means contrary to good faith"
such as is likely to deceive the ordinary purchaser exercising ordinary in the passing off of goods and services as those of another who has
care. established goodwill in relation with these goods or services, or any
other act calculated to produce the same result.

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reveal that the same were applied for and issued for violations of
What unfair competition is, is further particularized under Section 168.3 "Section 155 in relation to Section 170 of RA 8293" and violations of
when it provides specifics of what unfair competition is "without in any "Section 168 in relation to Section 170 of RA 8293," and that a perusal
way limiting the scope of protection against unfair competition." Part of of the records would show that there is no mention of a civil action or
these particulars is provided under Section 168.3(c) which provides the anticipation thereof, upon which the search warrants are applied for.
general "catch-all" phrase that the petitioner cites. Under this phrase, a
person shall be guilty of unfair competition "who shall commit any A.M. No. 02-1-06-SC, which provides for the Rules on the Issuance of
other act contrary to good faith of a nature calculated to discredit the the Search and Seizure in Civil Actions for Infringement of Intellectual
goods, business or services of another." Property Rights, is not applicable in this case as the search warrants
We note that Section 168.1 speaks of a person who has earned were not applied based thereon, but in anticipation of criminal actions
goodwill with respect to his goods and services and who is entitled to for violation of intellectual property rights under RA 8293.
protection under the Code, with or without a registered mark. Section
168.2, as previously discussed, refers to the general definition of unfair Hence, Rule 126 of the Rules of Criminal Procedure applies.
competition. Section 168.3, on the other hand, refers to the specific Rule 126 of the Revised Rules of Court, which governs the issuance of
instances of unfair competition, with Section 168.1 referring to the sale the assailed Search Warrants, provides, to wit:
of goods given the appearance of the goods of another; Section 168.2, SEC. 3. Personal property to be seized. - A search warrant may be
to the inducement of belief that his or her goods or services are that of issued for the search and seizure of personal property:
another who has earned goodwill; while the disputed Section (a) Subject of the offense;
168.3 being a "catch all" clause whose coverage the parties now (b) Stolen or embezzled and other proceeds or fruits of the offense; or
dispute. (c) Used or intended to be used as the means of committing an offense.
"Hoarding" - as defined and charged by the petitioner - does not fall
within the coverage of the IP Code and of Section 168 in particular. It
does not relate to any patent, trademark, trade name or service mark
that the respondents have invaded, intruded into or used without
proper authority from the petitioner.

False Designations of Origins, False Description or Representation


a. Chester Uyco vs. Vicente Lo [2013]
Under Section 170 of RA 8293, the law punishes any person who uses in
commerce any false designation of origin which is likely to cause
confusion or mistake as to the origin of the product.

Penalties
a. Century Chinese vs. People [2013]
Respondent contends that the rule (SC Adm. Memo 1-06, No. 02-1-06,
Rule on Search and Seizure in Civil Actions for Infringement of
Intellectual Property Rights) does not apply to the search warrants in
the case at bar, for the reason that the search warrants themselves

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IV. PATENTS Other Cases
Jurisdiction a. Pearl & Dean vs. Shoemart, Inc. [2003]
a. Samson vs. Cabanos [2005] Trademark, copyright and patents are different intellectual property
Under Section 170 of R.A. No. 8293, which took effect on January 1, rights that cannot be interchanged with one another. A trademark is
1998, the criminal penalty for infringement of registered marks, unfair any visible sign capable of distinguishing the goods (trademark) or
competition, false designation of origin and false description or services (service mark) of an enterprise and shall include a stamped or
representation, is imprisonment from 2 to 5 years and a fine ranging marked container of goods. In relation thereto, a trade name means the
from Fifty Thousand Pesos to Two Hundred Thousand Pesos. name or designation identifying or distinguishing an enterprise.
Corollarily, Section 163 of the same Code states that actions (including Meanwhile, the scope of a copyright is confined to literary and artistic
criminal and civil) under Sections 150, 155, 164, 166, 167, 168 and 169 works which are original intellectual creations in the literary and artistic
shall be brought before the proper courts with appropriate jurisdiction domain protected from the moment of their creation. Patentable
under existing laws. inventions, on the other hand, refer to any technical solution of a
The existing law referred to in the foregoing provision is Section 27 of problem in any field of human activity which is new, involves an
R.A. No. 166 (The Trademark Law) which provides that jurisdiction over inventive step and is industrially applicable.
cases for infringement of registered marks, unfair competition, false The patent law has a three-fold purpose: "first, patent law seeks to
designation of origin and false description or representation, is lodged foster and reward invention; second, it promotes disclosures of
with the Court of First Instance (now Regional Trial Court). inventions to stimulate further innovation and to permit the public to
We find no merit in the claim of petitioner that R.A. No. 166 was practice the invention once the patent expires; third, the stringent
expressly repealed by R.A. No. 8293. The repealing clause of R.A. No. requirements for patent protection seek to ensure that ideas in the
8293, reads public domain remain there for the free use of the public."
SEC. 239. Repeals. - 239.1. All Acts and parts of Acts inconsistent
herewith, more particularly Republic Act No. 165, as amended; Republic b. Maguan vs. CA [1986]
Act No. 166, as amended; and Articles 188 and 189 of the Revised Penal It has been repeatedly held that an invention must possess the essential
Code; Presidential Decree No. 49, including Presidential Decree No. 285, elements of novelty, originality and precedence and for the patentee to
as amended, are hereby repealed. be entitled to protection, the invention must be new to the world.
The use of the phrases "parts of Acts" and "inconsistent herewith" only Accordingly, a single instance of public use of the invention by a
means that the repeal pertains only to provisions which are repugnant patentee for more than two years (now for more than one year only
or not susceptible of harmonization with R.A. No. 8293. Section 27 of under Sec. 9 of the Patent Law) before the date of his application for his
R.A. No. 166, however, is consistent and in harmony with Section 163 of patent, will be fatal to, the validity of the patent when issued.
R.A. No. 8293. Had R.A. No. 8293 intended to vest jurisdiction over
violations of intellectual property rights with the Metropolitan Trial c. Aguas vs. De Leon [1982]
Courts, it would have expressly stated so under Section 163 thereof. The petitioner also contends that the improvement of respondent is not
Moreover, the settled rule in statutory construction is that in case of patentable because it is not new, useful and inventive.
conflict between a general law and a special law, the latter must prevail. The respondent's improvement is indeed inventive and goes beyond
Jurisdiction conferred by a special law to Regional Trial Courts must prevail the exercise of mechanical skill. He has introduced a new kind of tile for
over that granted by a general law to Municipal Trial Courts. a new purpose. He has improved the old method of making tiles and
pre-cast articles which were not satisfactory because of an intolerable
number of breakages, especially if deep engravings are made on the

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tile. He has overcome the problem of producing decorative tiles with in and to the patented invention" upon which petitioner maintains its
deep engraving, but with sufficient durability. Durability in spite of the present suit, refers only to the patentee's successors-in-interest,
thinness and lightness of the tile, is assured, provided that a certain assignees or grantees since actions for infringement of patent may be
critical depth is maintained in relation to the dimensions of the tile. brought in the name of the person or persons interested, whether as
patentee, assignees, or as grantees, of the exclusive right. Moreover,
d. Smith Kline Beckman vs. CA [2003] there can be no infringement of a patent until a patent has been issued,
The doctrine of equivalents provides that an infringement also takes since whatever right one has to the invention covered by the patent
place when a device appropriates a prior invention by incorporating its arises alone from the grant of patent. In short, a person or entity who
innovative concept and, although with some modification and change, has not been granted letters patent over an invention and has not
performs substantially the same function in substantially the same way acquired any light or title thereto either as assignee or as licensee, has
to achieve substantially the same result. no cause of action for infringement because the right to maintain an
infringement suit depends on the existence of the patent.
e. Godines vs. CA [1993] Said person, however, is not left without any remedy. He can, under
Tests have been established to determine infringement. These are (a) Section 28 of the aforementioned law, file a petition for cancellation of
literal infringement; and (b) the doctrine of equivalents. In using literal the patent within three (3) years from the publication of said patent
infringement as a test, ". . . resort must be had, in the first instance, to with the Director of Patents and raise as ground therefor that the
the words of the claim. If accused matter clearly falls within the claim, person to whom the patent was issued is not the true and actual
infringement is made out and that is the end of it." To determine inventor.
whether the particular item falls within the literal meaning of the patent
claims, the court must juxtapose the claims of the patent and the h. Manzano vs. CA [1997]
accused product within the overall context of the claims and The primary purpose of the patent system is not the reward of the
specifications, to determine whether there is exact identity of all individual but the advancement of the arts and sciences. The function
material elements. of a patent is to add to the sum of useful knowledge and one of the
The reason for the doctrine of equivalents is that to permit the purposes of the patent system is to encourage dissemination of
imitation of a patented invention which does not copy any literal detail information concerning discoveries and inventions. This is a matter
would be to convert the protection of the patent grant into a hollow which is properly within the competence of the Patent Office the official
and useless thing. Such imitation would leave room for indeed action of which has the presumption of correctness and may not be
encourage the unscrupulous copyist to make unimportant and interfered with in the absence of new evidence carrying thorough
insubstantial changes and substitutions in the patent which, though conviction that the Office has erred. Since the Patent Office is an expert
adding nothing, would be enough to take the copied matter outside body preeminently qualified to determine questions of patentability, its
the claim, and hence outside the reach of the law. findings must be accepted if they are consistent with the evidence, with
doubts as to patentability resolved in favor of the Patent Office.
f. Smith Kline & French Laboratories vs. CA [2001]
See doctrines in item i. i. Smith Kline & French Laboratories vs. CA [1997]
The legislative intent in the grant of a compulsory license was not only
g. Creser Precision vs. CA and Floro International [1998] to afford others an opportunity to provide the public with the quantity
Only the patentee or his successors-in-interest may file an action for of the patented product, but also to prevent the growth of monopolies.
infringement. The phrase "anyone possessing any right, title or interest

Page 13 of 14 LIP Case Doctrines RG Alfaro


We find that the granting of compulsory license is not simply because
Sec. 34 (1) e, RA 165 allows it in cases where the invention relates to
food and medicine. The applicant was able to show that the product is
necessary for the manufacture of an anti-ulcer drug/medicine, which is
necessary for the promotion of public health. Hence, the award of
compulsory license is a valid exercise of police power.

Lastly, it appearing that herein petitioner will be paid royalties on the


sales of any products the licensee may manufacture using any or all of
the patented compounds, the petitioner cannot complain of a
deprivation of property rights without just compensation.

j. Del Rosario vs. CA [1996]


It is elementary that a patent may be infringed where the essential or
substantial features of the patented invention are taken or
appropriated, or the device, machine or other subject matter alleged to
infringe is substantially identical with the patented invention. In order
to infringe a patent, a machine or device must perform the same
function, or accomplish the same result by identical or substantially
identical means and the principle or mode of operation must be
substantially the same.

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