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1.) Differentiate Trademark Infringement and 5.

) Is identical with, or confusingly similar to, or
Unfair Competition constitutes a translation of a mark which is considered
by the competent authority of the Philippines to be well-
 In infringement of trademark the prior registration of known internationally and in the Philippines, whether or
the trademark is a prerequisite for the action; in not it is registered here, as being already the mark of a
unfair competition registration of the trademark is not person other than the applicant for registration, and used
necessary. 
 for identical or similar goods or services: Provided, That
in determining whether a mark is well-known, account
 In infringement of trademark, fraudulent intent is not shall be taken of the knowledge of the relevant sector of
necessary; in unfair competition fraudulent intent is the public, rather than of the public at large, including
essential. 
 knowledge in the Philippines which has been obtained
as a result of the promotion of the mark;
 Infringement of trademark is the unauthorized use of a
trademark, while unfair competition is the passing off 6.) Is identical with, or confusingly similar to, or
of one’s goods for the goods of another. 
 constitutes a translation of a mark considered well-
known in accordance with the preceding paragraph,
2.) Differentiate Trademark from Collective Mark which is registered in the Philippines with respect to
goods or services which are not similar to those with
“Mark" means any visible sign capable of distinguishing respect to which registration is applied for: Provided,
the goods (trademark) or services (service mark) of an That use of the mark in relation to those goods or
enterprise and shall include a stamped or marked services would indicate a connection between those
container of goods; goods or services, and the owner of the registered mark:
Provided further, That the interests of the owner of the
"Collective mark" means any visible sign designated as registered mark are likely to be damaged by such use;
such in the application for registration and capable of
distinguishing the origin or any other common 7.) Is likely to mislead the public, particularly as to the
characteristic, including the quality of goods or services nature, quality, characteristics or geographical origin of
of different enterprises which use the sign under the the goods or services; 

control of the registered owner of the collective mark;
8.) Consists exclusively of signs that are generic for the
3.) Give 5 examples of non-registrable marks goods or services that they seek to identify; 


1. Consists of immoral, deceptive or scandalous 9.) Consists exclusively of signs or of indications that
matter, or matter which may disparage or falsely have become customary or usual to designate the goods
suggest a connection with persons, living or dead, or services in everyday language or in bona fide and
institutions, beliefs, or national symbols, or bring them established trade practice; 

into contempt or disrepute; 

10.) Consists exclusively of signs or of indications that
2. Consists of the flag or coat of arms or other may serve in trade to designate the kind, quality,
insignia of the Philippines or any of its political quantity, intended purpose, value, geographical origin,
subdivisions, or of any foreign nation, or any simulation time or production of the goods or rendering of the
thereof; 
 services, or other characteristics of the goods or
services;
3. Consists of a name, portrait or signature identifying
a particular living individual except by his written 11.) Consists of shapes that may be necessitated by
consent, or the name, signature, or portrait of a technical factors or by the nature of the goods
deceased President of the Philippines, during the life themselves or factors that affect their intrinsic value;
of his widow, if any, except by written consent of the
widow; 
 12.) Consists of color alone, unless defined by a given
form; or
4. Is identical with a registered mark belonging to a
different proprietor or a mark with an earlier filing or 13.) Is contrary to public order or morality.
priority date, in respect of:
4.) What is the Doctrine of Secondary Meaning?
a) The same goods or services, or

This doctrine is to the effect that a word or phrase
b) Closely related goods or services – (e.g. same class, originally incapable of exclusive appropriation with
same nature and/or characteristics ) reference to an article on the market, because
geographically or otherwise descriptive, might
c) If it nearly resembles such a mark as to be likely to nevertheless have been used so long and so exclusively
deceive or cause confusion by one producer with reference to his article that, in that
trade and to that branch of the purchasing public, the
word or phrase has come to mean that the article was
his product.

5.) Explain the Rule on Specificity

- As a rule, if you have a trademark, what you applied for
(same or specific goods) will be protected. No one can
use those same goods. Or if not the same, closely
related or if not, the zone of expansion of business. But if
still is not within the zone of expansion of business, then
you have nothing to do with it anymore just like in the
case of Esso Standard Eastern vs. CA (cigarettes vs
gasoline)

Principle of Specificity

 Trade mark – identifies products and services ;
Needs registration
 Trade name – identifies enterprise ; Doesn’t
need registration

A certificate of registration has an effect of a prima facie
evidence of validity of registration and ownership.

Q: Now that you are a trademark owner, it follows
that you have the right to?
- If you are a registered owner of a trademark, then you
have the right to exclude others from using your mark or
any confusingly similar mark with respect to the same
goods or those specified in your certificate of
registration.
- Even if it is not the same or not specified, those closely
related goods are still covered.
- If the product is within the zone of expansion of
business (Dermaline vs Myra Pharmaceuticals) –
Principle of Specificity

If he can prove that he will likely be damaged,

Same or specified -> Closely related -> Zone of
expansion