collective mark

⁃ any visible sign designated as such in the application for registration

⁃ and capable of distinguish the ORIGIN or any other common characteristic

TRADEMARK
⁃ ownership = right to register
⁃ registration only prima facie presumption of validity and ownership
⁃ function
⁃ indicate origin/ownership
⁃ guarantee quality
⁃ advertise the articles they symbolize
⁃ function (juris)
⁃ point out distinctively origin or ownership
⁃ secure to him, the og, the fruit of his industry and skill
⁃ assure public of genuineness
⁃ prevent fraud/imposition
⁃ protect manufacturer from manufacturer/sale of inferior perduct

FALSELY SUGGESTION CONNECTION

⁃ law disallows false suggestion of connection to a belief, person, institution
⁃ actual claim unnecessary
⁃ rationale
⁃ that no one may unjustly ride of goodwill of another

IDENTITY OF MARK ALONE NOT INFRINGEMENT

COLORABLE IMITATION
⁃ that which denotes such a close/ingenious imitation as to be calculated to
deceive ordinary persons
⁃ or such a resemblance to original as to deceive an ordinary purchaser, causing
him to purchase the one supposing it to be the other

TESTS IN DETERMINING COLORABLE IMITATION

⁃ dominancy test
⁃ holistic test
⁃ entire

DIFFERENCE IN PRICE - not a defense in infringement

WHEN 2 WORDS ARE PRONOUNCED AND SOUND CONFUSINGLY SIMILAR

⁃ infrignement!

HARVARD
⁃ while under territoriality principle a mark must be used in commerce in the PH to
be protected
⁃ intl well known marks are exception

Junior user of well known mark on goods/services NOT SIMILAR but already registered
BAWAL if:
⁃ well known intl and ph
⁃ indicate a connection between unrelated goods and those registered
⁃ well known mark owner’s interest are likely to be damaged

ARTICLE OF PARIS
⁃ trade name is protected without filing/registration, w/n it forms part of trademark

WELL KNOWN MARK?

⁃ considered by competent authority in the ph to be well known internationally and
in ph
⁃ relevant sector of public
⁃ competent authority
⁃ IPO
⁃ DTI
⁃ SC

Generic terms
⁃ constitute the common descriptive name of an article or substance
⁃ commonly used as name/description of a kind of goods
⁃ NOT protected/registrable
⁃ primary test = relevant sector of public

Descriptive term
⁃ conveys functions/qualities of a product to one who has never seen it and does
know what it is
⁃ conveys and immediate idea of things
⁃ NOT protected/registrable
⁃ FF: CTSCC
⁃ consists exclusively of signs that have become customary/usual to designate the
goods in everyday language/bonafide trade practice
⁃ or those that may serve in trade to designate the qualities/functions of goods
⁃ shapes that may be necessitated by technical factors
⁃ color alone, unless defined by given form
⁃ contrary to public order/morality

Suggestive term
⁃ those which require imagination/perception/thought to reach a conclusion as to
nature of the goods
⁃ subtly connote something about the product
⁃ PROTECTED
⁃ eg master

LYCEUM
⁃ generic; just like university
⁃

REVIVED ABANDONED APP

⁃ within 3 months
⁃ good cause shown
⁃ payment of required fee

petition for OPPOSITION

⁃ payment of req fee
⁃ within 30 days after publication

USE OF MARK BY RELATED COMPANY

⁃ inure to benefit of registrant
⁃ provided it is not used to deceive the public

DURATION OF CERT OF REGIS

⁃ 10 yrs
⁃ must file declaration of actual use with evidence WITHIN 3 YRS FROM FILING
⁃ OR valid reasons based on existence of obstacles to such use
⁃ WITHIN 1 yr from fifth anniv of date of regis

NONUSE
⁃ excused if by circumstances independent of will of trademark
⁃ lack of funds not an excuse

RENEWAL
⁃ renewable for 10 yr periods
⁃ upon payment and filing
⁃ made within 6 mos before expiration of the period for registration
⁃ OR within 6 mos after expiration on payment of additional fees
⁃ request contains
⁃ indication that renewal is sought
⁃ name and address of registrant
⁃ registration no.
⁃ filing date of app
⁃ name of representative, if he has one
⁃ signature by registrant
⁃ name of goods or services for which renewal is requested, and those for which
renewal is not requested

REGISTRANT MAY PREVENT 3RD PARTIES FROM USING MARK

⁃ w/o its consent
⁃ identical signs/containers
⁃ for identical goods/services
⁃ which would result in likelihood of confusion
⁃ presumed for identical signs for identical goods/services

REGISTRATION IN PH effect; exclu right

⁃ extend to goods not similar
⁃ indicates connection
⁃ interests of the owner of registered mark are likely to be damaged
⁃ LIMIT
⁃ no precluding 3rd parties who
⁃ bona fide use the name
⁃ confined for purposes of identification/info
⁃ cannot mislead public as to source of goods

ASSIGNMENT
⁃ in writing and with sigs of parties
⁃ no effect on 3rd persons until recorded with the office

LICENSE CONTRACTS
⁃ contract must provide for effective control by licensor of quality
⁃ if no quality control, or it is not effectively carried out, INVALID LICENSE
CONTRACT

PETITION TO CANCEL REGIS

⁃ filedw ithin 5 yrs from date of registration
⁃ file with BLA
⁃ BUT may be filed anytime IF
⁃ Mirepresent Non FAG
⁃ earlier filing of petition to cancel NOT a prejudicial question
⁃ meaning, despite filing petition, one may also file a subsequent action for
infringement with regard to the same mark

CIVIL REMEDIES AGAINST TRADEMARK INFRINGEMENT

⁃ use in commerce any copy of mark, container, dominant feature
⁃ in connection with sale
⁃ likely to cause confusion
⁃ EG
⁃ unauthorized use of a container bearing a registered trademark in connection w
sale, advertisement, likely to cause confusion
⁃ REPRODUCE, counterfeit, copy, colorably imitate
⁃ a mark or dominant feature
⁃ apply it to labels/signs INTENDED to be used for commerce
⁃ likely to cause confusion
^ALL WITHOUT CONSENT OF REGISTRANT
^ALL REGISTERED EXCEPT FOR TRADE NAME
TRADEMARK DILUTION
⁃ lessening the capacity of a famous mark
⁃ owner of famous mark entitled to an injunction against other peron’s commercial
use
⁃ if such use begins after mark is famous
⁃ causes dilution of distinctive quality of mark
^applies to FAMOUS and distinctive marks

INFRINGEMENT BY FOREIGN NATIONAL

⁃ Conditions:
⁃ meets sec 3reciprocity rule
⁃ does not engage in business in the PH
⁃ whether or not licensed to do business here
⁃ may bring a civil or admin action for cancellation, infringement, unfair competition

DAMAGES
⁃ registrant not entitled to recover profits/damages
⁃ UNLESS committed with knowledge that such is likely to cause confusion

NAMES THAT CANNOT BE USED AS TRADE NAME

⁃ by nature or use it is
⁃ contrary to public order/morals
⁃ AND it is liable to deceive trade circles and public

INFRINGEMENT CASE ELEMENTS

⁃ registered; n/a to trade name
⁃ trade name only needs to be previously used in trade/commerce in the PH
⁃ reproduced, copied etc
⁃ used in connection w sale, intended for commerce
⁃ likely to cause confusion
⁃ without the consent

UNFAIR COMPETITION; elements

⁃ confusing similarity as to general appearance
⁃ intent to deceive public and defraud competitor
⁃ may be inferred; actual intent need not be shown

⁃ infringement is a form of unfair competition

⁃ trademark infringement constitutes unfair competition
⁃ when there is actual or probable deception on the public
⁃ NOT just likelihood of confusion

⁃ Passing off goods

⁃ by imititating general appearance
⁃ misleads public
⁃ under impression they are buying that of his competitors

INFRINGEMENT V UNFAIR COMPETITION

INFRINGEMENT
⁃ unathorized use of trademark
⁃ fraudulent intent unnecessary
⁃ prior registration needed

UNFAIR COMP
⁃ passing of one’s goods as those of another
⁃ intent essential
⁃ registration not necessary
⁃ TO QUALIFY AS “UNFAIR”
⁃ involve injury to competitor
⁃ acts unlawful/contrary to good conscience/shocking to judicial sensibilities

Any person who, in connection with goods, services, container, uses in commerce any
term name, false designation which is:

FALSE DESIGNATION OF ORIGIN

⁃ likely to cause confusion as to affiliation or as to origin

FALSE DESCRIPTION OF PRESENTATION

⁃ in commercial ads or promotion, misrepresents the
⁃ nature
⁃ characteristics
⁃ qualities
⁃ geographic origin
^BOTH LIABLE FOR DAMAGES AND INJUNCTION
^BAWAL IMPORT

CRIMINAL PENALTY for trademark infringement, false designations, unfair competition

⁃ 2-5 yrs
⁃ 50k-200k

LAW ON COPYRIGHT
⁃ need not be registered
⁃ protected from moment of creation
⁃ does not extend to the structures themselves
⁃ being a statutory right; limited to protection under statute

Art. 722. The author and the composer, mentioned in Nos. 1 and 2 of the preceding
article, shall have the ownership of their creations even before the publication of
the same. Once their works are published, their rights are governed by the
Copyright laws.
The painter, sculptor or other artist shall have dominion over the product of his art
even before it is copyrighted.
The scientist or technologist has the ownership of his discovery or invention even
before it is patented. (n)
Art. 723. Letters and other private communications in writing are owned by the
person to whom they are addressed and delivered, but they cannot be published
or disseminated without the consent of the writer or his heirs. However, the court
may authorize their publication or dissemination if the public good or the interest
of justice so requires. (n)

COPYRIGHT consists of exclusive right to carry out, authorize or prevent: RD FR POP

⁃ REPRODUCTION
⁃ dramatization/adaptation/transformation of the work
⁃ first public distribution and other forms of transfer of ownership
⁃ rental of og/copy
⁃ transfer for limited period, for profit
⁃ public display
⁃ public performance
⁃ work other than audiovisual work
⁃ by performing the work directly/ by means of device
⁃ audiovisual work
⁃ showing of images in sequence and sounds
⁃ sound recording
⁃ making sounds audible at places where persons outside the family and social
acquiantences can be present
⁃ ^^^ WHERE performance can be perceived without need for communication
under sec 171.3
⁃ making avail to public by wire/wireless means where members can access at
times and places individually chosen by them
⁃ other communicaton to the public

Derivatives also protected = creations based on existing work

⁃ KINDS:
⁃ alterations of literary/artistic works
⁃ collections/compilations of literary/artistic/scholarly works
⁃ og bec selection/coordination/arrangement
⁃ PROTECTED as new works provided…
⁃ shall not affect any subsisting copyright upon the og works
⁃ nor be construed to imply any right to use og work
⁃ nor secure or extend copyright in such og works

PUBLISHER
⁃ right of reproduction
⁃ may be expanded by agreement

NONCOPYRIGHTABLE
⁃ news of the day; press info
⁃ official govt texts; and translations thereof
⁃ part of their official duties
⁃ includes GOCCs
⁃ elements “work of government”
⁃ creator is govt employee
⁃ part of reg prescribed official duties
⁃ ideas, system, procedures, method, discovery
⁃ EVEN if illustrated, expressed in a work
⁃ format of a show not copyrightable

READ
⁃ page 279!!!

producer
⁃ copyright over exhibition of works
⁃ no right to collect license fees for music incorporated into work

TRANSFER/ASSIGNMENT
⁃ assignment entitled to rights and remedies

SOCIETY
⁃ collectively manage moral and economic rights
⁃ copyright owner or heir may designate
⁃ IPO accred
⁃ can collect licensing fees

FORM AND RECORDING ASSIGNMENT

⁃ written indication
⁃ file w natl library in duplicate
⁃ with prescriped fee

COMMUNICATION TO PUBLIC
⁃ any means of comm to public by
⁃ broadcasting, rebroadcasting, retransmitting by satellite or cable
⁃ includes making work available by wire/wireless means
⁃ accessible

PUBLISHED WORKS
⁃ with consent of authors
⁃ made available to public
⁃ wire/wireless means
⁃ availability of such copies has been such as to satisfy the reasonable reqs of the
public, with regard to nature

LIMITATIONS ON COPYRIGHT
⁃ recitation or performance of work
⁃ lawfully made accessible to public
⁃ done privately and free of charge
⁃ OR for charitable/religious society
⁃ must be lawful publication
⁃ Making quotes from published work
⁃ compatible w fair use
⁃ to extend justified for purpose
⁃ SOURCE and name mentioned
⁃ REproduction/comm to the public by mass media of articles on current
issues
⁃ delivered in public
⁃ informational ppurposes
⁃ not expressly reserved
⁃ source clearly indicated
⁃ Reproduction and comm to public of literary/artistic/scientific works
⁃ part of current event report
⁃ thru photography, cinemato, broadcasting
⁃ extend necessary
⁃ INCLUSION OF WORK
⁃ in a comm to public
⁃ by illustration
⁃ for teaching purposes
⁃ compatible w fair use
⁃ source mentioned
⁃ RECORDING MADE IN SCHOOLS
⁃ of a work included in a broadcast
⁃ must be deleted within reasonable period after 1st broadcast
⁃ bawal from av works of feature films
⁃ except brief excerpts
⁃ EPHEMERAL RECORDINGS
⁃ by broadcasting org
⁃ w own facilities
⁃ for its broadcast use
⁃ GOVT, NATL LIB, USE OF WORK
⁃ public interest
⁃ compatible w fair use
⁃ PUBLIC PERFORMANCE
⁃ where no admission fee charged
⁃ for charitable/educational
⁃ nonprofit
⁃ PUBLIC DISPLAY OF OG/COPY
⁃ not made by device, screen, film
⁃ published!
⁃ OR the og or copy has been transferred BY OWNER/SUCCESSORS
⁃ JUDICIAL/LEGAL USE
⁃ for purpose of giving legal advice
⁃ SPECIAL FORMAT REPRODUCTION OF PUBLISHED
ARTICLES/MATERIALS
⁃ exclusively for blind/visual reading impaired
⁃ nonprofit
⁃ indicate owner and date of original publication

FAIR USE
⁃ decompilation pwede
⁃ FACTORS
⁃ purpose and character
⁃ nature
⁃ amount and substantiality
⁃ effect of the use

PLAGIARISM V INFRINGEMENT

POINTS OF ATTACHMENT
⁃