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ARTICLE OF COMMERCE; AS TRADEMARK, sale by Y of MAGIC shoes constitute unfair

PATENT & COPYRIGHT (2010) competition (Yuv. Court of Appeals, 217 SCRA
328(1993)). Registration of the trademark is
Can an article of commerce serve as a not necessary in case of an action for unfair
trademark and at the same time enjoy patent competition (Del Monte Corporation v. Court
and copyright protection? Explain and give an of Appeals, 181SCRA 410 (1990)).
example. (2%)
b. Suppose the shoes are covered by a
SUGGESTED ANSWER: Philippine patent issued to the owner, what
A stamped or marked container of goods can would your answer be? Explain. (2%)
be registered as trademark(subsections 113.1
SUGGESTED ANSWER:
of the Intellectual Property Code). An original
ornamental design or model for articles of A patent for a product confers upon its owner
manufacturer can be copyrighted (Subsection the exclusive right of importing the product
172.1 of the Intellectual Property Code). An (Subsection 71.1 of the Intellectual Property
ornamental design cannot be patented, Code). The importation of a patented product
because aesthetic creations cannot be without the authorization of the owner of the
patented (Section 22of the Intellectual patent constitutes infringement of the patent
Property Code).However, it can be registered (Subsection 76.1 of the Intellectual Property
as an industrial design (Subsections 113.1 Code). X can prevent the parallel importation
and172.1 of the Intellectual Code). Thus, a of such shoes by Y without its authorization.
container of goods which has an original
ornamental design can be registered as
trademark, can be copyrighted, and can be TRADEMARKS (2014)
registered as an industrial design. Jinggy went to Kluwer University (KU) in
TRADEMARK; UNFAIR COMPETITION (2010) Germany for his doctorate degree (Ph.D.). He
completed his degree with the highest honors
For years, Y has been engaged in the parallel in the shortest time. When he came back, he
importation of famous brands, including decided to set-up his own graduate school in
shoes carrying the foreign brand MAGIC. his hometown in Zamboanga. After seeking
Exclusive distributor X demands that Y cease free legal advice from his high-flying lawyer-
importation because of his appointment as friends, he learned that the Philippines
exclusive distributor of MAGIC shoes in the follows the territoriality principle in trademark
Philippines. Y counters that the trademark law, i.e., trademark rights are acquired
MAGIC is not registered with the Intellectual through valid registration in accordance with
Property Office as a trademark and therefore the law. Forth with, Jinggy named his school
no one has the right to prevent its parallel the Kluwer Graduate School of Business of
importation. Mindanao and immediately secured
registration with the Bureau of Trademarks.
a. Who is correct? Why? (2%) KU did not like the unauthorized use of its
SUGGESTED ANSWER: name by its top alumnus no less. KU sought
your help. What advice can you give KU? (4%)
X is correct. His rights under his exclusive
distributorship agreement are property rights
entitled to protection. The importation and
SUGGESTED ANSWER: TRADEMARKS; HOLISTIC OR DOMINANCY
TEST (2014)
I can advise KU to file a petition to cancel the
registration of the name “Kluwer” Graduate Skechers Corporation sued Inter-Oacific for
School of Business of Mindanao “KGSBM” trademark infringement, claiming that Inter-
with the Bureau of Trademarks. Pacific used Skechers’ registered “S” logo
mark on Inter-Pacific’s shoe products without
The petition could be anchored on the its consent. Skechers has registered the
following facts: Kluwer University is the owner trademark “SKECHERS” and the trademark “S”
of the name “Kluwer.” Jinggy registered the
(with an oval design) with the IPO.
trademark in bad faith. He came to know of
the trademark because he went to Kluwer In its complaint, Skechers points out the
University in Germany for his doctorate following similarities: the color scheme of the
degree. KU is the owner of the name “Kluwer” blue, white, and gray utilized by Skechers.
and has the sole right to register the same. Even the design and “wave-like” pattern of
Foreign marks that are not registered are still the mid-sole and outer sole of Inter Pacific’s
accorded protection against infringement shoes are very similar to Skechers’ shoes, if
and/or unfair competition under the Paris not exact patterns thereof. On the side of
Convention for the Protection of Industrial Inter-Pacific’s shoes, near the upper part,
Property. Both the Philippines and Germany appears the stylized “S” placed in the exact
are signatories to the Paris Convention. Under location as that of the stylized “S” the
the said Convention, the trademark of a Skechers shoes. On top of the “tongue” of
national or signatory to the Paris Convention both shoes, appears the stylized “S” in
is entitled to its protection in other countries practically the same location and size.
that are also signatories to the Convention
In its defense, Inter-Pacific claims that under
without need of registering the trademark.
the Holistic Test, the following dissimilarities
The petition could also be based on the fact, if are present: the mark “S” found in Strong
it were proven by KU, that “Kluwer: is a well- shoes is not enclosed in an “oval design;” the
known mark and entitled to protection as KU word “Strong” for Inter-Pacific and “Skechers
and KGSBM belong to the same class of USA” for Skechers; and, Strong shoes are
services i.e. Class 41 (education and modestly priced compared to the costs of
entertainment). KU must also prove that a Skechers shoes.
competent authority of the Philippines has
designated “Kluwer” to be well-known Under the foregoing circumstances, which is
the proper test to be applied- Holistic or
internationally and in the Philippines.
Dominancy Test? Decide.
Finally, the petition could also be based on
the fact, if it were proven by KU, that SUGGESTED ANSWER:
“Kluwer” is a trade name that KU has adopted Considering the facts given and the arguments
and used before its use and registration by of the parties, the dominancy test is the
Jinggy (Ecole de Cuisine Manille [Cordon Bleu proper test to apply. Thus, the appropriation
of the Philippines], Inc. v. Renaud Cointreau & and use of the letter “S” by Inter Pacific on its
Cie and Le Cordon Bleu Int’l., B.V., G.R. No. rubber shoes constituted an infringement of
185830, June 5, 2013). the trademark of Skechers.
dominant feature of the trademark of
Skechers, already constitutes infringement
The essential element of infringement under under the Dominancy Test (Skechers USA Inc
the IPC is that the infringing mark is likely to v. Inter Pacific Industrial Trading Corp., et al.,
cause confusion. In determining similarity and
G.R. No. 164321, Nov. 30, 2006).
likelihood of confusion, jurisprudence has
developed tests- the Dominancy and the
Holistic Tests. The Dominancy Test focuses on
the similarity of the competing trademakrs
that might cause confusion, mistake, and
deception in the mind of the purchasing
public. Duplication or imitation is not
necessary; neither is it required that the mark
sought to be registered suggest an effort to
imitate. Given more consideration are the
aural and visual impressions created by the
marks on the buyers of goods, giving little
weight to factors like prices, quality, sales
outlets, and market segments.

In contrast, the Holistic or Totality Test


necessitates a consideration of the entirety of
the marks as applied to the products,
including the labels and packaging, in
determining confusing similarity. The
discerning eye of the observer must focus not
only on the predominant words, but also on
the other features appearing on both labels so
that the observer may draw conclusion on
whether one is confusingly similar to the
other.

Applying the Dominancy Test to the problem,


we find that the use of the stylized “S” by
Inter-Pacific in its Strong rubber shoes
infringes on the mark already registered by
Skechers with the IPO. While it is undisputed
that stylized “S” of Skechers is within an oval
design, the dominant feature of the
trademark is the stylized “S”, as it is precisely
the stylized “S” which catches the eye of the
purchaser. Thus, even if Inter-Pacific did not
use the oval-design, the mere fact that it used
the same stylized “S”, the same being the