INTELLECTUAL PROPERTY LAW l For the exclusive use of EH – 407 A.Y.
2015-2016
LAW ON TRADEMARK, SERVICE MARK & TRADE NAMES
DEFINITION OF A MARK
DEFINITION OF A MARK
Sec. 121.1. “Mark” means any visible sign capable of distinguishing the
goods (trademark) or services (service mark) of an enterprise and shall
include a stamped or marked container of goods.
A mark is used for goods and services.
What are the requirements under this section?
A. Visible – It is a sign and it must be visible. This means that it can
be perceived through the sense of sight. Why is this important?
Because in other jurisdictions, they may also include sound marks.
But this does not qualify as a mark in the Philippine jurisdiction.
B. Distinctive – It must be distinctive. The definition says capable of
distinguishing the goods.
Is there such a thing as a valid mark?
A valid mark means a mark that can be used in commerce.
There is no such thing. Only a mark that can be registered. The only
issue that we need to examine is whether a mark can be registered. A
mark can still be used in commerce even if not registered. There is no
such thing as an invalid mark. The issue in trademark law is if it can be
registered or not, since a mark can always be used in commerce even if
not registered.
Stamped or marked container of goods
The definition includes stamped or marked container of goods. So a
mark can be a stamped or a marked container of goods. So a bottled
water with mark is covered in the definition.
IMPORTANCE OF PROTECTING A MARK
IMPORTANCE OF PROTECTING A MARK
Why does the law devote several provisions covering a mark?
What is the importance of protecting a mark?
Phillip Morris v. Fortune Tobacco
This is a case between Phillip Morris (a foreign corporation) and two of
its subsidiaries against Fortune Tobacco Corporation (a domestic
corporation)
Facts: Phillip is complaining about using the word “Mark” for cigarettes,
claiming that their brand which is Mark 7, 10 and Mark “R” is similar to
the mark used by Fortune Tobacco Corporation. There were several
issues involved including the legal personality of Phillip Morris to sue in
court.
Issue: Whether Phillip Morris has a basis in filing a case of trademark
infringement.
In this case, SC explained why it is important to protect a mark even for
foreign corporations not doing business in the Philippines, which can
even seek protection in the Philippine setting.
Principle: The protection of trademarks is the recognition of the law of
the psychological function of symbols. If it is true that we live by
symbols, it is no less true that we purchase goods by them.
A trademark is a merchandising shortcut which induces a purchaser to
select what he wants or what he has been led to believe what he wants.
So the owner of the mark exploits this human propensity by making
every effort to impregnate the atmosphere of the market with the
drawing power of a congenial symbol.
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Every businessman will see to it that consumers would be familiar with
their mark. That is why they exert effort to make their mark stand out.
If you have established that drawing power of your mark, you have
value. You do not want others to piggy back on the popularity. You have
a property right that needs to be protected. If another poaches upon
the commercial magnetism of the symbol that he has created, the owner
can retain legal regress.
Whatever the means employed, the aim is the same – to convey through
the mark, in the minds of potential customers, the desirability of the
commodity upon which it appears. Once this is attained, the trade-mark
owner has something of value. If another poaches upon the commercial
magnetism of the symbol he has created, the owner can obtain legal
redress.
HISTORICAL DEVELOPMENT
HISTORICAL DEVELOPMENT
What is the historical basis of the adoption of a mark?
Mirpuri v. CA
As early as 5000 DC, markings have been discovered. In the middle
ages, in the early industrial revolution, marks have been used and for
different reasons. It would vary from identifying the source or protecting
the interest of traders sharing common interest or a guild or as a result
of a government using a mark for taxation purposes. But in modern
times, a mark has acquired three functions:
1. They indicate origin or ownership of articles to which they are
attached.
2. They guarantee to the consumers that those articles come up to a
certain standard of quality.
3. They advertise/promote the articles.
Phil. Refining Co. v. Ng Sam
A mark is designed to identify the user and it is required to be so
distinctive and sufficiently original as to enable those who come into
contact with it, to recognize instantly the identity of the user. It must be
affirmative and definite, significant and distinctive, capable of
identifying.
NATURE OF A TRADEMARK
NATURE OF A TRADEMARK
What is the nature of the right to a mark? How do you
characterize such right?
It is an exclusive right. The one who has the right to that mark has the
exclusive or sole right to use that mark.
Arce Sons and Co. v. Selecta Biscuits
The ownership and protection of the trademark shall be recognized and
protected in the same manner and to the same extent as our other
property rights known to the law. Thereby giving the person entitled to
the exclusive use of such trademark and the right to recover damages
in a civil action from any person who may sold goods of similar kind
bearing such trademark.
Converse Rubber v. Universal Rubber
The ownership of a trademark is a property right which the owner is
entitled to protect since there is damage to him from confusion or
reputation. When you have acquired the drawing power of your mark,
and the consumers are accustomed to your goods, patronizes your
goods, you have acquired a right known as a goodwill.
Atty Quirante: In this case, SC coined an important term. The term
“goodwill” which means a good reputation of your business. The basis
for acquiring a mark.
ALBURO l APELLIDO l BORDEN l CABRIDO l GARCIA l IBANEZ
INTELLECTUAL PROPERTY LAW l For the exclusive use of EH – 407 A.Y. 2015-2016
TYPES OF MARK
TYPES OF MARK
What are the types of a mark?
1. Word mark – use a name of a person or any fanciful or arbitrary
word
2. Device mark – use a geometrical figure, a stylized rendering of an
alphabet or a representation of any object
3. Composite mark – combination of the two (word and device)
When you register a mark, in the bottom part of the form, there is a
space provided to attach a copy of the mark.
COLLECTIVE MARK
COLLECTIVE MARK
121.2. “Collective mark” means any visible 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
services of different enterprises which use the sign under the control of
the registered owner of the collective mark.
The law recognizes that there are certain groups, associations,
organizations, sharing common interests and uses a mark to set them
apart from other groups and adapts a visible sign so that their goods,
although having different marks, can be considered belonging to their
organization. (E.g. Jack and Jill Mark for different junk food with their
own different trademarks like Piattos, Chippy, etc.)
There are two types of collective marks:
1. Used to indicate the membership in the organization.
2. Used to indicate that it has passed certain quality standards. In
other jurisdictions, this is called a certification mark.
Atty. Q: Energy Star Approved products. Check your laptops and look for
the blue logo of energy star. That is an example of a certification mark.
The owner of this mark can have it registered as a collective mark.
TRADE NAME
TRADE NAME
121.3. “Trade name” means the name or designation identifying or
distinguishing an enterprise.
Canon Kabushiki Kaisha v. CA
A trade name refers to the business and its goodwill, while trademark
refers to the goods. A trademark has its existence on its own before the
law, it has an existence distinct from the proprietor or the juridical
person doing business and producing the goods or services offered by
such enterprise.
The mark that is placed on the product is called the trademark. The
producer owning that good also indicates in the product the name of the
company that produces the good. This is the trade name.
The goods or services offered are designated by trademarks or service
marks. The person/proprietor/enterprise who does business and
produces the goods or services is designated by a trade name.
Why is there a definition of a trade name?
Trade names are also protected just like a trademark.
165.2. (a) Notwithstanding any laws or regulations providing for any
obligation to register trade names, such names shall be protected, even
prior to or without registration against any unlawful act committed by
third parties.
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Converse Rubber v. Universal Rubber
A case between Converse Rubber (owner of the mark Converse for
shoes) and Universal Rubber.
Facts: Universal Rubber filed an application for registration for a mark
Universal Converse also used for rubber shoes and rubber slippers.
Naturally, Converse Rubber Corp. filed an opposition to the application.
Universal Rubber does not adapt as part of its corporate name the word
“Converse,” on the other hand, Converse Rubber adapts as a part of its
name the word “Converse.”
Converse Rubber seeks protection for the unlawful use of its trade name.
Held: SC said that Converse Rubber has a cause of action. The corporate
name of the petitioner is Converse Rubber Corp. it is evident that the
word “Converse” is the dominant word which identifies the petitioner
from other corporations engaged in similar business. Knowing therefore
that the word “Converse” belongs to and is being used by the petitioner,
and it is in fact the dominant word in petitioner’s corporate name,
respondent has no right to appropriate the same for use on its product
which are similar to those being produced by the petitioner.
The testimony of petitioner’s witness gives credit to the petitioner’s claim
that it has earned a business reputation and goodwill in this country.
The word “Converse” has grown to be identified with petitioner’s
products. And in this sense, has acquired a secondary meaning within
the context of trademark and trade name laws.
A trade name can be protected if it has acquired goodwill and good
business reputation. Consumers have already identified that the goods
or services being offered by the company and they have already
identified the corporation with the product. They identify the trade name
as the manufacturer of such goods. This is established when the trade
name appears in the product itself when the product is sold. Therefore
a trade name can be protected without need for registration.
Atty Quirante: If you operate as a corporation, you have to file the
registration for the creation of your corporate entity. You apply it with
SEC. But, for purposes of protecting a trade name, there is no need for
registration. What is required is as long as it acquired a good business
reputation.
So if you launched your business for two years and you haven’t even
distributed your products, you still can’t claim trade name since it must
be acquired through good business reputation.
HOW MARKS ARE ACQUIRED
HOW MARKS ARE ACQUIRED
Sec. 122. The rights in a mark shall be acquired through registration
made validly in accordance with the provisions of this law.
This provision should be interpreted in the light of the several ruling of
the SC. Based on the provision alone, we could right away say that when
there is no registration, there is no right. BUT according to SC, the word
“registration” has more meaning than its ordinary sense.
General Rule: Acquisition of a right over the mark needs registration.
Exception: The acquisition of such right can be had through its use
even if there is no registration. (As per Sec. 168.1)
Sec. 168.1. A person who has identified in the mind of the public the
goods he manufactures or deals in, his business or services from those
of others, whether or not a registered mark is employed, has a property
right in the goodwill of the said goods, business or services so identified,
which will be protected in the same manner as other property rights.
So even without registration, as long as you have attained goodwill, your
mark will be protected.
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INTELLECTUAL PROPERTY LAW l For the exclusive use of EH – 407 A.Y. 2015-2016
TWO MAJOR VIOLATIONS OF A TARDEMARK
TWO MAJOR VIOLATIONS OF A TRADEMARK
These two are defined by law as criminal
1. Trademark infringements – unauthorized use of the registered
mark. For one to be violating trademark infringement, he must be
using a part that is registered.
2. Unfair competition – It does not matter if the part is registered
or not, as long as you pass off your mark as that of another. RPC
has provisions pertaining to Unfair Competition.
Atty. Quirante: It is more advantageous to register your mark. If your
mark is unregistered and a person violated your mark, then you cannot
sue him/her under a trademark infringement, only under unfair
competition.
In unfair competition, it should be mala in se. Intent is necessary. In
trademark infringement, intent is not necessary as long as you used the
mark that is registered without authority, you are guilty. That is why
registration is more advantageous so far as enforcement is concerned.
Greater protection.
ACQUISITION OF RIGHT EVEN IF NOT REGISTERED
ACQUISITION OF RIGHT EVEN IF NOT REGISTERED
When can a mark, even if not registered, acquire a right?
Puma v. IAC
There are three basic requirements for marks to acquire right even
without registration:
1. Use of the mark should be widespread (in Philippines, doesn’t have
to be nationwide, as long as widespread in so far as intended
market is concerned)
2. Products have been favorable received.
3. The goods have borne the corporate name, the trade name of the
enterprise.
BASIS OF REGISTRATION IS OWNERSHIP
BASIS OF REGISTRATION IS OWNERSHIP
Marvex Commercial Co. v. Petra Hawpia
SC said the right to register trademarks is based on ownership and the
burden is upon the applicant to prove such. If the applicant is not the
owner of the mark, he has no right to apply for registration, except when
filed through agent or representative
Gabriel v. Perez
The right to register trademark is based on ownership and a mere
distributor of a product bearing a trademark, even if permitted to use
the trademark, has no right and cannot register the trademark.
Atty. Quirante: It is a case between Crisanta Y. Gabriel v. Dr. Perez.
Dr. Perez created this beauty soap called the “Wonder Soap” but he has
no sufficient capital so he entered into a contract with Gabriel and she
was the one who created the packaging through her designers. They
adopted the name CY Gabriel Wonder Soap.
It became very popular and they earned money. Their venture
agreement expired and that time Dr. Perez had the money and did not
renew the joint venture. He applied for registration using the word
“Wonder.” Gabriel protested and said that he cannot register the word
“Wonder.”
SC examined who the owner of the word “Wonder” because the basis
of registration is ownership. Even if it is allowed to be used by the
trademark owner, the user’s right will never ripen into an ownership. A
mere distributor of a product, bearing a mark even it is under a license,
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cannot acquire the right to that mark because basis for registration is
ownership.
Unno v. General Milling
Facts: Unno is the importer of flour bearing the brand “Old Montana” its
source is a US-based company who is the producer of the flour. Being
the importer, Unno has been using that mark here in the Philippines as
an importer. Later on, the US-based company executed a deed of
assignment of that brand in favor of General Milling.
Atty Quirante: When we say deed of assignment, there is a transfer
of ownership. Being the new owners, they started using the mark in
their flour. Unno complained the use of the mark claiming that they are
the prior user of the mark, therefore they are entitled to certain rights
as they have used the mark prior to General Milling in so far as the
Philippines is concerned.
Held: The term owner does not include the importer of the goods
bearing the trademark, trade name, service mark or other mark of
ownership unless such importer is actually the owner thereof. So even
if the distributor has been using the mark for a long time and prior to
the actual owner, the distributor still cannot register the mark under its
name because ownership is the basis of registration and a mere
distributor is not an owner of the mark.
HOW OWNERSHIP IS ACQUIRED
HOW OWNERSHIP IS ACQUIRED
Emerald Garments v. CA
Ownership is acquired by adoption and use in trade or commerce. The
Supreme Court said, as between actual use of the patent without
registration and registration of the mark without actual use, the former
prevails over the latter. A rule widely accepted and firmly entrenched
because it has come down through the years is that actual use in
commerce or business is a prerequisite in the acquisition of the right of
ownership over a trademark.
Basis of Registration – Ownership
Basis of Ownership – Actual Use
How do we prove actual use?
It is not merely limited to consummated sale. The law allows certain
types of proofs of use as ruled in the Converse Case. One convincing
proof of use in commerce is the testimony of customers, orders of
buyers during a certain period. Any sale made by a legitimate trader
from a store is a commercial act establishing trademark rights. Such
actual sale of goods in the local market, establishes trademark use which
serves as a basis for an action in a trademark redemption.
Case of Sterling Products
Advertisements, passing of flyers or circulars, setting of price lists.
Would it be considered as proof of use? The Court said, it is merely an
adaption of a mark and not use. The right to a mark "grows out of their
actual use." Adoption is not use. One may make advertisements, issue
circulars, give out price lists on certain goods; but these alone would not
give exclusive right of use. For trademark is a creation of use.
The best proof of use nowadays are the labels themselves. The
underlying reason for all these is that purchasers have come to
understand the mark as indicating the origin of the goods.
Q: Does the law mean that upon registration, there is already
actual use or is proof of prior use a requirement for
registration?
Although it is a requirement for registration, no application for
trademark registration should be refused even if the application has not
shown proof of use at the time of filing of the application.
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Old Trademark Law
Proof of prior use upon submission of your application.
Present Trademark Law
No requirement of prior use. Proof of use may be presented subsequent
to the filing. When you say filing, it doesn't mean that that the mark is
already registered because it has to also examined by the Bureau of
Trademarks.
Q: Does the Trademark Application form say that we have to
include the date of use of the mark?
No, it doesn't. It is because in the application you are not required to
present proof of use. But use is a requirement for registration and not
for purposes of application.
Section 138. A certificate of registration of a mark shall be prima facie
evidence of the validity of the registration, the registrant’s ownership of
the mark, and of the registrant’s exclusive right to use the same in
connection with the goods or services and those that are related thereto
specified in the certificate.
Since it is a presumption just like in the presumptive regularity in the
performance of the official functions, it is rebuttable and gives way to
evidence to the contrary. The law requires you to use the mark within 2
years because you have 3 years within which to file the declaration of
actual use but there are certain instances when non-use of the mark is
excused.
INSTANCES WHEN NON-USE OF THE MARK IS EXCUSED

Section 124.2. The applicant or the registrant shall file a declaration

INSTANCES WHEN NON-USE OF THE MARK IS EXCUSED
of actual use of the mark with evidence to that effect, as prescribed by
the Regulations within three (3) years from the filing date of the
1 – If it is caused by circumstances beyond the control of the
application. Otherwise, the application shall be refused or the mark shall
owner, such as a valid government regulation.
be removed from the Register by the Director.
Sec. 152.1. Non-use of a mark may be excused if caused by
So, in the Trademark Application Form, you cannot find a requirement
circumstances arising independently of the will of the trademark owner.
for you to have actual use of the mark. But it has a separate form which
Lack of funds shall not excuse non-use of a mark.
is the Declaration of Actual Use.
So if it is caused by circumstances beyond the control of the owner, such
So, the law says you have to present proof of use but not on the time
as a valid government regulation. Recall that a few years ago, there was
of filing. You can do so within 3 years from the filing of the application.
a government ban on certain meth products because it contained
This is the recognition of the law. When you start your business, it is not
harmful ingredients.
expected that you will be able to use that in the market immediately.
And it is important to protect that mark from the start by filing an
So if there is a government regulation, banning the use of that product,
application.
the owner will be unable to use the mark in the market and it is for good
reason because it is pursuant to a government regulation. Or if there is
Q: Why is it important to file your application right away?
an outbreak of war or insurgency in that specific area that is
Because if other persons will use the same mark, you have the priority
independent from the will of the trademark owner.
of registration at the time that they will file their own application. In the
Philippines, we follow the first to file rule. It means that whoever has
2 – If the use of the mark in a form different from the form in
the earliest filing date shall acquire the right to the mark.
which it is registered.
So, between two applicants with same mark, whoever has the earliest
Sec. 152.2. The use of the mark in a form different from the form in
filing date will be able to acquire the right to the mark.
which it is registered, which does not alter its distinctive character, shall
not be ground for cancellation or removal of the mark and shall not
Important: Prior use is not required but actual use is. This means that
diminish the protection granted to the mark.
you do not have to prove that you used the trade mark prior to your
application. You can first submit your application for registration in order
If you notice, there are certain brands which evolved through the years.
to establish your right pursuant to the first to file rule. Then within 3
Like google which changes on a monthly basis. But there are certain
years, this is the time you prove actual use by submitting your
marks, like Nike used the word Nike initially and then they also
Declaration of Actual use.
incorporated the swoosh symbol, and they even included their logo or
slogan “Just Do It.” Because of the popularity of the brand, they just
You are given 3 years because the law understands that once you start
recently adopted or used the swoosh symbol, disregarding the word Nike
your business you may not actually launch your products or services
and the other famous slogan.
right away. This is also the reason why you are not required to prove
that you used the mark before application. Prior use (using the mark
So it is not considered a non-use even if you have registered the word
before the application) is not required. Actual use (proven through the
mark with the device mark as long as it does not alter its distinctive
declaration of actual use filed within 3 years after filing your application)
character shall not be a ground for cancellation or removal of the mark.
is required for your registration.
3 – The use of a mark in connection with one or more of the
Shangrila Int’l Hotel v. Developer’s Group of Companies
goods or services belonging to the class in respect of which the
The court emphasized that registration is not a mode of acquiring
mark is registered.
ownership. When the applicant is not the owner of the mark he applied
for, he has no right to apply for registration of the same.
Section 152. 3. The use of a mark in connection with one or more of
the goods or services belonging to the class in respect of which the mark
What if he has been successful in having the mark registered?
is registered shall prevent its cancellation or removal in respect of all
Can it be a conclusive proof of ownership?
other goods or services of the same class.
The Supreme Court said no. Registration merely creates a prima facie
presumption of the validity of the registration, the registrants ownership
So let’s examine once again the form (2nd page, no. 6). There is a space
of the mark, and the exclusive right to use thereof. This case has
provided which requires you to fill-up what are the goods or services
statutory basis.
covered by the application. So what kind of goods—food product,
chemical product?

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Do you extend to use the same mark for the variety of products that
you have to sell? So you may use that mark with the different classes,
for as many as you want. That is why you have class no. which pertains
to the list of the International Convention of Classification of Goods more
popularly known as Nice Classification. This was adopted in Nice, France.
In that Convention, it is internationally agreed that certain types of
products belong to different classes of goods or services. So if you intend
to use your mark for different kinds of goods or services, you have to
include in your application form.
Sec. 152.3. If you use the mark in connection with one or more goods
or services belonging to the class, in respect of which the mark is
registered, shall prevent its cancellation or removal in respect of all other
goods or services of the same class.
If you will not use that mark for a certain type of class, it will not be
considered non-use with respect to other classes of goods.
4 – The use of the mark by a company related with the
registrant or applicant shall inure to the latter’s benefit, if such
use shall not affect the validity of such mark or of its
registration.
Sec. 152.4. The use of a mark by a company related with the registrant
of applicant shall inure to the latter's benefit, and such use shall not
affect the validity of such mark or of its registration: Provided, that such
mark is not used in such manner as to deceive the public. If use of a
mark by a person is controlled by the registrant or applicant with respect
to the nature and quality of the goods or services, such use shall inure
to the benefit of the registrant or applicant.
As long as the registrant, meaning the person whose name appears as
the owner of the mark, even if they are not the ones actually using the
mark, but a company or person related to that registrant, for instance,
a subsidiary of that company, shall not be considered as non-use by the
registrant.
SUMMARY for excusable non-use (Section 152.1 to .4)
1. If non-use is caused by circumstances beyond the control of the
owner, such as a valid government regulation
2. If the use of the mark in a form different from the form in which it
is registered (the evolution of a mark is not non-use of the
registered mark)
3. Not using the mark with certain goods does not entail non-use for
the goods which the mark is registered for under the Nice
Classification
4. The use of another company or entity (such as a distributor) of the
mark does not amount to non-use to the prejudice of the registrant
or the original owner of the mark as long as the one actually using
the mark is related to the owner of the mark.
We now go to Section 3.
INTERNATIONAL CONVENTIONS AND RECIPROCITY
INTERNATIONAL CONVENTION AND RECIPROCITY
Section 3. International Conventions and Reciprocity. — Any person who
is a national or who is domiciled or has a real and effective industrial
establishment in a country which is a party to any convention, treaty or
agreement relating to intellectual property rights or the repression of
unfair competition, to which the Philippines is also a party, or extends
reciprocal rights to nationals of the Philippines by law, shall be entitled
to benefits to the extent necessary to give effect to any provision of such
convention, treaty or reciprocal law.
Q: Who may avail of the provisions of this law?
Any person who is a national or who is domiciled or has a real and
effective industrial establishment.
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Q: So who may apply for a mark?
Any person as long as he is qualified under Section 3.
REGISTRABILITY OF A MARK
REGISTRABILITY OF A MARK
Any mark can be used because there is no law prohibiting the use of a
mark, but there is a law which allows certain marks for registration.
Marks which cannot be registered:
Section 123. Registrability. - 123.1. A mark cannot be registered if it:
(a) Consists of immoral, deceptive or scandalous matter, or matter
which may disparage or falsely suggest a connection with persons, living
or dead, institutions, beliefs, or national symbols, or bring them into
contempt or disrepute;
Fredco Corp. v. President and Fellows of Harvard College
Fredco, a domestic corporation is the assignee or transferee of the mark
“Harvard” for the use of its items. The President and representatives of
Harvard University, Massachusetts filed a complaint for the use of the
word “Harvard” because it falsely suggests a connection that the
articles/marks used by Fredco for the goods will have the effect of the
public to be misleading because it will have established a false
connection to the university when in reality it has no connection. The
Supreme Court said Fredco cannot use the word “Harvard” for its
merchandise.
(b) Consists of the flag or coat of arms or other insignia of the Philippines
or any of its political subdivisions, or of any foreign nation, or any
simulation thereof;
The reason is to avoid any confusion that a certain entity or individual
has been assisted by the government to engage in business or that his
business is sanctioned by the Philippine government. So, any mark that
would suggest a connection to the Philippines as a state or a government
or government entity should not be used not just a flag or arms or other
insignia.
Question: How about the three stars and a sun, clothing brand
of Francis Magallona?
You can use it but you cannot register it, unless there is another special
law, which prohibits the use. That is why you have to always remind
yourself these items refer to registrability not the validity or legality of
the use. If that is to be applied, it has to be examined first if it really
consists of a flag. If it’s just a component of a flag, I don’t think so. It
depends on how it is being presented. That is why in the application,
you have to present a sample of your mark, so the examiner will
determine if it falls under any of the items.
(c) Consists of a name, portrait or signature identifying a particular living
individual except by his written consent, or the name, signature, or
portrait of a deceased President of the Philippines, during the life of his
widow, if any, except by written consent of the widow;
You cannot use a name. But there are several goods bearing the name
of a person, typically the person himself is using it because if you have
his written consent, you can use it. If you don’t have his consent, you
cannot use it.
You cannot use the name of late President Marcos, unless you secured
the consent of Imelda or unless Imelda dies.
Question of Allysa: About para c) regarding the name that it must with
the written consent of the owner of the name, how about “Ariel”?
Answer: We have to clarify that the word “Ariel” is considered as an
arbitrary mark because it has nothing to do with the product. It doesn’t
mean that you’ll use the word “Ariel” you are referring to Ariel Rivera.
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The reason why we prevent the registration of the mark in c) so that

there is no false connection to a specific person. Ariel does not pinpoint Meaning to say, identical marks cannot be registered only if it relates to
to a specific person nor “Perla”. If it would be “Ariel Rivera”, there’s a the same goods, closely related and nearly resembles goods.
good chance that it will be denied, unless you secure the consent of
Ariel. REMEMBER:
Identical, it has to be exactly the same at all points. But the third one
(d) Is identical with a registered mark belonging to a different proprietor says nearly-resembles, only similar not identical. Merely resembles and
or a mark with an earlier filing or priority date, in respect of: that resemblance will have the effect of confusing or deceiving the users.
(i) The same goods or services, or Still your mark will be denied registration if you are junior applicant. If
(ii) Closely related goods or services, or you are a senior applicant, you will have priority.
(iii) If it nearly resembles such a mark as to be likely to deceive or
cause confusion Philippine Refining Co. vs. Ng Sam
This case applies paragraph (d) of an identical mark because the parties
This refers to identical marks. When you say identical, it is the same. If both used the word “Camia”. The Court said Camia can be used for ham
similar, not exactly the same or not the exact copy. Identical marks are even if it is already used for detergents, cooking oil, etc.
also not registrable.
(d) Is identical with a registered mark belonging to a different proprietor
What do we mean by “earlier filing”? or a mark with an earlier filing or priority date, in respect of:
We follow the principle of the First-to-File Rule. Whoever has the earlier (i) the same goods or services
filing date will be entitled to the right to the mark, even if he is not yet
a registrant or an applicant, for as long as he has an earlier filing date. Obviously, cooking oil on the one hand, and ham on the other are not
the same. They are not closely related.
What about “priority date”?
There is no likelihood of confusion. Ham is a relatively expensive
Section 131. Priority Right. An application for registration of a mark filed
product. Cooking oil is not so. The Court said that although they are
in the Philippines by a person referred to in Section 3, and who
identical marks, they can be used simultaneously because they are not
previously duly filed an application for registration of the same mark in
the same goods or services. Neither are they closely related goods or
one of those countries, shall be considered as filed as of the day the
services.
application was first filed in the foreign country.
Esso Standard Eastern Inc. v. CA
Who are these persons in Section 3?
In the case of Esso, the Court went on further. The tradename in
Any national or resident or who has a real and effective interests or
question is “Esso”. Esso is actually gasoline and the name is also used
industrial establishment are entitled to the mark or right and who
for cigarettes by another corporation. Aside from different descriptive
previously duly filed an application of the same mark in one of those
qualities, different types, is if they flow through different channel of
countries meaning his country of nationality or a country of residence or
commerce. It is another indication that they are not closely related.
where he has industrial interests, where the Philippines in that country
is a party or signatory of international agreement. If he files the same
The Court said that in this case, the product of Esso is sold in gasoline
or similar application of the same mark in one of those countries, then
stations. The product of United Cigarettes is sold in supermarkets and
he will acquire a right not at the time that he filed his Philippine
sari-sari stores. They flow through different channels. There is no
application, but at the time of application in his country of origin or
chance for the consumers to be confused.
country where he first filed his application.
The emphasis should be on the similarities of the products themselves,
What is now the consequence if he avails of a priority right?
not on the arbitrary classification of the goods. WON they belong to the
He must file his application here in the Philippines in the Bureau of
same or different classes, it is not the determining factor. We go right
Trademarks. In his application, he must indicate that he has priority
away to the descriptive qualifications, the general description or
right by stating therein that he has previously filed an application in the
properties.
country of nationality or residence or where he has business
establishment.
The business of the parties is non-competitive and their products are
unrelated. Section 123.1, paragraph (d).
What is now the effect?
We follow the First-to-File Rule. Even if you subsequently filed your local
Canon Kabushiki Kaisha vs. CA
application, you can still consider your application here in the Philippines
Issue: Whether NSR Rubber can use the word Canon for sandals without
as that filed on the date when you filed your foreign application. It will
infringing the mark of Canon used for goods belonging to Class 2 mainly
retroact to the date you filed your foreign application.
inks, chemicals, etc.
If you have an earlier filing or priority date, you have the superior right
Held: In this case, the products of Canon Kabushiki are not related to
to a subsequently filed application. Now, if that “junior” applicant has a
NSR Rubber because they belong to different classes. Class 2 for Canon
mark that is identical to the applicant who has earlier filing date, it does
Kabushiki, whereas for NSR, they are used for sandals.
not mean that his registration will be denied because this particular item
specifies that an identical mark can only be denied registration if:
However, Canon claims that notwithstanding the different classification,
if we will allow NSR Rubber to use the word Canon, it will now forestall
(1) It is used in respect of the same goods or service meaning
the normal expansion of business here in the Philippines. According to
competing goods or services.
them, it is not far-fetched that they will venture into sandal making.
(2) Even if not competing or the same, they are closely related goods
The Court said, there is no reasonable doubt here but we are limited to
or services. In other words, their goods although not of the same
the principle that there should be no omnibus certificate. Their certificate
goods of the same kind, there is a close relation.
only covers products belonging to Class 2. There is no indication that
Example: Bathroom soap is closely related to shampoo. Soy sauce they have any intention to venture into sandal making. We cannot
related to vinegar. They are classified as condiments. They fall anticipate that they will enter into other businesses to the prejudice of
under the same category. others. There will be no omnibus certificate of registration. It is only

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limited to what is indicated in the certificate of registration especially
that it is only a statutory right.
Emerald Garments Mfg. Corp. v. CA
Facts: HD Lee (private respondent) owns the marks Lee, Lee Riders, Lee
Shorts, Lee Jeans. These marks are used for jeans, socks, pants, shorts,
etc. On the other hand, Emerald Garments owns the mark Stylistic Mr.
Lee used for skirts, jeans, blouses, and the likes.
In the IRR, more requirements but the general guidelines is provided in
paragraph (e). It says, provided, in determining whether a mark is well-
known, account shall be taken of the knowledge of the relevant sector
of the public, rather than of the public at large, including knowledge in
the Philippines which has been obtained as a result of the promotion of
the mark. You have to take into consideration the intended market so
that they will determine the relevant sector. For example, cosmetic
goods, the relevant sector is the girls.

Can Emerald Garments register their mark Stylistic Mr. Lee? Is it When your mark is identical to an internationally-well known mark then
confusingly similar? it cannot be registered. It doesn’t matter if that mark is registered here
in the Philippines or not.
Held: Section 123.1. A mark cannot be registered if:
(d) is identical with a registered mark belonging to a different proprietor (f) Is identical with, or confusingly similar to, or constitutes a translation
or a mark with an earlier filing or priority date, in respect of: of a mark considered well-known in accordance with the preceding
paragraph, which is registered in the Philippines with respect to goods
(iii) If it nearly resembles such a mark as to be likely to deceive or
or services which are not similar to those with respect to which
cause confusion.
registration is applied for: Provided, That use of the mark in relation to
those goods or services would indicate a connection between those
The SC ruled that although there are similarities on the trademarks of
goods or services, and the owner of the registered mark: Provided
the petitioner and the respondent, the trademark should be considered
further, That the interests of the owner of the registered mark are likely
as a whole, and not on a piece-meal basis. In this regard, the difference
to be damaged by such use;
between the two marks is conspicuous, noticeable, and substantial
enough to matter especially in the light of the variables that must be
The same situation as (e), however these marks are registered also here
factored in. This does not tantamount to infringement.
in the Philippines. If it is registered, it has certain benefits. The
protection that it covers with respect to goods, which are not similar to
Aside from that, another provision is applied. Lee is a surname. But this
those with respect to which registration is applied for. It extends even
is just a side issue. Another important thing, in determining confusing
to types of goods that are not even similar to those that are being used
similarity, colorable imitation must be considered.
for. It doesn’t mean to exclude others if it is used for goods that are
totally foreign from the goods that these internationally-well known
(e) Is identical with, or confusingly similar to, or constitutes a translation
marks use. Even if they are not similar, provided that the use of the
of a mark which is considered by the competent authority of the
mark in relation to those goods or services would indicate a connection
Philippines to be well-known internationally and in the Philippines,
between those goods or services, and the owner of the registered mark.
whether or not it is registered here, as being already the mark of a
Even if they are not similar, at least they can establish a connection.
person other than the applicant for registration, and used for identical
Somehow you can discern whether that mark is connected with the
or similar goods or services:
goods. For example, if your goods refer to gadgets, you cannot apply it
for food since there is no connection.
Provided, that in determining whether a mark is well-known, account
shall be taken of the knowledge of the relevant sector of the public,
Question from Ate Tess: For example if you use the M sign of McDonalds
rather than of the public at large, including knowledge in the Philippines
and such is registered in the Philippines and you want to make a similar
which has been obtained as a result of the promotion of the mark.
mark for a cell phone. This is very similar but not entirely the same.
Internationally well-known marks
Answer: Just to be sure, you have to check first, since this is a popular
This talks about internationally well-known marks. If your mark that you
brand, whether they have a registration relating to phones. If it is
seek for registration is identical or confusingly similar or constitutes a
registered, then registration covers this kind of class, then it cannot. But
translation of a mark which is considered by competent authority of the
hypothetically, if it doesn’t, then you can register. The law says that if
Philippines to be well-known internationally and in the Philippines. We
your mark is not competing and there is no violation, then you can use
are very conscious with these foreign brands. The owners of these
it and have it registered.
brands are also conscious in protecting their rights. That is why they
enforce their rights in the Philippines even if they do not do business
(g) Is likely to mislead the public, particularly as to the nature, quality,
here.
characteristics or geographical origin of the goods or services;
La Chemise Lacoste v. CA
Descriptively misleading marks
Then, we have a ruling allowing these foreign entities to have legal
These are called “descriptively misleading marks”. This aims to protect
personality to sue in Philippine courts because the Philippines is a
the interest of the consumers so as not to be misled. There should be
signatory to Paris Convention protecting industrial rights including
no misrepresentation. If your mark has the tendency to mislead the
trademarks. The Philippine Supreme Court acknowledges that the
public, it will be denied registration.
Philippines adheres to general accepted principles of international law
including Paris Convention. There is a specific provision in that
Ang v. Wellington
agreement which allows foreign nationals to sue in Philippine courts
Section 123.1. (g) Is likely to mislead the public, particularly as to the
protecting their interests in trademark. Virtually recognizing the fact that
nature, quality, characteristics or geographical origin of the goods or
enforcement of such kind of right is borderless.
services.
But there are certain requirements, such as it has to be determined as
The SC said it cannot be used because it is a geographical name.
well-known internationally and in the Philippines. This will be determined
Wellington is the capital of New Zealand. In fact, also a surname of a
by competent authority particularly Director General of Intellectual
person. It says they are ordinarily regarded as common property and it
Property Office. In the case of La Chemise, there was no IPO yet, it was
is a general rule that the same cannot be appropriated as a subject of
the Sec of Trade and Industry. This is because when the IPO was
an exclusive trademark or trade name.
created it was formerly an agency under Sec of Trade and Industry but
because of the amendment the IPO is now directly under the Office of
the President.
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(h) Consists exclusively of signs that are generic for the goods or
services that they seek to identify;
How would you know if the mark is generic?
The test is to determine whether a consumer not familiar with the goods
or services and upon examining the mark, he would have the idea of
what the good is about.
For instance, milk. You cannot use the word milk because it gives you
the type of good or article.
If you use the word “react”, you wouldn’t say it refers to videos. So, it
is not generic. However, we have another type of marks that cannot be
registered that is under j)
(j) Consists exclusively of signs or of indications that may serve in trade
to designate the kind, quality, quantity, intended purpose, value,
geographical origin, time or production of the goods or rendering of the
services, or other characteristics of the goods or services;
Descriptive marks
These are descriptive marks. So, generic and descriptive marks cannot
be registered. You cannot use the word “react” for reaction videos. In
the same way, you cannot use the word “tomato” to be used for tomato
ketchup because it conveys to the consumers the type of ketchup that
you are referring.
However, there are certain marks that merely suggest what your article
or merchandise are. It has been decided that the word “ivory” used for
soap can be registered because it’s neither generic nor descriptive.
However, it suggests to the consumers that if you use the soap, your
skin will be white as ivory. So, suggestive marks can be registered.
Generic – cannot be registered
Descriptive – cannot be registered
Suggestive marks – can be registered
(i) Consists exclusively of signs or of indications that have become
customary or usual to designate the goods or services in everyday
language or in a bona fide and established trade practice.
Genericidal marks
There are brands that have become very popular and we use it as a
common term rather than a proper name. e.g. xerox, colgate, kodak.
But before these brands have become popular and before this provision
was introduced, there were several brands formerly, exclusively owned
by businessmen that have become customary or generic. These are
called “genericidal marks”. E.g. cellophane, elevator, scotch tape.
Nowadays, owners have become very conscious. In their efforts to spare
it from becoming generic marks, they always indicate in their labels that
it is a registered mark by indicating the letter r inside of a circle ®. If it
is not yet registered, a notice is given to the public that it is exclusively
used, and there is a plan to exclusively use it in the future by indicating
by indicating the letters “tm” ™. e.g. HBO has “SM” which means service
mark.
(j) Consists exclusively of signs or of indications that may serve in trade
to designate the kind, quality, quantity, intended purpose, value,
geographical origin, time or production of the goods or rendering of the
services, or other characteristics of the goods or services;
(k) Consists of shapes that may be necessitated by technical factors or
by the nature of the goods themselves or factors that affect their
intrinsic value.
A shape cannot be registered as long as it is necessitated by technical
factors such as designs for cars. It cannot be registered as a mark
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especially if that shape was applied to improve velocity. If it consists of
a shape that has no technical factor involved, it can be registered.
(l) Consists of color alone, unless defined by a given form.
If you apply for a registration of a color, it must be defined by a given
form or shape. The application of Ferrari for the color red is still
uncertain.
(m) Is contrary to public order or morality.
Always take note that in letter m, only consider the mark itself, the word,
the shape, or the figure. You do not consider the goods to which it is to
be applied.
Section 123.3 The nature of the goods to which the mark is applied
will not constitute an obstacle to registration.
Doctrine of Secondary Meaning
There are certain marks, although incapable of being registered, has
somehow been used by the applicant for a long period of time. And the
use has become familiar to the consuming public. The consuming public
has associated the word to that of the goods or service of the applicant.
This is now an exception to the general rule that generic, descriptive
marks cannot be registered.
If the mark, although originally incapable of registration, but because of
its use and because it has been received positively by the consumers or
the public in general, and it has associated the word to the goods, then
it has acquired a different meaning. This is the Doctrine of Secondary
Meaning.
Section 123.2. The Doctrine of Secondary Meaning. As regards signs or
devices mentioned in paragraphs (j), (k), and (l), nothing shall prevent
the registration of any such sign or device which has become distinctive
in relation to the goods for which registration is requested as a result of
the use that have been made of it in commerce in the Philippines. The
Office may accept as prima facie evidence that the mark has become
distinctive, as used in connection with the applicant’s goods or services
in commerce, proof of substantially exclusive and continuous use thereof
by the applicant in commerce in the Philippines for five (5) years before
the date on which the claim of distinctiveness is made.
Chuanchow Soy & Canning Co. vs. Director of Patents
The SC said it does not mean that there is no opposition for registration
that your application will be granted because the examiner can right
away deny the application.
CONFUSING SIMILARITY
CONFUSING SIMILARITY
It’s not very difficult to discern whether a mark is identical to another
mark, as compared to confusingly similar marks. Several cases have
been raised to the SC, and unfortunately, the SC has ruled inconsistently
on main points for each case. But they justified by saying that
trademark infringement is not judged by precedents, but rather the
peculiar circumstances for each case. That’s why we have a lot of cases.
American wire v. Director of Patents
Facts: Central Banahaw owns the mark called “DYNAFLEX” was seeking
for registration in the director of patents. This was prior to 8293 (1970s
pa, that’s why registration before director of patents). American Wire
opposed, claiming that the mark of Banahaw will cause confusion to
their own trademark which is “DURAFLEX”. They were both selling
electrical wires.
Held: ruled in favor of American Wire. Banahaw, in using DYNAFLEX had
intent to confuse the buyers. The SC considered these determining
factors:
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WON they belong to the same class?
In this case, they are competing products, both products belong to class
20. As compared to Philippine refining case, the products here belong
to the same class (ham and cooking oil) But SC said that’s not the sole
determining factor, it’s immaterial if they belong to the same class.
WON they flow through the same channels of trade?
In this case, there’s no doubt they flow through the same channels since
they’re the same product (electric wires)
They sound the same, phonetically
Actual purchase - who is going to buy?
In this case, the actual purchasers here are engineers who are very
knowledgeable and familiar w/ the brands. But unfortunately, in the
real scenario, it is delegated to those who are not so interested with
the brands, so there is likelihood of confusion.
In confusing similarity, there is no need for proof of actual confusion,
for as long as it is established that there is a likelihood of confusion:
when consumers in purchasing a product will mistake it for another.
Etepha v. Director of Patents
Facts: Westmont Pharmaceuticals applied for registration of trademark
“ATTUSIN”, name of a medicine used in treatment of cough. Etepha,
owner of mark “PERTUSSIN”, also a medicine, opposed.
Held: Etepha lost, will not lead to confusing similarity.
1. “tussin” is a generic term
2. No similarity in the appearance of the labels
3. The letters before tussin do not sound the same
4. The Attitude of buyer plays a very important part in determining if
there is confusing similarity.
Medicine is not an everyday product, the buyers cannot take
chances in buying. They first go through a doctor who gives a
prescription. Even if they purchase without the prescription, the
buyers are very certain with the product they choose to buy.
Doctors prescribe the medicine who are knowledgeable. Also, the
people who dispense the product are pharmacists, who are also
familiar with the product
We must distinguish between Etepha and American Wire case and note
that an important factor in determining confusing similarity is the
attitude of the buyer. Even the Court identifies the buyers and try to
delve into their minds to determine the possibility of confusion between
trademarks
Fruit of the Loom v. Director of Patents
Facts: Fruit of the Loom owns mark “Fruit of the Loom” for garments.
General Garments apply for registration of mark “Fruit for Eve” for
garments too, particularly women’s underwear and pajamas. Fruit of the
Loom sues General Garments for unfair competition.
Held. No unfair competition, ruled in favor of fruit for eve. Although the
word “fruit” is present in both marks, it is not holistically dominant. It
does not carry the whole product as to give confusion to the buyers.
Attitude of the buyers
Although they are ordinary purchasers, they have “modicum of
intelligence” who are able to see the obvious differences between the
2 trademarks.
What were the differences here?
You only have to point out minor similarities
1. The use of term “fruit” is the only similarity
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2. The general appearances of the Hand tags are not similar in
terms of shape, design and color.
Lim Hoa v. Director of Patents
Facts: Agricom development owns trademark “MARCA MANOK” for food
seasoning, containing a hen in the mark. Lim Hoa applied for registration
of his mark “BANTAM” which contained 2 roosters, also for food
seasoning.
Held: Lim Hoa lost.
Attitude of buyers
Who is the purchaser? The person who typically uses the product. The
item is a common household item usually bought by household helpers.
Sometimes, some of them are illiterate so they can’t distinguish if the
word marks are the same. What was highlighted here was the use of
the manok, the chicken. Regardless if they used different sexes does
not matter, since the one purchasing has no time to distinguish if the
item belonged to Agricom or Lim Hoa
The person who intends to adopt the mark has a lot of words
and figures to think of, ensuring that your mark will be
distinctive or will stand out.
Why will you choose a mark that has been used by another trademark
owner? It is the adoption of the similar mark of figure that is inexplicable.
This leads you to conclude that you really had the intent to ride on the
popularity of the other brand. “Why with all the birds in the air and the
fishes and the sea, and all the animals on the face of the earth to choose
from, the defendant chose 2 roosters as its trademark although its
directors and managers must have been aware of the long continued
use of a rooster by the plaintiff.” There is nothing about the rooster
that is descriptive of the goods, or has connection with the product.
Asia Brewery v. Director of Patents
Facts: San Miguel Corporation owns the registered mark of “PALE
PILSEN” over a beer sold. Asia brewery sold beer as well name “BEER
NA BEER”.
Held: San Miguel lost. Regarding the issue on San Miguel’s claim that
Asia Brewery copied the bottle (the color, the shape, the print): the
purpose of using the same container is for the protection of the product
A. The color: the amber rose color is the best color to protect the beer
from the light.
B. The print: The white color of the print is the best contrast to the
amber color.
C. The shape: San Miguel was not able to claim a right over the shape
because it has not claimed to own the patent, the design patent.
In sum, the court said that the similarities raised by San Miguel has a
purpose, it has some technical reasons to preserve the content. That’s
why it’s accepted in the industry. Just like medicine bottles it is the color
that is ideal for the preservation for the contents inside the bottle.
Dominancy test was employed.
The dominant feature of the product of San Miguel here is “SAN MIGUEL
PALE PILSEN”, which is the particular component of the mark that would
stand out or being consciously adopted by the owners as a distinct mark.
Incidentally, the words “pale pilsen” are also in the mark of Asia
Brewery. However, the words “pale pilsen” cannot be exclusively used
because they are descriptive marks. “pale” describes the color of liquid,
of the beer itself. “Pilsen” because the word is being adopted to identify
the type of brewery, which originated from Pilsen, a place from
Czechoslovakia. So what’s left? Only the word “San Miguel” which you
cannot find in the mark of Asia brewery.
Del Monte Corporation v. Sunshine Sauce
Facts: Del Monte is a foreign corporation engaged in manufacture of
ketchup. Philippine Packing Corporation is a corporation authorized by
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Del Monte to manufacture their products and register as trademark the
name Del Monte.
Sunrise Sunshine Corp. is also engaged in the manufacture of sauces
including ketchup. Their logo is Sunshine Fruit Catsup. They adopt two
different word marks.
Issue: Unfair competition and Trademark Infringement
The RTC ruled that there is no trademark infringement. Comparing both
side by side, the trademark and the products are totally different by
looking at the general appearance of the product, their labels, the
design, texts and color.
SC: The best test to determine similarity is not to compare them side by
side because an ordinary purchaser has no time to compare them side
by side. Ordinary purchasers are usually guided by the pictorial
illustrations of the goods. Usually if the good is of value, purchaser will
take time to examine and even ask other people as to the quality of the
product. But when it comes to mass products which are not that
expensive like kitchen products, they would usually not take that much
caution. On that note, there is trademark infringement.
On the issue regarding the bottle (Unfair Competition): Sunshine is using
the same bottle owned by Del Monte. They bought it from junk shops.
SC said at first that there is no violation of Trademark infringement since
Del Monte has not registered it in the principal register but only in the
supplemental register. Still there is bad faith because the Del Monte
bottle has a stamp embossed “Not to be refilled” but nonetheless they
breached the same. On that note, they are guilty of unfair competition.
What is the test applied?
The test applied is Holistic test
A. Dominancy Test – may not have the predominant feature of the
product and whether this predominant feature would likely confuse
the public.
B. Holistic Test– we look at the entirety of the product. Look at the
label, text, appearance. In this case, based on the general
appearance of the product, considering that it is a mass product
bought by ordinary purchaser it would likely confuse the public.
When do you apply Dominancy over Holistic test?
No hard and fast rule. It depends on the peculiarity of the circumstances
involved. Usually a case to case basis.
Atty. Q: Some of the cases based on the old law like the procedure on
the principal and supplemental register which is no longer applicable in
the present law. In this case, the court said you take into consideration
the purchaser of the product to determine whether there is confusing
similarity.
The court pointed out that in order to find whether there is confusing
similarity, you consider several of factors like age, training, education of
the usual purchaser and the nature & cost of the article as compared to
the Emerald Garments case where the purchaser is more careful since
he will be spending a considerable amount. Here the purchaser can be
more careless. In this case, we identified two types of purchaser: (1)
careful (2) less cautious.
The court likewise pointed out that a person who infringes a trademark
does not normally copy out but only makes colorable changes,
employing enough points of similarity to confuse the public and enough
points of differences to confuse the courts so that it will be taken out
from the concept of confusing similarity. What is undeniable that before
a manufacturer prepares to package his products, he has boundless
choice of words, phrases, colors and symbols sufficient to differentiate
his products from the others.
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In this case, Sunshine chose similar colors and letters as those used by
Del Monte without reasonable explanation to use the same colors and
features as those of Del Monte. The inevitable conclusion was that it
was done deliberately. This is the principle of inexplicable use. This was
also applied in the case of ARCE SONS and Co. v. SELECTA BISCUITS.
Arce sons and co. v. Selecta biscuits
SELECTA BISCUITS as a secondary player has with him boundless choice
of words but still chose Selecta and they can’t explain why they chose
Selecta. They had reasons but were not accepted by court. Unlike in the
Asia Brewery case where there was a valid reason to adopt the same
color and bottle.
Principle of confusion of goods and confusion of business
Marks whether identical or confusingly similar can’t be registered if it
pertains to the same goods or services or closely related goods or
services. Our jurisprudence has developed sort of a variant of the second
type (closely related goods or services) but the court has refined such
saying that confusion may be caused not on the goods itself but
confusion on the part of consumers thinking that the person who adopts
a famous mark has already ventured to another type of business which
is in any way connected to his old business. This is called the principle
of confusion of goods and confusion of business.
Sterling v. Farbenfabriken
In this case, the court took notice of the use of the word BAYER inside
a cross circle. STERLING has been using this mark in its medicine
products whereas BAYER has been using it in other types of industrial
and agricultural products also using the mark BAYER inside a cross
circle.
Both companies claim to have the right to use the same mark but as the
court narrated in the facts, it has been agreed that STERLING being the
Philippine company of the subsidiary of Bayer New York has agreed to
use it for medicine and has agreed for FARBENFABRIKEN to use it for
other products.
SC: They can continue to use BAYER but must indicate that it originated
from Germany. There is no likelihood of confusion because of the
disparity of the type of products. For medicine although dealing with
chemicals but still they are different types of product.
This doctrine is more pronounced in the case of:
McDonalds v. LC BigMak
Controversy: LC BigMak engaged in fast food and used the word
“BigMak” and in all its products (spaghetti and etc.) McDonalds uses
BigMac but only for its burgers.
Contention of LC BigMaK: They offer it to a different class.
Contention of McDonalds: It would result in confusion of goods
Issue: Can McDonalds prevent LC BigMak from using the word BigMac?
SC: LC BigMak uses it not only for sandwiches but for other types of
food items. They have different types of markets. McDonalds catering
to upper class consumers and BigMak to lower class consumers. They
are sold differently as BigMaK is usually sold in mobile stores. But, even
if BigMak can say that there can be no tendency of confusion but what
it is referring to is the confusion of goods.
They now adopt a different type of confusion which is the confusion of
business. Although they cater to a different type of class of consumers,
it is not far-fetched that the consuming public will be misled in thinking
that McDonalds has already extended its business to the type of
business that LC BigMak is engaged in or is any way connected to the
activities of the infringer and more importantly, the business of LC
BigMak while it is allowed to use the word, would forestall the normal
potential expansion of the business of McDonalds.
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We now have confusion of business. You cannot discount the possibility
that the consumers will be led to believe that it has already expanded
its business. It is a possible conclusion because both deals with food,
the food players in the food industry. The complaint filed by McDonalds
is but an act of guarding his goods or businesses considering that it is a
well-known International Brand just like what happened with MacJoy.
Now, they have changed to MyJoy.
The Court said that owners of LC BigMak can no longer use the word
BigMak. And even if McDonalds have no immediate plans of expanding
its business to that type of food distribution, still it would prove injurious
on the part of McDonalds brand because the type of food that LC BigMak
is selling is way inferior to that of McDonalds, so it has created confusion
on the part of consumers thinking that McDonalds already deteriorated
its quality of food. It will affect their main business. Protecting, guarding
their goods and business from actual market competition with identical
or similar products of the parties.
With respect to whether or not goods are related or not. The Court has
ruled in favor of goods that are considered as not confusingly similar in
the case of Faberge Incorporated v. IAC.
Faberge Incorporated v. IAC
Private respondent sought to register the trademark “Brute” for briefs.
Petitioner filed an opposition based on similarity of the same trademark
with symbol “Brut” previously registered for aftershave lotion, shaving
cream, deodorant, talcum powder and soap.
Are they competing or close-related products?
The Court said that there is a glaring discrepancy between the products
although they sound the same, have been amply portrayed to such an
extent that indeed a purchaser is out in the market for the purpose of
buying “Brute” will definitely not be mistaken or misled into buying
“Brut” aftershave lotion or deodorant. You compare this with McDonalds.
Sir: A sort of critique to this ruling. Because the ruling in McDonalds is
pretty recent, it was promulgated 2004. This case of Faberge was
promulgated in 1992. If you compare this, somehow we have
inconsistent conclusions of the Supreme Court so you have to take into
account the type of product that is being sold. With respect to
McDonalds, they sell more or less the same type of food which is fast
food snacks or items.
But in the case of Faberge, they apply to briefs on one hand and
aftershave lotion, shaving cream on the other. Can you find this in the
same section in the department store? You can find these in the Men’s
section. The declaring discrepancies, the SC said, between the two
products have been amply portrayed to such an extent that indeed a
purchaser is out in the market for the purposes of buying respondent’s
“Brute” brief will definitely not be mistaken or misled into buying. There
is no chance of confusion although there is just a minor difference in
spelling.
Compare this with Hickok Manufacturing v. CA
Hickok Manufacturing v. CA
Petitioner seeks to cancel private respondent’s registration of a mark
Hickok for its shoes as against petitioner’s earlier registration for the
same trademark for its non-competing products such as wallets, belts
and men’s briefs.
The court said that they are non-competing, but are they closely related
considering that they adopted the same wordmark, the same spelling?
In relation to the present law, RA 8293, they could be considered as
closely related goods. But the court said that they are not confusingly
similar. It is an established doctrine that emphasis should be on the
similarity of the products involved and not on the arbitrary classification
or general description of their properties or characteristics. This is citing
the ruling in Philippine Refining Company v. Ng Sam and that the mere
11 | U N I V E R S I T Y O F S A N C A R L O S
fact that one person has adopted and used a trademark on his goods
does not prevent the adoption and use of the same trademark by others
on unrelated articles of a different kind.
Atty. Q. Take note that this was promulgated prior to RA 8293 way
before McDonalds v. LC BigMak. So you compare these rulings. Shoes
on one hand, wallets, belts and men’s briefs on the other. Would there
be likelihood of confusion considering that most of these items, the raw
material is leather. Granting that they are not closely related, can you
not discount the possibility that there is confusion of business as laid
down in the case of McDonalds. Although the court does not specifically
state that the rulings in Faberge and Hickok were already abandoned
but you can see the distinction, the departure of the Supreme Court with
respect to these types of cases even if they are non-competing, and we
can also argue that they are not related, but if we adopt the ruling of
McDonalds, somehow there is a chance that it will be considered as
belonging to confusion of business doctrine.
Acoje Mining Corporation v. Director of Patents
The word Lotus is being used for Soy Sauce on one hand and the same
word Lotus is used for edible oil. Non-competing? Yes. Non-related? You
can argue that Soy Sauce is not related to edible oil but once again, you
have to consider the ruling in McDonalds.
The court in this case said that there can be no confusion to the buying
public. There is quite difference between soy sauce and edible oil. If one
is in the market, the former is not likely to purchase the latter just
because of the trademark Lotus. Even on the rare occasions that a
mistake does occur, it can easily be rectified.
Sir: This is the point of the ruling which I am very uncomfortable with
because in the other rulings, the court said that there is no need to
prove actual confusion. Here comes the SC saying that even if there is
confusion, it can easily be rectified. This is not the requirement. The law
says that likelihood of confusion will suffice notwithstanding the fact that
there is a chance for it to be easily rectified. To me, these decisions
ought to be revisited.
The George W. Luft Company, Inc. v. Ngo Guan
The word Tango is used by Ngo Guan for no other product than hair
pomade which petitioner does not deal. Upon the other hand, petitioners
trademark is used for specified chemicals, medical and pharmaceutical
corporations such as lipstick, crème rouge, compact rouge, cleansing
cream, night/day cream.
The court said they are different from pomade. Can pomade can be
classified as a cosmetic item? So, once again, the court said that there
is no chance for the consumer to be confused because they are different.
And this time, they considered the intent of the user. It is not claimed
that no one uses or intends to use its Tango trademark on articles of
this kind. Once again, the intention of the parties is not relevant here.
In fact, the court said it is already presumed that if you adopt the same
trademark, whether the intention to confuse is present or not, is
irrelevant for as long as there is likelihood of confusion on the part of
the consumers. Then, we must consider that the marks are confusingly
similar. Compare this with other cases mentioned above.
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TEST OF CONFUSING SIMILARITY
TEST OF CONFUSING SIMILARITY
These tests are not exclusively used by courts in determining the
presence or absence of a confusing similarity.
PHONETIC SIMILARITY
PHONETIC SIMILARITY
Marvex Commercial Co. vs. Petra Haw Pia
In this case, the court noted that the marks “LIONPAS” and “SALONPAS”
to be confusingly similar, as they have the same sound. This was
promulgated in 1966 where the most common medium of
communication is the radio. The importance of this rule is emphasized
by the increase of radio advertising in which we are deprived of help of
our eyes and must depend entirely on our sense of hearing.
The court ruled that the marks are confusingly similar based on the
limited documents presented and that the products were promoted over
the radio, where the sound is very important. The court also cited
several other cases where the competing marks are considered as
confusingly similar in sound: "Gold Dust" and "Gold Drop", "Silver Flash"
and "Supper-Flash", and "Seven-Up" and "Lemon-Up".
Operators Inc. vs. Directors of Patents
The court ruled in this case that the marks AMBISCO and NABISCO are
confusingly similar.
Atty. Q In these cases, the court relied only on the similarity of sounds
using the phonetic similarity test. But in the succeeding cases ruled by
the SC, it stated that apart from phonetic similarity, applying the idem
sonans rule, you also have to consider other factors to determine
similarity.
HOLISTIC TEST
HOLISTIC TEST
The holistic test mandates that the entirety of the marks in question
must be considered in determining confusing similarity.
Bristol Myers vs. Director of Patents
Facts: Petitioner, Bristol Myers Co., opposition, is the owner in the
Philippines of the trademark "BUFFERIN", belongs to Class 6, Medicines
and Pharmaceutical Preparations. Designated as "Antacid analgesic", it
is intended for relief in cases of "simple headaches, neuralgia, colds,
menstrual pain and minor muscular aches."
Respondent, United American Pharmaceuticals, Inc, applied for
"BIOFERIN” to be registered as trademark. It covers "a medicinal
preparation of antihistaminic, analgesic, antipyretic with vitamin C and
Bioflavenoid used in the treatment of common colds, influenza and other
febrile diseases with capillary hemorrhagic tendencies." The product falls
under Class 6 of the official classification, that is, "Medicines and
Pharmaceutical Preparations".
Issue: WON petitioner application for registration of a mark is infringing
on respondent mark.
Held: No. In determining whether two trademarks are confusingly
similar, the court implies in this case that the phonetic test is not the
only determining factor. The test is not simply to take their words and
compare the spelling and pronunciation of said words. Rather, it is
consider the two marks in their entirety, as they appear in the respective
labels, in relation to the goods to which they are attached. Said rule was
enunciated by this Court through Justice Felix Bautista Angelo in Mead
Johnson & Co., vs. N.V.J. Van Dorp, Ltd.
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Mead Johnson & Co. vs N.V.J Van Dorp Ltd.
In this case, the court said that, the marks “ALASKA” and “ALACTA”, in
applying the phonetic test, are considered to sound the same and similar
in spelling, but they are not considered as confusingly similar if we apply
other factors. The marks are different in appearance if compared side
by side.
Atty. Q: The mark should be considered in its entirety.
Del Monte Corp. vs Court of Appeals
Del Monte Corporation has given authority to Philippine Packing
Corporation (Philpack) the right to manufacture, distribute and sell in
the Philippines various agricultural products, including catsup, under the
Del Monte trademark and logo. The Philpack has three certificates of
registrations, to wit: The bottle configuration, the Del Monte mark and
the logo. Del Monte Corp filed an infringement case against Sunshine
after learning that Sunshine Sauce Manufacturing was using Del Monte
bottles in selling its products and that Sunshine Sauce’s logo is similar
to that of Del Monte.
Held: In this case, the marks of Del Monte and Sunshine are different
from each other and it would be a stretch if the court would say that
“Del Monte” and “Sunshine” would be confusingly similar. But the SC in
this case considered the mark as they appear in its entirety, including
the bottle. Especially that the plaintiffs are claiming a right over the
bottle since what Sunshine was using were their used bottles which
design was registered under Del Monte’s name. Now there is the
tendency that the purchasers will be confused in the origin of the
products, thinking that it came from Del Monte.
The SC considered the holistic test, because they we have to take note
of the attitude of an ordinary purchaser and the subject of the purchase,
which is a common household item. The Court considered what would
actually happen during the purchase, the purchaser, and the product.
A housewife who is an ordinary purchaser would be too much in a hurry
to scrutinize properly whether or not what they were taking were the
product they wanted to actually get. If she wanted Del Monte but is in
a hurry, they might pick up Sunshine Sauce since the bottle is basically
Del Monte’s in the first place. There is now confusing similarity in this
case. Worse, if men were ordered by their wives to get the sauce, they
wouldn’t care anymore what they were getting.
As a general rule, an ordinary purchaser does not exercise as much
prudence in buying an article for which he pays a few centavos as he
does in purchasing a more valuable thing.
DOMINANCY TEST
DOMINANCY TEST
The test of dominancy focuses on the similarity of the prevalent features
of the competing trademarks, which might cause confusion or deception
and thus constitute infringement.
Asia Brewery Inc. vs Director of Patents
Facts: In this case, an application was made by Asia Brewery. San Miguel
opposed such application for it will infringe their trademark “SAN
MIGUEL PALE PILSEN”. San Miguel sued Asia brewery for infringement
of trademark and unfair competition on account of the latter’s “BEER
PALE PILSEN” or “BEER NA BEER” product in the local beer market.
Held: SC states that the dominant feature is the word “SAN MIGUEL
PALE PILSEN”, whereas the Asia Brewery the dominant word “BEER
PALE PILSEN”. There is hardly any dispute that the dominant feature of
SMC's trademark is the name of the product: SAN MIGUEL PALE PILSEN,
written in white Gothic letters with elaborate serifs at the beginning and
end of the letters "S" and "M" on an amber background across the upper
portion of the rectangular design.
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On the other hand, the dominant feature of ABI's trademark is the
name: BEER PALE PILSEN, with the word "Beer" written in large amber
letters, larger than any of the letters found in the SMC label.
The trial court perceptively observed that the word "BEER" does not
appear in SMC's trademark, just as the words "SAN MIGUEL" do not
appear in ABI's trademark. Hence, there is absolutely no similarity in the
dominant features of both trademarks.
The words "pale pilsen" may not be appropriated by SMC for its exclusive
use even if they are part of its registered trademark: SAN MIGUEL PALE
PILSEN, any more than such descriptive words as "evaporated milk,"
"tomato ketchup," "cheddar cheese," "corn flakes" and "cooking oil" may
be appropriated by any single manufacturer of these food products, for
no other reason than that he was the first to use them in his registered
trademark.
Atty. Q: In this case, the court criticized the holistic test. It states that,
although similarity in size, form and color are relevant, it is not
conclusive, hence it is the dominancy test and not the holistic test that
should be applied, moreover, the law prefers dominancy test to
Holistic and phonetic test is still relevant but they are not the
determining test unlike the dominancy test.
SECTION 155. Remedies;
Infringement. — Any person who shall, without the consent of the owner
of the registered mark:
Section 155.1. Use in commerce any reproduction, counterfeit, copy,
or colorable imitation of a registered mark or the same container or a
dominant feature thereof in connection with the sale, offering for sale,
distribution, advertising of any goods or services including other
preparatory steps necessary to carry out the sale of any goods or
services on or in connection with which such use is likely to cause
confusion, or to cause mistake, or to deceive.
Atty. Q. But in some cases the Court considered the Holistic test,
depending on the factual circumstances. If we notice that in the Del
Monte case, the holistic test was used since it was obvious that the word
“Del Monte” and “Sunshine” were the dominant features. The SC
considered that marks as they appear in their goods, and what was
relevant in that case was the bottle of the Del Monte used by Sunshine.
Phil. Nut Industry vs. Standard
In this case, the word “PLANTERS” was considered as the dominant
feature. The marks involved are the "PHILIPPINE PLANTERS CORDIAL
PEANUTS” as used by Phil. Nut Industry and the respondent’s mark
"PLANTERS COCKTAIL PEANUTS" used by Standard Corporation.
The court said that there is a confusing similarity, because Standard
adopts the word “PLANTERS”, which is the dominant feature of the
Standard Corporation’s mark because the word “PLANTERS” easily
catches the eyes of the purchasers which is how to identify the dominant
mark. If we apply this to the Asia Brewery case, the dominant feature
of San Miguel were the words “San Miguel Pale Pilsen” which could not
be found in the product of Asia Brewery.
In this case, the court used the mark “Philippine Planters Cordial
Peanuts” as a whole, but the court said that you couldn’t have exclusive
use of the word “Philippine” and “Cordial Peanuts” are generic terms,
we are left with the word “PLANTERS”.
The word “PLANTERS” printed across the upper portion of the label in
bold letters easily attracts and catches the eye of the ordinary consumer.
This term was consciously used by the product owner. As a whole, it is
the word “PLANTERS” that catches the eye of an ordinary consumer.
Moreover, the human peanut figure, Mr. Peanut, was not considered as
13 | U N I V E R S I T Y O F S A N C A R L O S
the dominant feature of the mark of Standard Corporation because it is
the word “PLANTERS” that catches the eyes of the consumers.
How can you tell that a specific feature is the dominant feature
of a mark?
When it catches the eye of the consumer. The court said it is that word
and none other that sticks in his mind when he thinks of salted peanuts.
GENERAL AND DESCRIPTIVE MARKS
GENERAL AND DESCRIPTIVE MARKS
Societe des Produits vs Court of Appeals
Facts: Societe de Produits is a foreign corporation, its subsidiary is Nestle
Philippines. They are the makers of the coffee product with the mark
“MASTER ROAST” and “MASTER BLEND”. A domestic corporation, CFC
also used the mark “FLAVOR MASTER” for instant coffee. The Societe
des Produits claims that “FLAVOR MASTER” is confusingly similar with
their two marks, “MASTER ROAST” and “MASTER BLEND”.
Issues: WON Societe des Produits cannot exclusively used the word
“MASTER” for being a descriptive term.
Held: In this case, the court ruled that the dominant feature of the mark
is the word “MASTER” of the “MASTER ROAST” and “MASTER BLEND”.
This was considered as the dominant feature because of the advertising
scheme adopted by Nestle in promoting its coffee products. In this case,
Nestle has, over time, promoted its products as "coffee perfection
worthy of masters like Robert Jaworski and Ric Puno Jr."
The term "MASTER", therefore, has acquired a certain connotation to
mean the coffee products MASTER ROAST and MASTER BLEND
produced by Nestle. As such, the use by CFC of the term "MASTER" in
the trademark for its coffee product FLAVOR MASTER is likely to cause
confusion or mistake or even to deceive the ordinary purchasers.
The word "MASTER" is neither a generic nor a descriptive term. But,
they are considered as suggestive mark or term. This term is an
"imagination, thought and perception to reach a conclusion as to the
nature of the goods." There is no provision in the law that prohibits
exclusive use as well as registration of suggestive mark or term.
Generic terms are those, which constitute "the common descriptive
name of an article or substance," or comprise the "genus of which the
particular product is a species," or are "commonly used as the name or
description of a kind of goods," and are not legally protectable. Whereas,
descriptive terms "forthwith conveys the characteristics, functions,
qualities or ingredients of a product to one who has never seen it and
does not know what it is,"
Atty. Q: In other words, if you used words that readily convey to the
consumer, who is not knowledgeable of your product, the idea of what
your product is all about, then such words are either generic or
descriptive terms.
Example: If you used the word “MILK”, the consumer will readily know
what the product is all about.
Unlike if you used “APPLE” for gadgets, it does not necessarily gives the
consumer the idea on what the product of “APPLE” is all about.
When can you consider a feature as the dominant feature of a
mark?
When the product owner consciously uses or adopts it. As in the case of
Phil. Nut Industry vs. Standard, the word “PLANTERS” has been
considered as the consistent feature being the biggest in size, boldest
in color. In the case of Societe des Produits vs Court of Appeals, the
word “MASTER” was consciously chosen by Nestle Philippine as can be
seen through their advertising scheme.
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These tests are not mutually exclusive
These tests are not mutually exclusive because in certain cases, the
court even considered the dominant feature as well as the mark in its
entirety. However, the law prefers to use the Dominancy test, but you
need to take into considerations the peculiar factors in every case. The
court even said that the determination of the confusing similarity is a
relative concept depending on the specific circumstances of a case.
DOCRINE OF SECONDARY MEANING
THE DOCTRINE OF SECONDARY MEANING
Ang vs. Teodoro
Facts: In this case, Toribio Teodoro has continuously used “ANG TIBAY”,
both as a trademark and as a tradename, in the manufacture and sale
of slippers, shoes, and indoor baseballs since 1910. He formally
registered it as trademark on September 29, 1915, and as tradename
on January 3, 1933.
Ana Ang registered the same trademark "ANG TIBAY" for pants and
shirts on April 11, 1932, and established a factory for the manufacture
of said articles in the year 1937.
Ana Ang contends that the phrase "ANG TIBAY" as employed by Teodoro
on the articles manufactured by him is a descriptive term because,
"freely translate in English," it means "strong, durable, lasting."
However, Teodoro argued that it is not descriptive but merely suggestive
and may properly be regarded as fanciful or arbitrary in the legal sense.
Issue: Whether or not the word “ANG TIBAY” is a descriptive word.
Held: The court said that the term “ANG TIBAY” is not a descriptive
term; it is a fanciful arbitrary term. Assuming arguendo that the term is
a descriptive term, it has nevertheless acquired a secondary meaning.
When a term has no connection with a product, it becomes a fanciful
term or considered as an arbitrary term. Regardless of its being arbitrary
in nature, the word "ANG TIBAY," as used by Teodoro to designate his
wares, had exactly performed that function for twenty-two years before
the petitioner adopted it as a trade-mark in her own business. “ANG
TIBAY” shoes and slippers are, by association, known throughout the
Philippines as products of the “ANG TIBAY” factory owned and operated
by the respondent Toribio Teodoro.
How can one acquire a right over a mark based on the doctrine
of secondary meaning?
Through the long usage of the product owner of a mark, the consumers
have associated the said mark to acquire another meaning. Wherein,
that meaning is the product of that particular trademark owner. That is
the reason why it is called a secondary meaning, the term acquired a
different meaning apart from its original meaning.
Relevant provision pertaining to doctrine of secondary
meaning:
Section 123.2. As regards signs or devices mentioned in paragraphs
(j), (k), and (l), nothing shall prevent the registration of any such sign
or device which has become distinctive in relation to the goods for which
registration is requested as a result of the use that have been made of
it in commerce in the Philippines. The Office may accept as prima facie
evidence that the mark has become distinctive, as used in connection
with the applicant's goods or services in commerce, proof of
substantially exclusive and continuous use thereof by the applicant in
commerce in the Philippines for five (5) years before the date on which
the claim of distinctiveness is made.
Arce Sons and Co. vs. Selecta Biscuits
The court ruled in this case that the word “SELECTA” has been
associated by the consuming public to the products sold by Arce Sons
and Co. and has acquired a secondary meaning.
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It is true, may be an ordinary or common word in the sense that may
be used or employed by any one in promoting his business or enterprise,
but once adopted or coined in connection with one's business as an
emblem, sign or device to characterize its products, or as a badge of
authenticity, it may acquire a secondary meaning as to be exclusively
associated with its products and business. In this sense, its used by
another may lead to confusion in trade and cause damage to its
business.
Requirements to acquire secondary meaning
In accordance with the provisions of the law it is when there is proof of
substantially exclusive and continuous use thereof by the applicant in
commerce in the Philippines for five (5) years before the date on which
the claim of distinctiveness is made.
However, jurisprudence does not limit the requirement to the number
of years, but it also requires that the consuming public must has
familiarity with the product and the mark itself. Further, they must have
associated the term with the product of the owner of the mark. The
owner of the trademark must prove that it has acquired distinctiveness
because one of the basic elements of a valid mark is that it should be
capable of being distinguished from other goods and services.
A generic or descriptive mark will not make the product standout
because it is not distinctive. The thrust of registration is really to point
out the distinctive character of the mark. If you present a mark that is
generic or descriptive, then the second element of a mark which is
distinctiveness, has not been acquired. Which is why it is on the
applicant to prove that the mark has acquired its distinguishing
characteristic
PROCEDURE IN TRADEMARK REGISTRATION
Why is procedure important?
Since registration is a requirement for trademark.
FILING OF APPLICATION IN THE BUREAU OF TRADEMARKS
FORMAL REQUIREMENTS FOR APPLICATION OF
REGISTRATION
All these are found in the Trademark Application Form.
Section 124. Requirements of Application. —
124.1. The application for the registration of the mark shall be in Filipino
or in English and shall contain the following:
a. A request for registration
b. The name and address of the applicant
c. The name of a State of which the applicant is a national or where
he has domicile; and the name of a State in which the applicant
has a real and effective industrial or commercial establishment, if
any
d. Where the applicant is a juridical entity, the law under which it is
organized and existing
e. The appointment of an agent or representative, if the applicant is
not domiciled in the Philippines
f. Where the applicant claims the priority of an earlier application, an
indication of:
i. The name of the State with whose national office the earlier
application was filed or if filed with an office other than a
national office, the name of that office,
ii. The date on which the earlier application was filed, and
iii. Where available, the application number of the earlier
application.
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Atty. Q: Do you remember right of first filing? How would one have
priority right?
Section 131. Priority Right. - 131.1. An application for registration of a
mark filed in the Philippines by a person referred to in Section 3, and
who previously 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 was first filed in the foreign country.
We follow the first to file rule. Whoever has the earliest filing date has
the right of registration over the mark. But if a local application is filed
after a previous application is filed in a foreign country falling under Sec
3 (International Convention and Reciprocity), the earlier filing date in
the foreign country shall be considered as the filing date here in the
Philippines. It then has retroactive effect.
But what is the requirement?
131.2. No 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.
Registration in the Philippines is conditioned on the registration of the
foreign application, even if it satisfies all the registration requirements-
Formal under Sec.124 and; Substantial under Sec.123 (whether or not
capable of registration) and Sec.121.1 (visible sign capable of
distinguishing the goods and services).
So, even if your local application satisfies all of these requirements, there
is a condition that your registration will not be granted until your mark
has been registered in the country of origin.
g. Where the applicant claims color as a distinctive feature of the
mark, a statement to that effect as well 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 which are in that color.
h. Where the mark is a three-dimensional mark, a statement to that
effect
i. One or more reproductions of the mark, as prescribed in the
Regulations
j. A transliteration or translation of the mark or of some parts of the
mark, as prescribed in the Regulations.
Atty. Q:
Translation- conversion of foreign words into English
Transliteration- conversion of foreign characters
Translation/Transliteration is relevant for internationally well-
known marks. You cannot register even if it’s a translation of the
mark like Apple to Mansanas. You cannot register it.
k. The names of the goods or services for which the registration is
sought, grouped according to the classes of the Nice Classification,
together with the number of the class of the said Classification to
which each group of goods or services belongs; and
l. A signature by, or other self-identification of, the applicant or his
representative.
124.2. The applicant or the registrant shall file a declaration of actual
use of the mark with evidence to that effect, as prescribed by the
Regulations within three (3) years from the filing date of the application.
Otherwise, the application shall be refused or the mark shall be removed
from the Register by the Director.
Atty. Q: Proof of actual use is important because it is required in
registration. But prior use is no longer a requirement. At the time of
filing your application, there is no need to present proof of actual use,
however, within 3 years you must present proof of actual use. This is
why we have declaration of actual use.
15 | U N I V E R S I T Y O F S A N C A R L O S
Declaration of actual use purposes based on Declaration of Actual Use
Form:
(1) Sec. 124.2
(2) Sec.145
(3) Those registered under RA 166
Declaration of actual use is required pursuant to Sec 124.2 for purposes
of registration and Sec 145, post-registration requirement, for purposes
of preserving the trademark
Section 145. Duration. - A certificate of registration shall remain in
force for ten (10) years: Provided, That the registrant shall file a
declaration of actual use and evidence to that effect, or shall show valid
reasons based on the existence of obstacles to such use, as prescribed
by the Regulations, within one (1) year from the fifth anniversary of the
date of the registration of the mark. Otherwise, the mark shall be
removed from the Register by the Office.
You are not guaranteed of 10 year period, you have to maintain your
mark. It doesn’t mean that if you register your mark, you stop using it
in commerce. You have to continuously use it in commerce.
Therefore, you file declaration of actual use according to Sec 124.2
within 3 years from the filing and for Sec 145 within 1 year from the fifth
anniversary of the date of registration of the mark. If you registered on
2010, you will have to file declaration of actual use within 1 year from
the fifth year. The fifth year in this case is 2015, and one year within
2015 is up to 2016.
Example: For Sec 145- Mark is registered in 2010, you file your
declaration of actual use in 2016.
As for those registered under RA 166, this is applicable for marks
registered prior to RA 8293. This is to maintain their marks either on
their tenth anniversary or fifteenth anniversary based on RA 166. This
reinforces the ruling of SC saying that old patent laws as well as other
prior IPL Laws were not superseded by RA 8293, except with respect to
provisions that are not inconsistent. Hence, those capable of being
harmonized subsist.
Question based on Declaration Actual Use Form:
What are other evidence of use?
Sir’s Answer: Sales Receipts or Vouchers. Fliers will not suffice. It is the
sale of the products that matters.
124.3. One (1) application may relate to several goods and/or services,
whether they belong to one (1) class or to several classes of the Nice
Classification.
124.4. If during the examination of the application, the Office finds
factual basis to reasonably doubt the veracity of any indication or
element in the application, it may require the applicant to submit
sufficient evidence to remove the doubt.
PRIORITY RIGHT
First to file rule as mentioned above.
What are the requirements to be accorded with a filing date?
Section 127. Filing Date. —
127.1. Requirements. — The filing date of an application shall be the
date on which the Office received the following indications and elements
in English or Filipino:
a. An express or implicit indication that the registration of a mark is
sought
b. The identity of the applicant
c. Indications sufficient to contact the applicant or his representative,
if any
d. A reproduction of the mark whose registration is sought, and
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e. The list of the goods or services for which the registration is sought.
127.2. No filing date shall be accorded until the required fee is paid.
Atty. Q: If you will not pay the filing fee, you will not be accorded
with a filing date.
Q: How much is the filing fee?
Answer: Based on the figures three years ago:
(1) Small entities - P1,080 per class.
Priority of right - addition P750
Color/Creative Distinctiveness - P500
(2) Big entities- P2,160 per class
Priority of right-additional P1,500
Color/Creative Distinctiveness- P750
Do you need to be registered in the SEC as a business to
register your trademark?
Answer: If you claim you are a juridical entity, there is a need for
registration. But if you’re a single proprietorship, there’s no need. If
you’re using a business name, apply to the DTI. But if you’re using
your own name as a distributor or retailer, there is no need for
registration.
Where will you file your application form?
Answer: Bureau of Trademarks, headed by Director of Trademarks.
Section 128. Single Registration for Goods and/or Services. -
Where goods and/or services belonging to several classes of the Nice
Classification have been included in one (1) application, such an
application shall result in one registration.
Atty. Q: This is why the form provides several spaces in the Trademark
Application form.
EXAMINATION STAGE
EXAMINATION STAGE
Atty. Q: Once the documents are received, it will be assigned to the
Examiner. He will conduct the formality examination phase. He sees to
it that all the documents/items mentioned in the law have been
obtained.
What are the items that must be considered in the substantive
examination?
If it complies with the elements of a mark- which is visible, distinctive,
and capable of registration.
Section 132. Application Number and Filing Date.
132.1. The Office shall examine whether the application satisfies the
requirements for the grant of a filing date as provided in Section 127
and Regulations relating thereto. If the application does not satisfy the
filing requirements, the Office shall notify the applicant who shall within
a period fixed by the Regulations complete or correct the application as
required, otherwise, the application shall be considered withdrawn.
132.2 Once an application meets the filing requirements of Section 127,
it shall be numbered in the sequential order, and the applicant shall be
informed of the application number and the filing date of the application
will be deemed to have been abandoned.
Section 133. Examination and Publication. –
133.1. Once the application meets the filing requirements of Section
127, the Office shall examine whether the application meets the
requirements of Section 124 and the mark as defined in Section 121 is
registrable under Section 123.
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133.2. Where the Office finds that the conditions referred to in
Subsection 133.1 are fulfilled, it shall upon payment of the prescribed
fee, forthwith cause the application, as filed, to be published in the
prescribed manner.
133.3. If after the examination, the applicant is not entitled to
registration for any reason, the Office shall advise the applicant thereof
and the reasons therefor. The applicant shall have a period of four (4)
months in which to reply or amend his application, which shall then be
re-examined. The Regulations shall determine the procedure for the re-
examination or revival of an application as well as the appeal to the
Director of Trademarks from any final action by the Examiner.
133.4. An abandoned application may be revived as a pending
application within three (3) months from the date of abandonment, upon
good cause shown and the payment of the required fee.
133.5. The final decision of refusal of the Director of Trademarks shall
be appealable to the Director General in accordance with the procedure
fixed by the Regulations. (Sec. 7, R.A. No. 166a)
PUBLICATION OR AMENDMENT
IF IT SATISFIES THE REQS, PUBLICATION OF APPLICATION
Once it has passed that stage, the examiner will cause the application
to be published in the IPO Official Gazette.
The purpose of the publication is to serve as notice to third parties who
stand to be prejudiced with their registration. So, this is to give
opportunity to third persons who may have interests in the pending
application.
IF NOT, OFFICE WILL ADVISE THE APPLICANT TO
REPLY/AMEND APPLICATION THEN RE-EXAMINATION
Atty Q: If it is denied, or it does not satisfy the requirements, 133.3
applies. The Office shall advise the applicant thereof and the reasons
therefor. The applicant will then be given 4 months to reply or amend
his application, which shall then be re-examined.
133.3. If after the examination, the applicant is not entitled to
registration for any reason, the Office shall advise the applicant thereof
and the reasons therefor. The applicant shall have a period of four (4)
months in which to reply or amend his application, which shall then be
re-examined.
The Regulations shall determine the procedure for the re-examination
or revival of an application as well as the appeal to the Director of
Trademarks from any final action by the Examiner.
NATURE OF TRADEMARK REGISTRATION PROCEEDINGS
What kind of proceedings is being adopted in the Registration
Procedure?
Answer: Refer to Rules and Regulations on Trademarks, Service Marks,
Trade names and Marked or Stamped Containers.
Rule 600 Application Prosecuted Ex Parte; Protests
An application for registration is prosecuted ex parte by the applicant;
that is, the proceedings are like a lawsuit in which there is a plaintiff
(the applicant) but no defendant, the court itself (the Examiner) acting
as the adverse party.
No attention shall be paid to ex parte statements or protests of persons
concerning pending applications to which they are not parties, unless
information of the pendency of these applications shall have been
voluntarily communicated by the applicants.
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Take note:
 Examiner is the opposing party. He does not have personal interests.
He is acting in behalf of the state.
 A person cannot intervene because it is ex parte. It is between the
applicant as the plaintiff and the examiner as the adverse party.
Rule 601 Proceedings a Contest between Examiner and the Applicant
An ex parte proceeding in the Office for the registration of a mark is a
law contest between the Examiner, representing the interest of the
public and the applicant (or his attorney), representing his own private
interests.
Rule 602 Applicant Supposed to Look after His Own Interests
The Office, represented by the Examiner, is not supposed to look after
the interest of an applicant. The law imposes that duty upon the
applicant himself. The Examiner is charged with the protection of the
interests of the public and hence must be vigilant to see that no
registration issues for a mark contrary to law and these Regulations.
Take Note:
1. It is an ex parte proceeding.
2. It is a law contest between the applicant and the examiner.
3. Third parties cannot intervene.
If there is denial, it is not a lost cause because he has within 4 months
to correct/amend any infirmities that the examiner has noticed. The
examiner’s denial should point out the failure to comply not just the
general statement that the application is denied with no ground because
it would deny him due process.
Rule 604 A Preliminary Rejection should not be taken literally;
Examiner is only trying to be helpful
A preliminary rejection by the Examiner is never to be taken literally. An
applicant should remember that the Examiner may not be actually
rejecting his application. The Examiner may in fact be quite prepared to
admit the application, and is only trying to give the applicant a chance
to explain away some reference or some difficulty rather than have him
wait until the registration is granted and become involved in a litigation,
when it may then be difficult for him to make the explanation.
Take note: The purpose really is to help him in drafting his application
to protect his interests. The examiner is actually trying to be helpful.
Example: The pending application for registration is for the mark, “Ang
Tibay”. And the examiner doubts that it is registrable because its first
impression is that it is descriptive. So, he is denying it and he is giving
the chance to explain why the mark should be registered. It is now your
chance to explain that it is only a coined arbitrary phrase. It does not
indicate any description/ characteristics of the goods.
It is merely a phrase of exclamation as a reaction for being satisfied with
the quality of the products being used. The re-examination will in fact,
strengthen your application.
What follows after being cured?
1. Draft of the application/registration.
2. Then, publication in the Official Gazette.
REMEDIES OF THE APPLICANT IF NOT CURED
133.5. The final decision of refusal of the Director of Trademarks shall
be appealable to the Director General in accordance with the procedure
fixed by the Regulations. (Sec. 7, R.A. No. 166a)
Atty. Q: It is the examiner who issues the order of denial, then,
opportunity to amend. If there’s no action from the applicant, the denial
will become final or notwithstanding the amendment, there is still denial,
then, he has the right to appeal the decision. He will elevate the matter
to Director of Trademarks, head of the Bureau. If still unfavorable to
him, then he will go to the Director General. Afterwards, if still
17 | U N I V E R S I T Y O F S A N C A R L O S
unfavorable, then he will go to the Court of Appeals, then, to the
Supreme Court.
OPPOSITION
OPPOSITION
As said before, publication is to notify third parties who may be affected
or whose rights might be prejudiced, probably, those that claim that the
mark is confusingly similar to theirs. Since the proceedings is ex parte,
the person prejudiced will not file an intervention in the proceedings. He
will file a separate action- a petition for denial or opposition to the
registration.
FILING OF OPPOSITION
Where does he file the opposition?
Sir’s answer:
A. RA 8293 says, IPO without specifics.
B. Regulations on Inter Partes Proceedings says – file it to the Bureau
of Legal Affairs headed by the Director of Legal Affairs and the
opposition will be assigned to a hearing opposite. It is now an
adversarial proceeding. Once the opposition is filed, a notice is
given to the applicant for him to be able to file his answer to allege
his counter-arguments to the grounds relied upon to the oppositor.
Section 134. Opposition.
Any person who believes that he would be damaged by the registration
of a mark may, upon payment of the required fee and within thirty (30)
days after the publication referred to in Subsection 133.2, file with the
Office an opposition to the application. Such opposition shall be in
writing and verified by the oppositor or by any person on his behalf who
knows the facts, and shall specify the grounds on which it is based and
include a statement of the facts relied upon. Copies of certificates of
registration of marks registered in other countries or other supporting
documents mentioned in the opposition shall be filed therewith, together
with the translation in English, if not in the English language.
For good cause shown and upon payment of the required surcharge, the
time for filing an opposition may be extended by the Director of Legal
Affairs, who shall notify the applicant of such extension. The Regulations
shall fix the maximum period of time within which to file the opposition.
(Sec. 8, R.A. No. 165a)
Regulations on inter partes proceedings
(Petitions for Cancellations of a Mark, Patent, Utility Model, Industrial
Design, Opposition to Registration of a Mark& Compulsory Licensing)
RULE 7 OPPOSITION TO APPLICATION FOR REGISTRATION OF
MARKS
Section 1
(a) Who may oppose -- Any person who believes that he would be
damaged by the registration of a mark may, upon payment of the
required fee and within one month after the publication of the
application, file with the Bureau a notice of opposition to the
application.
(b) Notice of opposition -- The notice of opposition shall be in writing
and verified by the opposer or any person on his behalf who
knows the facts, and shall specify the grounds on which it is based
and include a statement of the facts relied upon.
Possible grounds for opposition:
1. It is not registrable
2. It is confusingly similar to a previously registered mark or one who
has earlier filing date.
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Notice and hearing of opposition
Then, notice and hearing will follow. This is an adversarial and no longer
ex parte. It is a contest between the oppositor and the applicant for
registration, between private interests.
The following sections were mentioned by Sir to be included but were
not thoroughly discussed.
Section 2
(a) Notice and Hearing -- Upon the filing of an opposition and
payment of the required fee, the Bureau shall serve notice of the
filing on the applicant, and of the date of the hearing thereof upon
the applicant and the oppositor and all other persons having any
right, title or interest in the mark covered by the application, as
appear of record in the Office.
(b) Notice in case of unverified notice of opposition -- The Bureau
may notify the applicant of the fact of filing of an unverified
opposition. The applicant, after payment of the required fee, may
request for a copy of the unverified opposition.
(c) The notice to answer will be sent to the applicant/respondent
upon the filing of the verified opposition.
(d) Dismissal of opposition -- The opposition will be dismissed motu
propio upon failure of the opposer to verify, in person or by any
person on his behalf who knows the facts, the notice of opposition
within two months from date of filing of the unverified opposition.
Section 3 Contents of the Notice of Opposition
Copies of certificates of registration of marks registered in other
countries or other supporting documents mentioned in the opposition
shall be filed with the opposition together with the translation in English,
if not in the English language.
Section 4 Extension of Period for Filing the Verified Opposition
For good cause shown and upon payment of the required surcharge, the
time for filing the verified opposition may be extended for an additional
one month by the Director upon the written request of the opposer.
Whenever an extension is granted, the Director shall cause the applicant
to be notified thereof. The petition for extension shall be filed in
triplicate. However, in no case shall the period within which to file the
verified opposition exceed four months from the date of release of the
IPO Gazette publishing the mark being opposed. If the last day for filing
of the notice of opposition or the verified opposition falls on a Saturday,
Sunday, holiday, non-working holiday as may be declared by the
President of the Philippines or on a day when the Office or the Bureau
is closed for business as may be declared by the Director General, the
same shall be moved to the immediately following working day.
Section 5 Filing of an Opposition in a Form Other than the
Original
The party filing the opposition may submit an opposition in a form other
than the original such as a facsimile copy or photocopy provided: (1)
that such fax, photocopy or other form complies with the requirements
of these Regulations and is filed within the period to file the notice of
opposition or the verified opposition, or any extension thereof, (2) that
the original copy of the verified opposition is filed within one month from
submission of the fax, photocopy or other form and, (3) that the original
copy of the verified opposition is filed within the maximum period of four
months counted from the date of release of the IPO Gazette publishing
the mark being opposed. In all cases, the notice to answer shall be sent
to the applicant only upon the filing of the original copy of the verified
opposition.
REMEDY IF OPPOSITION IS DENIED
The decision of the examiner is appealable to the Director of Bureau of
Legal Affairs. Afterwards, to the Director General. Then, Court of
Appeals, then Supreme Court.
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ISSUANCE AND PUBLICATION OF CERTIFICATE OF REG
ISSUANCE AND PUBLICATION OF CERTIFICATE OF
REGISTRATION
When the decision of the Director of Legal Affairs has become final-
when he denies the opposition or the period of filing the opposition has
expired, remember that the oppositor has within 1 month to file after
publication, if he fails, then, the Office/Bureau of Trademarks upon
payment of the required fees shall issue the Certificate of Registration.
Section 136. Issuance and Publication of Certificate. –
When the period for filing the opposition has expired, or when the
Director of Legal Affairs shall have denied the opposition, the Office
upon payment of the required fee, shall issue the certificate of
registration. Upon issuance of a certificate of registration, notice thereof
making reference to the publication of the application shall be published
in the IPO Gazette. (Sec. 10, R.A. No. 165)
There are two publications:
1. The notice of registration
2. Certificate of registration
ISSUANCE OF CERTIFICATE TO HIS ASSIGNEE
137.3. A certificate of registration of a mark may be issued to the
assignee of the applicant: Provided, that the assignment is recorded in
the Office. In case of a change of ownership, the Office shall at the
written request signed by the owner, or his representative, or by the
new owner, or his representative and upon a proper showing and the
payment of the prescribed fee, issue to such assignee a new certificate
of registration of the said mark in the name of such assignee, and for
the unexpired part of the original period.
Atty. Q: Just like a copyright, it can be transferred or assigned.
DURATION OF REGISTRATION
DURATION OF REGISTRATION
Section 145. Duration. - A certificate of registration shall remain in
force for ten (10) years: Provided, That the registrant shall file a
declaration of actual use and evidence to that effect, or shall show valid
reasons based on the existence of obstacles to such use, as prescribed
by the Regulations, within one (1) year from the fifth anniversary of the
date of the registration of the mark. Otherwise, the mark shall be
removed from the Register by the Office. (Sec. 12, R.A. No. 166a)
Atty. Q: After 10 years, the registration expires. The trademark owner
can still use for the law allows for a renewal. Renewal of 10 years at its
expiration upon payment of the prescribed fee.
Question: How many renewals are allowed?
Answer: There’s no limit actually as long as you continually use the
mark.
Section 146. Renewal. –
146.1. A certificate of registration may be renewed for periods of ten
(10) years at its expiration upon payment of the prescribed fee and upon
filing of a request. The request shall contain the following indications:
(a) An indication that renewal is sought;
(b) The name and address of the registrant or his successor-in-
interest, hereafter referred to as the "right holder";
(c) The registration number of the registration concerned;
(d) The filing date of the application which resulted in the registration
concerned to be renewed;
(e) Where the right holder has a representative, the name and
address of that representative;
(f) The names of the recorded goods or services for which the
renewal is requested or the names of the recorded goods or
services for which the renewal is not requested, grouped
according to the classes of the Nice Classification to which that
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group of goods or services belongs and presented in the order of
the classes of the said Classification; and
(g) A signature by the right holder or his representative.
146.2. Such request shall be in Filipino or English and may be made at
any time within six (6) months before the expiration of the period for
which the registration was issued or renewed, or it may be made within
six (6) months after such expiration on payment of the additional fee
herein prescribed.
146.3. If the Office refuses to renew the registration, it shall notify the
registrant of his refusal and the reasons therefor.
146.4. An applicant for renewal not domiciled in the Philippines shall be
subject to and comply with the requirements of this Act. (Sec. 15, R.A.
No. 166a)
CERTIFICATE OF REGISTRATION
CERTIFICATE OF REGISTRATION
Section 138. Certificates of Registration. –
A certificate of registration of a mark shall be prima facie evidence of
the validity of the registration, the registrant's ownership of the mark,
and of the registrant's exclusive right to use the same in connection with
the goods or services and those that are related thereto specified in the
certificate. (Sec. 20, R.A. No. 165)
Atty. Q: Even if you’re the holder of a certificate of registration, this will
not give you absolute right over the mark because the law says that it
merely serves as a prima facie evidence.
Question: What are the matters that are presumed?
Answer:
(a) The validity of the registration
(b) The registrant’s ownership
(c) The exclusive right to use the same
These are merely disputable presumptions. The person who claims
invalidity has the burden of proof because presumption is in favor of the
person whose named is indicated in the certificate of registration.
DISCLAIMER
DISCLAIMER
Found in Trademark Application Form. No. 5, 4th Box.
The applicant does not claim the exclusive right to use the following.
Section 126. Disclaimers. –
The Office may allow or require the applicant to disclaim an
unregistrable component of an otherwise registrable mark but such
disclaimer shall not prejudice or affect the applicant's or owner's rights
then existing or thereafter arising in the disclaimed matter, nor such
shall disclaimer prejudice or affect the applicant's or owner's right on
another application of later date if the disclaimed matter became
distinctive of the applicant's or owner's goods, business or services.
(Sec. 13, R.A. No. 166a)
Atty Q:
It means that you’re allowed to include in your registration certain
components that are not registrable.
Example: San Miguel Pale Pilsen. You applied for registration the four
words. But there are certain components in the mark that cannot be
exclusively used, hence not registrable. The words Pale Pilsen are
descriptive words. There’s actually a bargain because the law allows
registration, but you must disclaim the components where you do not
claim exclusive right over this component.
What is the effect of disclaimer?
But such disclaimer shall not prejudice or affect the applicant's or
owner's rights then existing or thereafter arising in the disclaimed
matter, nor such shall disclaimer prejudice or affect the applicant's or
19 | U N I V E R S I T Y O F S A N C A R L O S
owner's right on another application of later date if the disclaimed matter
became distinctive of the applicant's or owner's goods, business or
services.
So, notwithstanding the disclaimer, it will not preclude you from claiming
ownership later on if it has acquired distinctiveness.
Sidemark on No 9 of the Trademark Application Form:
Type of Entity
 Big Entity- Total Assets: More than Php 100M
 Small Entity- Total Assets: Php 100M or less
COLLECTIVE MARK
COLLECTIVE MARK
121.2. "Collective mark" means any visible 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
services of different enterprises which use the sign under the control of
the registered owner of the collective mark.
Atty. Q: There are certain persons or entities claiming the rights over a
mark, which is used for distinguishing the origin or any other common
characteristic. A group or association can apply for registration of a
mark. No other person can use it without their authorization.
Example: Colgate is approved by Philippine Dental Association. They are
allowed to use their collective mark because this will increase their
marketability. A collective mark is also helpful in the sale of products
because there is a stamp of approval with regard to the quality and
integrity.
RIGHTS CONFERRED AFTER REGISTRATION OF A MARK
RIGHTS CONFERRED AFTER REGISTRATION OF THE MARK
What are the rights conferred after the registration of the
mark?
SECTION 147. Right Conferred — 147.1. The owner of a registered
mark shall have the exclusive right to prevent all third parties not having
the owner's consent from using in the course of trade identical or similar
signs or containers for goods or services which are identical or similar
to those in respect of which the trademark is registered where such use
would result in a likelihood of confusion. In case of the use of an identical
sign for identical goods or services, a likelihood of confusion shall be
presumed.
When you file a case in court, you should have a cause of action. One
of the elements of a cause of action is the existence of such right, that
is the subject matter of the case. This is where you indicate in your
complaint, the right of the trademark owner which is the exclusive right
to prevent all third parties from the use of similar or identical signs.
TN: that if there is the use of identical signs for identical goods and
services, the likelihood of confusion shall be presumed. There is now a
presumption of a violation of such right which is the likelihood of
confusion.
However, there shall be no infringements of trademarks or trade names
of the purported sold patented drugs and medicines. TN: that this only
covers drugs and medicines. The act of importation will not be
considered as violative of the exclusive right of the trademark owner.
Provided, that said drugs and medicines bear the registered marks that
have not been tampered, unlawfully modified or infringed under section
155 of this Code. This is the only limitation to the right of the trademark
owner, the act of importation.
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If you recall, with respect to well-known marks under subsection 123.1.
Well-known marks that are registered in the Philippines, shall extend to
goods and services which are not similar to those in respect of which
the mark is registered: Provided, That use of that mark in relation to
those goods or services would indicate a connection between those
goods or services and the owner of the registered mark: Provided,
further, That the interests of the owner of the registered mark are likely
to be damaged by such use.
This is emphasized in Sec. 147.2 that even with respect to goods which
are not identical, not even related, that if a mark is well-known, that is
registered, its protection shall extend even to those goods and services
not related. However, you must establish a connection between that
mark of the registered owner and that mark that is considered as
identical or there is a likelihood of confusion.
SECTION 148. Use of Indications by Third Parties for Purposes Other
than those for which the Mark is Used. — Registration of the mark shall
not confer on the registered owner the right to preclude third parties
from using bona fide their names, addresses, pseudonyms, a
geographical name, or exact indications concerning the kind, quality,
quantity, destination, value, place of origin, or time of production or of
supply, of their goods or services: Provided, That 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 services
Section 148 also indicates that even if you are the owner of a registered
mark, it will not extend to those marks that has been used by others as
using bona fide their names, addresses, pseudonyms, or exact
indications concerning the kind, quality, quantity, destination, value,
place of origin, or time of production or of supply, of their goods or
services: Provided, That 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 services.
This provide a limitation on the right of a registered owner of the
registered mark. You cannot prevent others from using identical mark
considering there is basis for such use. Examining closely section 148, it
appears that someone having a surname of McDonalds can use it for his
restaurant business. So, he can point out section 148 because the law
does not distinguish whether it is a well-known or popular mark for as
long as you can justify its use.
SECTION 149. Assignment and Transfer of Application of Registration.
149.1. An application for registration of a mark, or its registration, may
be assigned or transferred with or without the transfer of the business
using the mark. (n)
149.2. Such assignment or transfer shall, however, be null and void if it
is liable to mislead the public, particularly as regards the nature, source,
manufacturing process, characteristics, or suitability for their purpose,
of the goods or services to which the mark is applied.
149.3. The assignment of the application for registration of a mark, or
of its registration, shall be in writing and require the signatures of the
contracting parties. Transfers by mergers or other forms of succession
may be made by any document supporting such transfer.
149.4. Assignments and transfers of registrations of marks shall be
recorded at the Office on payment of the prescribed fee; assignment
and transfers of applications for registration shall, on payment of the
same fee, be provisionally recorded, and the mark, when registered,
shall be in the name of the assignee or transferee.
149.5. Assignments and transfers shall have no effect against third
parties until they are recorded at the Office. But is nevertheless binding
between the parties.
Just like the law on copyright, there is a property right that can be
assigned or transferred may it be an application for registration of a
mark or if it has already been issued, the registration itself, may be
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assigned or transferred with or without the transfer of the business using
the mark.
The owner of a registered mark also has a right to issue licenses
especially if it is incorporated in a franchise agreement.
SECTION 150. License Contracts. — 150.1. Any license contract
concerning the registration of a mark, or an application therefor, shall
provide for effective control by the licensor of the quality of the goods
or services of the licensee in connection with which the mark is used. If
the license contract does not provide for such quality control, or if such
quality control is not effectively carried out, the license contract shall not
be valid.
150.2. A license contract shall be submitted to the Office which shall
keep its contents confidential but shall record it and publish a reference
thereto. A license contract shall have no effect against third parties until
such recording is effected. The Regulations shall fix the procedure for
the recording of the license contract.
Sections 149 and 150 refers to transactions involving registration, may
be a subject matter of an assignment or transfer, or license. A registered
owner has a right to convey his rights through assignment or license.
TN: that in license, there is no transfer of ownership but only an
authority given to another person to use the registered mark and it will
prevent any liability in case of use.
The right of a mark is conferred through registration but essentially, the
right is based on use than ownership. That’s why, even after
registration, you have to perform post-registration requirements. This is
what is known as “Maintenance of right to a mark”. Failure to do so will
result to cancellation. Even if you are issued a certificate registration, it
does not mean that you have the absolute right over the mark, it is not
guaranteed because it is still subject to an attack unlike your certificate
of title which becomes indefeasible. With respect to trademark
registration, it is still susceptible for cancellation as provided for in
section 151.
Where will you file a petition to cancel a trademark?
Bureau of Legal Affairs
SECTION 151. Cancellation. — 151.1. A petition to cancel a registration
of a mark under this Act may be filed with the Bureau of Legal Affairs
by any person who believes that he is or will be damaged by the
registration of a mark under this Act as follows:
(a)Within five (5) years from the date of the registration of the mark
under this Act.
Atty. Q: Any ground as long as it made within five years
(b) At any time, if:
1. The registered mark becomes the generic name for the goods or
services, or a portion thereof, for which it is registered, or
Atty. Q: A distinctive mark becomes generic or has lost its
distinctiveness
2. Has been abandoned, or its registration was obtained fraudulently
or contrary to the provisions of this Act, or if the registered mark
is being used by, or with the permission of, the registrant so as to
misrepresent the source of the goods or services on or in
connection with which the mark is used.
Grounds for Cancellation
1. Registered mark becomes generic name for goods or services
2. Mark has been abandoned
3. Registration was obtained fraudulently or contrary to the provisions
of this Act
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4. Registered mark is being used by or with permission of, the
registrant so as to misrepresent the source of the goods or services
on or in connection with which the mark is used
Partial cancellation
If the registered mark becomes the generic name for less than all of the
goods or services for which it is registered, a petition to cancel the
registration for only those goods or services may be filed.
A registered mark shall not be deemed to be the generic name of goods
or services solely because such mark is also used as a name of or to
identify a unique product or service. The primary significance of the
registered mark to the relevant public rather than purchaser motivation
shall be the test for determining whether the registered mark has
become the generic name of goods or services on or in connection with
which it has been used.
(c) At any time, if the registered owner of the mark without legitimate
reason fails to use the mark within the Philippines, or to cause it to be
used in the Philippines by virtue of a license during an uninterrupted
period of three (3) years or longer.
Atty. Q: This is the reason why the registered owner is required to
submit a declaration of actual use, after registration, within one year
after the 5th anniversary to prove that you have continuously used your
mark.
Bata Industries v. CA
Facts: Private Respondent New Olympian Rubber Products Co., Inc.
sought the registration of the mark BATA for casual rubber shoes before
the Philippine Patent Office. Petitioner, a Canadian corporation, opposed
the registration alleging that it owns and has not abandoned the
trademark BATA. However, and as stipulated by both parties, petitioner
has no license to do business in the Philippines. It is not selling footwear
under the trademark BATA in the Philippines, and it has no licensing
agreement with any local entity of firm to sell its products in the
Philippines.
The Philippine Patent Office dismissed the opposition and ordered the
registration of the trademark BATA in favor of Private Respondent. It
propounded that while petitioner may have sold BATA footwear until
1948, the trademark was never registered and it has, to all intents and
purposes, technically abandoned its trademark BATA in the Philippines.
Petitioner appealed before the CA which reversed the decision of the
Philippine Patent Office. However, upon motion for reconsideration, CA
reversed the decision and upheld the finding of the Philippine Patent
Office.
Issue: Does the petitioner have the right to protect its goodwill alleged
to be threatened with the registration of the mark?
Ruling: No. Bata Industries has no Philippine goodwill that would be
damaged by the registration of the mark. Any slight goodwill obtained
by the product before the World War II was completely abandoned and
lost in the more than 35 years that passed since Manila’s liberation from
Japan. The petitioner never used the trademark either before or after
the war.
Atty. Quirante: It has been observed that it has been long abandoned
by the owners of the trademark of Bata that was pertaining to shoes,
being sold to the Philippine prior to World War II until 1948. It is
considered as having been abandoned for a really long period of time.
There is no basis for the opposition because as it appears, it is the
applicant who is responsible for popularizing the trademark “Bata”.
PROCEDURAL MATTERS
Section 151.2 talks about procedural matters.
What is the effect of the pendency of a cancellation proceeding filed
before the BLA to a subsequently filed infringement case in the regular
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court? On the other hand, what is the effect of filing a cancellation
proceeding subsequent to a filing of an infringement case in the regular
courts?
151.2. Notwithstanding the foregoing provisions, the court or the
administrative agency vested with jurisdiction to hear and adjudicate
any action to enforce the rights to a registered mark shall likewise
exercise jurisdiction to determine whether the registration of said mark
may be cancelled in accordance with this Act. The filing of a suit to
enforce the registered mark with the proper court or agency shall
exclude any other court or agency from assuming jurisdiction over a
subsequently filed petition to cancel the same mark. On the other hand,
the earlier filing of petition to cancel the mark with the Bureau of Legal
Affairs shall not constitute a prejudicial question that must be resolved
before an action to enforce the rights to same registered mark may be
decided.
Shangri-la int’l hotel mgt. v. CA
Simply put, the issue in this case is whether or not the subsequently
filed compliant before the regular courts be suspended owing to the
pendency of an administrative complaint before the BPTT. This was filed
before RA 8293 so the Bureau that has jurisdiction was the BLA for
cancellation proceedings. A cancellation and an infringement suit may
continue separately, provided that the cancellation case was filed before
the infringement case. The Court ruled that there is no basis for
suspension. Same will not constitute a prejudicial question to the
infringement suit filed before the courts.
What happens if it was the other way around?
The infringement case was filed earlier than the petition for cancellation?
The 2nd sentence of section 151.2 states “The filing of a suit to enforce
the registered mark with the proper court or agency shall exclude any
other court or agency from assuming jurisdiction over a subsequently
filed petition to cancel the same mark.”
So if Shangri-la filed a petition for cancellation before the BLA, BLA will
dismiss the petition. The same happened in the case of Conrad v. CA.
Condrad and Company v CA
The Court explained why it will not prevent from assuming jurisdiction,
even if there was a pending administrative case. The Court said that, an
administrative cancellation of a registered trademark cannot per se have
the effect of restraining or preventing the Courts from the exercise of
their lawfully conferred jurisdiction. A contrary rule will unduly expand
the Doctrine of Primary Jurisdiction which simply expressed would
merely remove regular courts in controversies involving specialized
disputed to defer to the findings of administrative tribunals on certain
technical matters.
The law confers jurisdiction on administrative courts based on its
primary jurisdiction. It will not prevent them from assuming jurisdiction
on the ground that there is a pending administrative case. However,
when it has assumed jurisdiction, no other court or agency can assume
jurisdiction.
What do you think is the reason?
It is a matter of defense on the part of the defendant in the infringement
case if he considers the certificate as subject for cancellation as there is
sufficient ground to cancel. It will now be one of the issues that must
be resolved before the trial court – whether or not there is ground or
basis for cancellation.
Prosource Inc. v. Horphag Research
Elements of Infringement under RA 8293:
(1) The trademark being infringed is registered in the Intellectual
Property Office; however, in infringement of trade name, the
same need not be registered.
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(2) The trademark or trade name is reproduced, counterfeited,
copied, or colorably imitated by the infringer.
(3) The infringing mark or trade name is used in connection with the
sale, offering for sale, or advertising of any goods, business or
services; or the infringing mark or trade name is applied to labels,
signs, prints, packages, wrappers, receptacles or advertisements
intended to be used upon or in connection with such goods,
business or services.
(4) The use or application of the infringing mark or trade name is
likely to cause confusion or mistake or to deceive purchasers or
others as to the goods or services themselves or as to the source
or origin of such goods or services or the identity of such business;
and (5) It is without the consent of the trademark or trade name
owner or the assignee thereof.
Atty Q: This is the first time that the Supreme Court gave us the
elements of the act of infringement under RA 8293 as is also defined in
section 155.
SECTION 155. Remedies; Infringement. — Any person who shall,
without the consent of the owner of the registered mark:
155.1. Use in commerce any reproduction, counterfeit, copy, or
colorable imitation of a registered mark or the same container or a
dominant feature thereof in connection with the sale, offering for sale,
distribution, advertising of any goods or services including other
preparatory steps necessary to carry out the sale of any goods or
services on or in connection with which such use is likely to cause
confusion, or to cause mistake, or to deceive; or
155.2. 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,
wrappers, receptacles or advertisements intended to be used in
commerce upon or in connection with the sale, offering for sale,
distribution, or advertising of goods or services on or in connection with
which such use is likely to cause confusion, or to cause mistake, or to
deceive, shall be liable in a civil action for infringement by the registrant
for the remedies hereinafter set forth: Provided , That the infringement
takes place at the moment any of the acts stated in Subsection 155.1 or
this subsection are committed regardless of whether there is actual sale
of goods or services using the infringing material.
Par.1 talks about the act using the mark in commerce. Par. 2 talks about
the act of reproduction, counterfeiting, or colorably imitating a
registered mark or a dominant feature thereof. This is mentioned in item
no. 2 in the enumeration in the case of Prosource v. Horphag.
REMEDIES AVAILABLE IN AN ACTION FOR INFRINGEMENT
What are the remedies available in an action for infringement?
First is the right of the owner to recover damages from the person who
infringes on his right.
How do we compute damages?
(either of the three)
1. It will be based on the discretion of the Honorable court in
determining damages and the measure of the damage shall be
either the reasonable profit which the complaining party might
make had the defendant not infringed his right
2. The profit which the defendant actually made out of the
infringement
3. In the event such measure of damage cannot be readily
ascertained with reasonable certainty, then the court may award
as damages a reasonable percentage based upon the amount of
gross sales of the defendant or the value of the services in
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connection in which the mark or trade name was used in the
infringement of the rights of the complaining party.
That’s why evidence proving the amount of damage incurred by the
plaintiff is very relevant in an infringement suit. One of the evidence that
can be presented is loss of profit or opportunity to earn.
It can be proven in a lot of ways and it is on the discretion of the court
in determining the amount of damages that it has suffered. Aside from
the claim for damages, the complainant may also ask the court to
impound, during the pendency of the action, sales, invoices and other
documents evidencing sales in connection with proving the amount of
damages that may be claimed by the plaintiff.
If intent to mislead the public is proven or to defraud the complainant
is shown, damages may be doubled at the discretion of the court.
The relief of injunction is also granted if the circumstances would
warrant such.
LIMITATIONS TO ACTIONS FOR INFRINGEMENT
LIMITATIONS TO ACTIONS FOR INFRINGEMENT
SEC 159. Limitations to actions for infringement. Notwithstanding any
other provision of this act, the remedies given to the owner of a right
infringed under this Act shall be limited as follows:
1. Prior user in good faith. A registered mark shall have no effect
against any person who in good faith before the filing date or the priority
date was using the mark for the purposes of his business or enterprise.
Provided, that his right may only be transferred or assigned together
with his enterprise or business or with that part of his enterprise or
business in which the mark is used.
This talks about a prior user in good faith, if he has used the mark prior
to registration. In good faith which means that he does not have any
knowledge unlike in the case of Shangri-La.
Shangri-La Hotel Management v. CA
Facts: Developers Group of Companies used Shangri-La’s mark. It was
earlier registered by DGC as Shangri-La did not register its mark.
Held: SC ruled that the DGC has no right over the Shangri-La mark
because of the bad faith on the part of the registrant. It was established
that he has learned of the Shangri-La chain of hotels because of the
several trips that he made abroad and did not deny the fact that
whenever he is in Hong Kong or Singapore, he checks in at Shangri-la.
SC said that he cannot be considered as a user in good faith. And what
is so unique about this case is that it applied the provision of RA 8293
which states that a mark although not registered (Shangri-La’s mark), if
it is a well-known mark, it has a basis for the protection.
How can you establish the fact that the name Shangri-La
originated from the owners of the Shangri-La hotel?
SC said you cannot file an infringement case against the person who is
the originator and owner of the mark because that would result in
absurdity.
2. Innocent infringer. Where an infringer who is engaged solely in the
business of printing the mark or other infringing materials for others is
an innocent infringer, the owner of the right infringed shall be entitled
as against such infringer only to an injunction against future printing.
The action available to the owner of a registered mark against a person
who is solely engaged in the business of printing the mark is only an
action for injunction, he has no right to claim for damages and other
relief provided under Sec 156.
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3. Extent of the injunctive relief. Where the infringement
complained of is contained in or is part of paid advertisement in a
newspaper, magazine, or other similar periodical or in an electronic
communication, the remedies of the owner of the right infringed as
against the publisher or distributor of such newspaper, magazine, or
other similar periodical or electronic communication shall be limited to
an injunction against the presentation of such advertising matter in
future issues only. With respect to publication that were already
published or released, no injunction could cover.
Additional Limit:
The limitation that we mentioned earlier, with respect to imported drugs
of medicines under Sec 79.1, there can be no infringement case that
can filed.
RIGHT OF FOREIGN CORP TO SUE
RIGHT OF FOREIGN CORP TO SUE
Section 160. Right of Foreign Corporation to Sue in Trademark or
Service Mark Enforcement Action. - Any foreign national or juridical
person who meets the requirements of Section 3 of this Act and does
not engage in business in the Philippines may bring a civil or
administrative action hereunder for opposition, cancellation,
infringement, unfair competition, or false designation of origin and false
description, whether or not it is licensed to do business in the Philippines
under existing laws.
A foreign corporation, even if it’s not licensed to do business in the
Philippines for as long as he meets the requirements of Section 3 of this
Act (national of a country which is a party to an int’l agreement xxx) can
sue before the Philippine courts. BUT this does not mean that he can
enforce his right over a trademark that is not registered here in the
Philippines. There is still a condition before you can have the personality
to sue here in the Philippines – he MUST be the OWNER OF A
REGISTERED MARK because we follow the principle of territoriality. Must
comply with the requirements in the Philippines
General rule: You cannot enforce your right if your mark is not
registered.
Exception: If your mark is well-known.
Leviton Industries v. Salvador
Facts: Private respondent Leviton Manufacturing Co. Inc. filed a
complaint for unfair competition and preliminary injunction with prayer
for damages against petitioners Leviton Industries. The latter used the
trademark Leviton in its products which belongs to the former. Leviton
Manufacturing Co. is a foreign corporation.
Issues: Whether Leviton Industries has a legal capacity to sue, being a
foreign company.
Held: No. While it is true that our laws provide that foreign corporations
may seek redress for unfair competition, such has qualifications. The
trademark law provides that in order for a foreign corporation to have a
legal capacity to sue, it must be shown that the trademark is actually
registered, if not, it must at least be an assignee of a right of a trademark
(Sec 21-A). The Rules of Court also provides that capacity to sue must
be specifically be alleged in the complaint. Leviton Manufacturing
Company has failed to show its legal capacity to sue because it failed to
comply with the requirements set forth in Sec 21-A of the Trademark
Law as Leviton did not register its mark in the Philippines.
The SC also pointed out that, “We acknowledge that our laws allow
foreigners not doing business in the Philippines in our courts, but must
also comply with the requirements under the law. You cannot enforce
your right unless it is registered EXCEPT when the mark is well known.”
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General Garments v. Director of Patents
Facts: General Garments is engaged in the business of selling garments
and he wanted to register his trademark, Puritan. There was this foreign
corporation who opposed the registration claiming that they own the
trademark Puritan and the former is also engaged in the same business
of selling garments.
General Garments contended that the foreign corporation has no
standing to sue in the Philippines.
Issue: Whether a foreign corporation has a capacity to sue before the
Philippine courts?
Held: A foreign corporation even if such is not registered to do business
in the Philippines can sue before the Philippine courts if the trademark
is well-known. In the instant case, Puritan, is well-known in the
Philippines even if it is owned by a foreign corporation. Thus, they have
the capacity to sue.
What particular provision pertains to the argument that it is a
well-known mark?
Sec 17-C and in relation to Sec 4-D of the Trademark Law provide that
a foreign corporation which has never done business in the Philippine
Islands and which is unlicensed and unregistered to do business here,
but is widely and favorably known in the Islands through the use therein
of its products bearing its corporate and trade name has a legal right to
maintain an action in the Islands.
Another basis for the court in allowing a foreign corp. to
maintain an action here in the Philippines?
As per the deliberation of the Congress in relation to Sec 37 of the Law
provides that even if the country to which the corporation is a citizen to
does not have a treaty with the Philippines regarding intellectual
property rights but grants similar rights to Philippine corporations or
individuals in the foreign country, then that foreign corporation may
maintain an action in the Philippines.
The Court also indicated that in any event, the suit that is contemplated
in Sec 21-A is a suit cognizable by regular courts. The one that is filed
in this case is a petition for cancellation which is of a different nature
compared to a suit for unfair competition unlike in the case of Leviton.
In the case of Leviton, SC said that a foreign corporation can sue as long
as it complies with the requirements unless if it’s well-known. But in this
case, the proceedings involved here is cancellation which is different
from a complaint for unfair competition. What is within the purview of
Sec 21-A is a case filed in the regular courts.
In this case, it is an administrative proceeding pending before the Patent
Office. While a suit under Sec 21-A (presently Sec 160) requires that a
mark or trade name alleged to have been infringed has been registered
or assigned to the suing corp., a suit for the cancellation of the
registration of a mark or trade name under Sec 17 has no such
requirement.
What requirement are we talking about?
Requirement of registration.
Take note
The court is saying that when a foreign corp. decides to file a case in
court, it must comply with Sec 160 that it must also be a registrant
EXCEPT if it is a well-known mark. However, if it is only filing a petition
for cancellation or a petition for opposition or if it is in the nature of an
administrative proceeding, the requirement that it should be a registrant
may be dispensed with.
Sec 168. Unfair Competition, Rights, Regulation and Remedies. - 168.1.
A person who has identified in the mind of the public the goods he
manufactures or deals in, his business or services from those of others,
whether or not a registered mark is employed, has a property right in
the goodwill of the said goods, business or services so identified, which
will be protected in the same manner as other property rights.
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Del Monte v. CA But the Supreme Court stated that there was basis due to the fact that
SC compared an action for infringement to that of an unfair competition. a search warrant was already issued on the basis of probable cause. It
was just that the unfair competition suit was not able to overcome the
Infringement Unfair Competition demurrer and it was not able to prove beyond reasonable doubt.

Passing off one’s goods as that of
another. Not only limited to imitating
the mark, it also extends to the
Unauthorized use of a packaging, container, manner of
trademark presentation. It covers a wide range
of acts. Intent is to ride on the
popularity of another brand
Fraudulent intent is not There MUST be fraudulent intent
necessary (Fraudulent intent must be proved)
Malum prohibitum
Prior registration is not necessary.
The mark need not be registered,
what is important is that the
There must be prior aggrieved party has established a
registration of a trademark. good business reputation, otherwise
The mark must be there won’t be any use for
registered committing unfair competition
because the point of the latter is to
ride on that good business
reputation
In the criminal case, there was merely doubt regarding the ownership
of the trademark so it was acquitted based on that. Therefore there was
no malice since there was indeed basis due to the search warrant.
However, the civil case for unfair competition prospered since a lower
threshold was needed. Just because sale was not proven, it does not
mean that Sehwani and Universal are not guilty of unfair competition in
a civil case. The SC said that even the person who is offering the item
for sale is made liable for unfair competition, with more reason that the
manufacturer is made liable because the intent to deceive or mislead is
existing.
Unfair competition covers a lot of acts and it is not only limited to selling.
It includes acts in preparation for sale, which includes manufacturing.
There was evidence to show that there was really malice in the part of
Sehwani because prior to the application for registration of a trademark,
a search warrant has already been served and probable cause was
present. Clearly, the act of filing an application was a mere afterthought.
The SC, citing a US case, said that the test of unfair competition is
whether certain goods have been intentionally clothed with an
appearance which is likely to deceive ordinary purchasers exercising
ordinary care. It was observed that Sehwani and Universal
manufactured such products to deceive the would-be buyers.

PATENTS, UTILITY MODELS AND INDUSTRIAL DESIGNS

Pro Line Sports Center vs CA
Facts: This is a case for unfair competition filed by Pro line, the
distributor of Spalding balls owned by Questor against Monico Sehwani,
the President of Universal Athletics Industrial Products, Inc., a domestic
corp. engaged in selling sports equipment.
Sehwani admitted to manufacturing Spalding balls but he stressed that
it was only for the requirement of trademark registration with Philippine
Patent Office; use of the mark for 60 days prior to the filing of the
trademark application is required. He further alleged that the elements
of unfair competition are wanting in this case specifically, the selling of
the products. The lower court ruled in favor of Sehwani based on
demurrer to evidence
Now this time, Sehwani and Universal filed a civil case for damages
against Pro Line and Questor on the ground of wrongful and malicious
filing of the criminal action for unfair competition against them, saying
there was absolutely no basis for the unfair competition suit. However,
Pro Line and Questor filed a counterclaim for damages on the ground of
unfair competition, this time as a civil case.
Issue: Whether selling is a requisite for unfair competition.
Held: No. SC said that selling is not a requisite for unfair competition.
Questor et al won.
What constitutes acts of unfair competition, if it’s not only
limited to the act of selling?
The reason why the court discussed what constitutes unfair competition
stemmed from the cause of action for malicious prosecution filed by
Sehwani against Pro Line and Questor. Sehwani said that owing to the
dismissal of the unfair competition suit, he could file a damage suit
against Proline and Questor because the court found that he was not
guilty of unfair competition as a criminal act. But the SC said that it was
unfortunate that the unfair competition was not upheld as it was
dismissed by virtue of a demurrer and did not prove guilt beyond
reasonable doubt. Now Sehwani was saying that there was no basis at
all for filing the infringement case and therefore he should be given
damages.
24 | U N I V E R S I T Y O F S A N C A R L O S
PATENTABLE INVENTIONS
PATENTABLE INVENTIONS
Patentable Inventions – Sec. 21
Any technical solution of a problem in any field of human activity which
is new, involves an inventive step and is industrially applicable shall be
Patentable. It may be, or may relate to, a product, or process, or an
improvement of any of the foregoing.
What are patentable inventions?
1. Inventions
2. Utility models and
3. Industrial designs.
It’s very important to understand the definition under Sec. 21 because
the definition also provides the 3 elements of patentability.
3 elements of patentability
1. Novelty
2. Inventiveness or inventive step
3. Industrial applicability
Protection in Copyright is given upon creation. Protection in Patent like
Trademark only given upon registration. But unlike in trademark, the
rules on patent registration of inventions are more strict, stringent and
more rigid.
Atty. Quirante: In keeping with state policy under sec. 2 of the law, it
is important that the state, to promote the general welfare, should build
its efforts in encouraging inventors or persons in the filled of art to share
their knowledge. That is what the state should do diffusion of knowledge
but as a concession in encouraging scientists, inventors and technical
persons to share their knowledge the state must also afford protection.
That’s why the state should maintain a sound patent system.
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SOUND PATENT SYSTEM INVENTOR

SOUND PATENT SYSTEM INVENTOR
System that is acceptable all over the world considering that we live in Section 25.2 – Any person who, at the filing date of application, who
a global community, as what we have discussed in Tanada v Angara has the right to the patent.
case. The Philippine should not allow itself to be a haven for piracy or
any acts in violation of the important intellectual property rights. SECTION 28. Right to a Patent. — The right to a patent belongs to the
inventor, his heirs, or assigns. When two (2) or more persons have
An inventor even if a non-citizen will have confidence in the Philippine jointly made an invention, the right to a patent shall belong to them
gov’t and state to share his important knowledge or information because jointly. (Sec. 10, R.A. No. 165a)
he is assured of adequate protection. That is the hallmark of an effective
sound patent system. Like in the USA and European nations (patents 3 ELEMENTS OF PATENTABILITY
are adequately protected).
3 ELEMENTS OF PATENTABILITY
Philippine government must encourage inventor to apply patent. We These elements are the subject of examination when applying for a
presently enjoy the technology, benefits, convenience of the inventions patent.
that were created a long time ago. It was presented, offered, shared to
1. Novelty
the public but in sharing the inventors are confident that their private
2. Inventiveness or inventive step
rights are protected.
3. Industrial applicability
Private Right of an inventor
Is the patent the document itself?
Right to the monetary return, exclusive right to monopolize their
Yes. The document evidencing the right to the patent is referred to as
invention on the other hand since the state promotes and encourages
Letters to patent.
diffusion of knowledge it would also allow others to work on the
invention so that the invention can be improved. Most inventions
Definition also talks about the coverage. What does patentable
nowadays are improvements of past inventions, old technologies.
invention cover?
If the inventor of the telephone not confident his right will be protected, 1. Products
he will not be encouraged to publicly promote his product cause 2. Process
susceptible of piracy. 3. Improvement of product or process

Dual purpose of patent- Full protection of individual rights and same PRIOR ART OR STATE OF THE ART
time diffusion of knowledge. Criteria to judge if patent system is
effective. PRIOR ART OF STATE OF THE ART
If you create something based on a known technology it is more
Limited period of protection (20 years) commonly known as Prior Art or State of the art.
Right to monopolize inventions is only for limited period unlike in
copyright during lifetime and 50 years thereafter. When we refer to present technology in a given field like science we
refer to it as state of the art. It can be patentable either as product
Period allowed by law for the owner of the patent to exploit and patent, referring to an object or useful machine. Or a patent may cover
monopolize the use of the invention is only for 20 YEARS. After that it a process. A process is a procedure, system, scheme.
belongs to the public domain.
If there is a new method of producing a product but the product is
Reason: It would be an available platform for new inventions. Future already forming part of the state of the art meaning already present in
inventors will have no second thought in using it as platforms for they the technology. The one covered by patent is not the product but the
are assured their rights are protected. One indicator of sound patent process, the procedure.
system is that there is Limited period of protection.
If the new process creates a new product then you have two inventions
Full disclosure means that the inventor must provide ALL information and two separate patents. One for the process and another for the
pertaining to his invention. It is a requisite because prior to registration product.
it has to undergo certain examinations.
However, present technology or state of the art can also be improved
One element of patentability is industrial applicability; it means it must from time to time. Like a new generation of cell phone gadgets. Certain
be carried out in practice not only theoretical. Who can carry out? features that is considered as improvement of the process or product,
Inventors and interested persons who are practitioners in their field. also covered in patent registration.
How can he carry out if he does not have access to all information?
Aside from the 3, one that is not included under Section 21 but is also
Indicators of sound patent system: covered by patent as indicated from the rules (Patent regulations) is
1. Full protection of individual rights and at the same time diffusion provided in Rule 2.1 It is a refinement because product is not specific
of knowledge enough, the rules provided for 5 classes of inventions.
2. Limited period of protection
3. Full Disclosure Rule 2.1 Rules implementing inventions:
Six classes of inventions
Philippine inventors have second thoughts in registering because they 1. Useful machine
are required to have full disclosure. They are afraid their invention will 2. Product
be pirated. They don’t have faith in the patent system of the Philippines. 3. Process
If inventors don’t have confidence in the system then the public is 4. Improvement of any of the foregoing
greatly prejudiced. They could have benefited from this invention. 5. Micro organisms
6. Process of creating microorganisms non-biological or
microbiological processes

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PATENTABLE INVENTIONS
PATENTABLE INVENTIONS
Patentable Inventions – Sec. 21
Any technical solution of a problem in any field of human activity which
is new, involves an inventive step and is industrially applicable shall be
Patentable. It may be, or may relate to, a product, or process, or an
improvement of any of the foregoing.
Technical solution
When you find a contribution to the art it must be a new technique,
something that is practical and useful. That is how you classify a
technical solution.
Solution
Therefore there must be a problem. The purpose of invention is to solve
a problem. If the invention does not solve a problem then it is not
patentable.
Purely aesthetic creations is not within the field of patent but can be
classified as literary or artistic work. It falls under copyright. Create
something not considered technical but purely aesthetic like painting or
sculpture you did not create a solution to the problem. So they can’t be
patentable to avoid confusion of copyright and patent. Pearl and Dean
case, SC identified areas as separate and distinct.
Certain creations are aesthetic by nature but some has technical
features. If the design has some technical purpose then it can be
covered under the law on patents. That is why both protection on
copyright if aesthetic then law on patents for technical features. E.g.
growth of rubber tire. Aesthetic –design car, Technical feature- tension
tire to surface.
What does technical solution of a problem in any field of human
activity means?
It does not only refer to the sciences but also other fields. It also covers
field of performance.
Example: Michael Jackson for his specialize shoes. He can defy gravity,
shoes allow him to lean forward and backward without falling. Under US
Patent.
Is it useful? Yes because any field of human activity. Not to you but to
him it is. See US patent # 5255452 (method and means in creating anti
gravity illusion) together with the shoes is the platform to lock the shoes.
NOVELTY
NOVELTY
Novelty – Sec. 23 -An invention shall not be considered new if it forms
part of a prior art.
Novelty or newness is important in patent unlike in copyright. It is the
1st requirement. It must be a new invention. Not considered new if it
forms part of the prior art.
Prior art
Means present state of the art, the technologies available.
Prior Art – Sec. 24
Prior art shall consist of:
24.1. Everything which has been made available to the public anywhere
in the world, before the filing date or the priority date of the application
claiming the invention; and
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24.2. The whole contents of an application for a patent, utility model, or
industrial design registration, published in accordance with this Act, filed
or effective in the Philippines, with a filing or priority date that is earlier
than the filing or priority date of the application: Provided, That the
application which has validly claimed the filing date of an earlier
application under Section 31 of this Act, shall be prior art with effect as
of the filing date of such earlier application: Provided further, That the
applicant or the inventor identified in both applications are not one and
the same.
What do you mean by everything?
It includes information (written or oral), products, materials that have
been made available to the public anywhere in the world. Not just in the
Philippines.
When is it made available?
1. Before the filing date or
2. The priority date of the application claiming invention.
How would you know if what you are creating is already popular in
China? Or Argentina? How would you know? Conduct a search known
as Prior Art Search.
It is important. First step you must undertake before even starting
create an invention as not to waste time. Big pharmaceutical companies
or product based companies have separate division for product
development and to see to it that the products are new to the world.
Example: Apple and Samsung Patent Wars.
What forms part of prior art?
1. Covered by an existing patent, or
2. Subject matter of a pending application.
That is another reason why there is full disclosure. Once disclosed
already forms part of prior art. Prior art covers not only existing patents
and applications but everything made available to public. Must be made
available to the public.
Examples of Non Prior Art
1. If the invention is disclosed in a private document list in a private
library in the US. Prior art? NO. Must be made available to public.
2. Masteral thesis (chemistry or engineering) submitted for approval
for thesis requirement to Professor. Patent protection is very
relevant in academe. Prior art? No. student are not considered
inventors with respect to their thesis. Thesis consists of products
and information can’t be considered as prior art. One indicator is it
is made available to the public.
3. Demonstration of new process of technology in factory and use by
employees in the factory. Adequate information made available to
the public? Or a product being demonstrated like a new type of
weapon before high ranking officials in the military. Prior art? In
most cases these people were the product is demonstrated are
bound by secrecy. Employees of company are contractually
obligated to keep industrial secrets bound by confidentiality.
Examples of prior art
1. If the product is being exhibited in a public exhibition or fair, it
would already form part of the Prior Art because made available to
the public.
2. If the product is sold in the market, the buyer would now have
access to product. Is it sufficient to make product available to
public? Or the product is being used by the public? What do you
think?
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Answer: Any person who is considered as a practitioner in the field
would have access to the product. Like in reverse engineering. So
it is now prior art.
But when it comes to use by the public, it only becomes Prior Art when
it is used within the Philippines but if outside, it can’t form part of the
prior art.
For information, it must be accessible to the public anywhere in the
world to be considered as prior art. That is why College thesis remains
private unless it is being catalogued and forms part of a public library.
Otherwise it remains a private document and not prior art reference.
Conduct a prior art search before creating a product. Search for available
database. In the Philippines we have the IPO Phil website which provides
links of other website outside the Philippines like World Intellectual
Office, the EU Patent Office. Once the invention does not form part of
new art in now satisfies requirement of novelty.
NON-PREJUDICIAL DISCLOSURE
Novelty and Non-Prejudicial Disclosure – Sec. 25
Non-Prejudicial Disclosure.
The disclosure of information contained in the application during the
twelve (12) months preceding the filing date or the priority date of the
application shall not prejudice the applicant on the ground of lack of
novelty if such disclosure was made by:
(a) The inventor;
(b) A patent office and the information was contained (a) in another
application filed by the inventor and should not have been
disclosed by the office, or (b) in an application filed without the
knowledge or consent of the inventor by a third party which
obtained the information directly or indirectly from the inventor;
or
(c) A third party which obtained the information directly or indirectly
from the inventor
Certain disclosure that will not be considered as full. Covers
several types.
The disclosure of information contained in the application during the
twelve (12) months preceding the filing date or the priority date of the
application shall not prejudice the applicant on the ground of lack of
novelty if such disclosure was made by:
1. The inventor
2. Patent office
3. Third party
Priority Date – Sec 20.6
Date of filing of the foreign application for the same invention referred
to in Section 31 of this Act.
INVENTIVE STEP
INVENTIVE STEP
Inventive Step – Sec. 26
An invention involves an inventive step if, having regard to prior art, it
is not obvious to a person skilled in the art at the time of the filing date
or priority date of the application claiming the invention.
-Graham v. John Deere Co. of Kansas City (383 U.S. 1, 1966)
Non-Obviousness Test (other name for inventive step)
The real purpose of this element is to know whether the invention is
something that even the experts cannot invent themselves. It is beyond
their expertise.
It refers to the difference between the subject matter sought to be
patented and the prior art, meaning what was known before. If this
difference is such that the subject matter as a whole would have been
obvious at the time to a person skilled in the art, then the subject matter
cannot be patented.
27 | U N I V E R S I T Y O F S A N C A R L O S
There are certain improvements that has not been used by public, or
used but predictable, and invention is within expertise of individual
design then it is not patentable.
What are the indicators that a product is obvious?
1. Not beyond the normal progress of technology.
2. Follows plainly or logically from the prior art
3. Does not require a skill beyond a person skilled in the art
Patentability is to depend, in addition to novelty and utility, upon the
"non-obvious" nature of the "subject matter sought to be patented" to
a person having ordinary skill in the pertinent art.
INDUSTRIAL APPLICABILITY
INDUSTRIAL APPLICABILITY
Sec. 27
An invention that can be produced and used in any industry shall be
industrially applicable. Last element and easiest. Must be practical and
not just theoretical.
If claim inventions can actually perform this task it can actually do it.
Invention that can be carried out in practice. That’s why in application
you create diagrams.
Does it need to be commercially viable? Should it be appealing
to the public?
No. because the law says any field of human activity. So if specific
product, it must be capable of performing tasks. If process it must be
capable of a process being carried on.
Hence, a utility model shall not be considered "new" if before the
application for a patent it has been publicly known or publicly used in
this country or has been described in a printed publication or
publications circulated within the country, or if it is substantially similar
to any other utility model so known, used or described within the
country.
It is relevant and material to state that in determining whether novelty
or newness is negated by any prior art, only one item of the prior art
may be used at a time. For anticipation to occur, the prior art must show
that each element is found either expressly or described or under
principles of inherency in a single prior art reference or that the claimed
invention was probably known in a single prior art device or practice.
NON-PATENTABLE INVENTIONS
NON-PATENTABLE INVENTIONS
Non-Patentable Inventions – Sec. 22
The following shall be excluded from patent protection:
1. Discoveries, scientific theories and mathematical methods.
Discoveries
Patentable invention is a product of creation. It must be created from
something. If you discovered something, like a new mineral not included
in periodic table elements, it is not new you just discovered something
even if use lots of money. It does not amount to patent protection.
Discovery is something that the nature already provides, invention is
product of creation not product of nature.
Scientific theories
Practical need not be theoretical. Must be practical. Example, its an
equation, E=MC2. Is it patentable? Even if innovative?
NO. But the product applying theory itself is patentable. Theory itself is
not. The machines applying this theories are patentable.
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Mathematical methods
Not patentable. In scientific theories and mathematical methods, both
are not patentable but the machines that use such methods are
patentable.
In case of drugs and medicine
The mere discovery of a new form or new property of a known
substance which does not result in the enhancement of the known
efficacy of that substance.
The mere discovery of new property or a new use for that known
substance for the mere use of a known process unless such process
employs new product which it involves at least 1 new reactant.
Example: Certain drugs that are used for a known purpose. Like aspirin.
What is its use? Pain killer, the purpose for that medicine, but has been
found out that aspirin have that side effect to be a blood thinner. And it
is effective for hypertensive patients.
It does not result in the enhancement of the known efficacy of the
product so can’t have new patent. This applies only to drugs and
medicines.
2. Schemes, rules and methods of performing mental acts, playing
games or doing business, and programs for computers.
Computer programs are covered by law on copyright, not patentable.
Example: The products using the computer programs and not programs
themselves are patentable.
For instance, ATM run by computer program not patentable but the
machine are patentable assuming it is still new.
What is meant by mental acts?
Activity requiring you to use mental acts.
3. Methods for treatment of the human or animal body by surgery or
therapy and diagnostic methods practiced on the human or animal body.
This provision shall not apply to products and composition for use in any
of these methods;
Treatments implies that it is a living animal. The one not patentable are
the methods and proceedings but the products used in the method are
patentable.
Cosmetic surgery method. It must be Treatment for illness or injury. If
purely aesthetic reasons not included. But if cosmetic surgery is used
for treatment of illness or injury then it os covered by patent
4. Plant varieties or animal breeds or essentially biological process for
the production of plants or animals. This provision shall not apply to
micro-organisms and non-biological and microbiological processes.
Provisions under this subsection shall not preclude Congress to consider
the enactment of a law providing sui generis protection of plant varieties
and animal breeds and a system of community intellectual rights
protection:
Discover new plant variety and new animal, not create new invention.
So not patentable. Cross breed animals method is not patentable.
When you say biological, there is minimal human intervention. The
participation of the human is just mixing the two together.
Microorganisms and non-biological and microbiological process needs
Human intervention to come up with desired results.
Example: Lacto bacillus. It requires specific type of skill intervention to
acquire a desired result. But if intervention is only to allow nature to
takes its force, then it is purely biological.
28 | U N I V E R S I T Y O F S A N C A R L O S
5. Aesthetic creations, and
6. Anything which is contrary to public order or morality.
Grey area. Morality is relative. Does human cloning fall here?
Animal cloning is not purely biological because it requires human
intervention and skill to acquire such result.
RIGHT TO A PATENT
PATENT PROTECTION
NO REGISTRATION, NO PATENT
Patent protection is only afforded when it is registered. Registration is a
requirement, a condition that is required under the law. Only the person
entitled to the patent has the exclusive live thereof. He is called the
patentee.
Sec. 28. Right to a Patent. - The right to a patent belongs to the inventor,
his heirs, or assigns. When two (2) or more persons have jointly made
an invention, the right to a patent shall belong to them jointly. (Sec. 10,
R. A. No. 165a)
The law is very clear that patent is conferred to the person responsible
for its creation because the right to patent stems from creation.
Naturally, the inventor is the one entitled to the patent. Since the law
requires that prior to patent protection there must be a registration
requirement, then he must be the one to file the application for patent
protection.
But just like any other property right, the right to a patent is transferable
or assignable. When the inventor dies, his heirs will assume his right to
the patent. But during his lifetime, he can transfer such right through a
valid transfer of ownership such as assignment. So his successor in
interest could be by virtue of:
a. A voluntary act – when it is transferred or assigned during his
lifetime, it is now the transferee/assignee who has the right to the
patent
b. Or by virtue of succession
It could be that the inventor is not the owner of the patent.
What if the right to the patent was sold and it was unknown to
the heirs?
If unknown to his heirs that assignment/transfer is made prior to the
inventor’s death, the transferee has the superior right over the heirs.
What if one co-inventor transfers his rights?
If there is an act of transfer by one of the co-owners, the same is invalid
unless it has the consent of all the other co-owners.
Sec. 29. First to File Rule. - If two (2) or more persons have made the
invention separately and independently of each other, the right to the
patent shall belong to the person who filed an application for such
invention, or where two or more applications are filed for the same
invention, to the applicant who has the earliest filing date or, the earliest
priority date. (3rd Sentence, Sec. 10, R. A. No. 165a.)
This is opposed to the previous rule of the old patent law of the first to
invent rule because this was very difficult to determine. The First to File
rule is more easy to determine.
What does “independently” mean?
That there is no copying involved. It should be an independent work.
The idea came from the inventor himself.
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Between two inventors, even if the other inventor has finished the
invention earlier, whoever has an application for registration or the one
who has the earliest filing or priority date is the priority.
A. Filing Date – the date when you actually filed the application in
the Bureau of Patents
B. Priority Date – when there is a foreign application involved. If
you have a foreign application filed before your local application,
your filing date should be considered as the date of foreign
application so you have a right of priority
Sec. 31. Right of Priority. - An application for patent filed by any person
who has previously applied for the same invention in another country
which by treaty, convention, or law affords similar privileges to Filipino
citizens, shall be considered as filed as of the date of filing the foreign
application: Provided, That: (a) the local application expressly claims
priority; (b) it is filed within twelve (12) months from the date the
earliest foreign application was filed; and (c) a certified copy of the
foreign application together with an English translation is filed within six
(6) months from the date of filing in the Philippines. (Sec. 15, R. A. No.
165a)
Requisites for an applicant to avail of the right of priority (you
can find this is the patent application form):
1. The local application expressly claims priority
2. It is filed within twelve (12) months from the date the earliest
foreign application was filed.
3. A certified copy of the foreign application together with an English
translation is filed within six (6) months from the date of filing in
the Philippines.
What is the significance of the 12-month period in req. 2?
There is non-prejudicial disclosure. If you file an application, it may form
part of the prior art. So the law only affords you a limited period within
which you file your local application. Otherwise it becomes a prejudicial
disclosure. (Atty Q: Perhaps I will include this in your finals)
Non-prejudicial disclosure – It should be filed within the 12-month
period otherwise it becomes part of the prior art
Sec. 30. Inventions Created Pursuant to a Commission. –
30.1. The person who commissions the work shall own the patent,
unless otherwise provided in the contract.
30.2. In case the employee made the invention in the course of his
employment contract, the patent shall belong to:
(a) The employee, if the inventive activity is not a part of his regular
duties even if the employee uses the time, facilities and materials
of the employer.
(b) The employer, if the invention is the result of the performance of
his regularly-assigned duties, unless there is an agreement,
express or implied, to the contrary.
Invention by Virtue of a Commission
General Rule: Person who commissions the work shall own the patent.
Exception: When there is contrary stipulation.
Atty Q: This is different from the law on copyright because in literary
and artistic works, copyright belongs to the created not to the
commissioner. When it comes to invention (law on patents), it is the
person who commissions the work who owns the patent.
Invention by Virtue of Employment
The invention is made in the course of his employment contract, the
patent shall belong to:
29 | U N I V E R S I T Y O F S A N C A R L O S
a. The employee - if the inventive activity is not a part of his regular
duties even if the employee uses the time, facilities and materials
of the employer.
b. The employer, if the invention is the result of the performance of
his regularly-assigned duties
Exception: There is an agreement, express or implied, to the contrary.
Atty Q: This is the same with law on copyright.
PATENT APPLICATION
APPLICATION
PATENT APPLICATION
Sec. 32. The Application. -
32.1. The patent application shall be in Filipino or English and shall
contain the following:
1. A request for the grant of a patent
2. A description of the invention
3. Drawings necessary for the understanding of the invention
4. One or more claims, and
5. An abstract.
Contents of a Patent Application
1. A request for the grant of patent – this is already incorporated in
the patent application form.
2. A description of the invention
3. Drawing necessary for the understanding of the invention
Atty Q: Requirements 2 and 3 are related. This is substantive
description known in the par lands. For inventors, it should be an
enabling description.
What is an enabling description?
It is a description that is sufficient to supply information to one who
is skilled in the art, not necessarily an expert but a practitioner in
the field, to be able to replicate the invention and create the same
by himself and have it work. He does not need to go back to the
inventor and ask for other/necessary information. This is part of
the requirement of industrial applicability.
4. One or more claims – the claim that the invention is a solution to
a problem. Relate this to Sec. 36:
Sec. 36. The Claims. -
36.1. The application shall contain one (1) or more claims which shall
define the matter for which protection is sought. Each claim shall be
clear and concise, and shall be supported by the description.
36.2. The Regulations shall prescribe the manner of the presentation of
claims.
Atty Q: Claims determine the scope of protection of your
invention. They define the parameters of your protection.
5. Abstract – a brief description of your invention. You may include
the persistent problems prior to the creation of your invention just
to give the public the idea why the invention was created.
“Necessity is the mother of invention.” So give the reason why the
invention was made.
Sec. 38. Unity of Invention. –
38.1. The application shall relate to one invention only or to a group of
inventions forming a single general inventive concept.
38.2. If several independent inventions which do not form a single
general inventive concept are claimed in one application, the Director
may require that the application be restricted to a single invention. A
later application filed for an invention divided out shall be considered as
having been filed on the same day as the first application:
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Provided, that the later application is filed within four (4) months after
the requirement to divide becomes final, or within such additional time,
not exceeding four (4) months, as may be granted: Provided further,
that each divisional application shall not go beyond the disclosure in the
initial application.
38.3. The fact that a patent has been granted on an application that did
not comply with the requirement of unity of invention shall not be a
ground to cancel the patent. (Sec. 17, R. A. No. 165a)
Atty Q: If the Director finds that there are several independent
inventions, you have to file separate applications and file several filing
fees.
When can you say that a group of inventions has Single General
Inventive Concept?
When they share the same special technical features – This expression
means those features which define a contribution between each of the
claimed invention considered as whole mixed over the prior art.
What is the rule in Single General Inventive Concept?
The examiner shall require that the application shall be restricted to a
single invention when there are several independent inventions which
do not form a single general inventive concept.
What is the result when there is an order for the division of an
application?
Even if there is an order requiring you to file a separate application, the
later application filed for an invention divided out (or a divisional
application) shall be considered as that being filed on the same day as
the first application. So you still enjoy the earliest filing date.
The same filing date is granted to the later application provided that:
1. The later application is filed within four months after the restriction
requirement becomes final; and
2. Each divisional application shall not go beyond the disclosure in the
initial or first application.
The fact that a patent has been granted on the application that did not
comply with the requirement of unity of invention shall not be a ground
to cancel the patent.
SAME TECHNICAL FEATURE
THE SAME TECHNICAL FEATURE
If two or more inventions have the same special technical feature, the
requirement of unity of invention is met.
Since claims determine the scope of protection, if you file separate
claims in one application, you can enjoy a wider scope of protection.
Example 1:
Claim 1: Polymeric substance compound A (transparent substance
having improved oxygen barrier characteristics)
Claim 2: Food packaging container composed of polymeric compound A.
Atty Q: This compound is ideal for containers. You want to preserve
certain items/food to prevent oxygenation. The invention here is the
substance – that is a product patent. If the inventor claims that he has
created a substance that is a technical solution to a problem, he can use
it as a first claim.
Since this substance is ideal for containers, then might as well
incorporate it in a known container, which is a food packaging container
composed of the polymeric compound A. So there are two inventions –
the substance itself and the application of the substance to a known
product which is a food container. This is a common item, not new to
the world, but it now becomes new because it uses polymeric compound
A. So you now have claim number 2.
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Now, can you incorporate the two inventions in one application? Yes,
because they share the same technical feature which is the polymeric
compound A. So you are allowed to file it in one application – you can
pay for the filing fee and additional fees for the claims. You have to also
prove that each claim must be a solution to a problem.
Example 2:
Claim 1: Substance X (Product Patent)
Claim 2: Process for the manufacture of substance X (Process Patent)
Claim 3: Use of substance X for treating disease Y (Process Patent)
ANSWER:
Unity of Invention? YES.
Single General Inventive Concept? Substance X.
Example 3:
Claim 1: An eyeglass frame composed of a titanium alloy X.
Claim 2: An eyeglass frame composed of titanium alloy X coated with
nitrides Y.
Claim 3: A method for producing an eyeglass frame by molding titanium
alloy X into the frame in one-piece.
Claim 4: A method of producing an eyeglass frame comprising the steps
of: molding titanium alloy X into the frame in one-piece; and depositing
the frame in nitrides Y.
Atty Q: Claims 1 and 2 are product patents. Claims 3 and 4 are process
patents. Assume that Titanium Alloy X is the one that is new since an
eyeglass frame is no longer novel.
Is there Unity of Invention?
ANSWER: Yes, there is Unity of Invention.
A special technical feature of Claims 1 and 2 is an eyeglass frame
composed of a titanium alloy X. The production method described in
claims 3 and 4 necessarily provides an eyeglass frame composed of
titanium alloy X, which is a special feature of claims 1 and 2. The
production methods described in claims 3 and 4 are therefore suitable
for producing the eyeglass frames described in claims 1 and 2.
Atty Q: If you take out Titanium Alloy X in Claims 3 and 4, these
inventions are no longer patentable because they are no longer
something new. In each claim, Titanium Alloy X plays a significant for it
to be claimed as an invention. So this proves that there is unity of
invention because it is a dependent claim.
Example 4: (He did not discuss this)
Claim 1: Substance A.
Claim 2: A method of killing insects with substance A.
ANSWER: Since the method of killing insects described in claim 2 utilizes
the insecticide property of substance A described in claim 1, the method
of killing insects described in claim 2 is suitable for using substance A
described in claim 1.
Example 5:
Claim 1: A process for treating textile comprising spraying the material
with a particular coating composition under special conditions (e.g. as
to temperature, irradiation).
Claim 2: A textile material coated according to the process of Claim 1.
Claim 3: A spraying machine for use in the process of claim 1 and
characterized by new nozzle arrangement providing better distribution
of the composition being sprayed.
ANSWER:
1. The process according the Claim 1 imparts unexpected properties
to the product of Claim 2.
2. The special technical feature in Claim 1 is the use of special process
conditions corresponding to what is made necessary by the choice
of the particular coating. Unity exists between claims 1 and 2.
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3. The spaying machine in claim 3 does not correspond to the above DIRECT ROUTE TIMELINE
identified special technical feature. Unity does not exist between
Claim 3 and Claims 1 and 2.

Atty Q: For this example, let us assume that the substance used is not
new but the process is something that is novel. Claim 1 introduces the
process of using the coating composition as a new concept making it
patentable. Claim 2 is the textile with the same process of coating. So
there is clear reference - the process of Claim 1.

The third Claim is a product patent – the spray machine. Claim 3 is a

solution to the problem of poor distribution of the composition being
sprayed but does it indicate a specific type of composition? No, any type
of composition. The solution is so that it can provide a better distribution
of the composition. The invention addresses the problem pertaining to
all types of composition not necessarily the coating composition. If claim When at the time of filing you have complied with the documentary
3 states that the spraying machine is specifically for the same requirements, you have to wait for a period of 18 months. After 18
composition, it will be different. You have to indicate it clearly by saying months, there is now a first publication. Since this is the first, there
“better distribution of the coating composition.” should be a second. (hehe)

Conclusion: It is very crucial to phrase your claim properly so that you Then you have to wait another six months- this is the time given to you
can incorporate it in one application. to make a request for a substantive examination. Not on the 24th month
but between the 18th and 24th month. The procedure for Substantive
PROCEDURE FOR GRANT OF PATENT Examination is not automatic. It must be filed by the applicant.
IMPORTANT: If you fail to do so, the application is considered forfeited.
PROCEDURE FOR GRANT OF PATENT
There are two phases in the Examination Process: After the request to the hearing officer, there is the substantive
1. Formality Examination Phase examination. After which, there is the grant of the letters patent and
2. Substantive Examination Phase later on the Publication of the Letters Patent.

FORMALITY EXAMINATION PHASE

FORMALITY EXAMINATION PHASE

When does this start?

From the time of according a filing date.

What are the requirements of according a filing date?

Sec. 41. According a Filing Date. - The Office shall examine whether the
patent application satisfies the requirements for the grant of date of
filing as provided in Section 40 hereof. If the date of filing cannot be
accorded, the applicant shall be given an opportunity to correct the
deficiencies in accordance with the implementing Regulations. If the
application does not contain all the elements indicated in Section 40, the
filing date should be that date when all the elements are received. If the
deficiencies are not remedied within the prescribed time limit, the
application shall be considered withdrawn.

When you file, the hearing officer will go over the documents. What are
the documents?

40.1. The filing date of a patent application shall be the date of receipt
by the Office of at least the following elements:
(a) An express or implicit indication that a Philippine patent is sought;
(b) Information identifying the applicant; and
(c) Description of the invention and one (1) or more claims in Filipino
or English.
40.2. If any of these elements is not submitted within the period set by
the Regulations, the application shall be considered withdrawn.
You also have to include those 5 requirements in section 32. (see
Chapter IV). This includes the payment of the filing fee and the filing
date. You already know why the filing date is important – because we
follow the First to File Rule. You cannot be accorded with a filing date
unless you provide all the necessary documentary requirements.
If there is insufficient documentary requirements, you will not be given
a filing date yet because the examiner will still give you the opportunity
to correct or supply the lacking requirements or deficiencies.
31 | U N I V E R S I T Y O F S A N C A R L O S
This is the procedure that transpires during the first 18 months. The
“Search” is to determine prior art. If you know that you have invented
this first, then you are 100% sure that there is no prior art.
However, if the formal requirements are not complied with, then there
must be a notice of deficiency sent to the applicant. There must be an
action so you can comply with the notice of deficiency then you go back
to the Formality Examination. Otherwise, the application is considered
withdrawn. If it is, you have a reglementary period by which you can
revive your petition stating the reason that there delay in complying with
the deficiencies. Then the hearing officer will allow revival. If not, there
is total forfeiture.
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If we go back to the previous requirement of search for prior art and it What is the difference between the applicant and a patentee?
gives out a negative result, we can now go to publication. A notice of The applicant does not enjoy the same type of right as a patent holder
publication is sent to the applicant to inform him that the application has because there are certain requirements that he needs to comply (46.1
been published and he is given within 6 months to make a request for and 46.2). The rights of the patent can only be exercised after the grant
the substantive examination. Again if no request is made, then it is of the patent. Acts performed prior to the grant, can only be prosecuted
considered as withdrawn. If there is, proceed with the substantive after the grant and it should be 4 years after the commission of the act.
examination phase.
Case Creser Precision Systems Inc. v CA
Publication of an Application No patent no protection. Protection is only afforded upon patent
registration. So the applicant having the same right as that of a patentee
A. Application is published in the IPO Official Gazette after 18 months
is somehow an exception to the jurisprudence. The law already gives
from filing
protection to the applicant. This is a concession given to an applicant
B. Withdrawn application shall not be published
for his consent to publish his application. His invention is now disclosed
C. Publication shall contain the bibliographic data, drawing, abstract
to the public, a risk he is taking. In return, the law affords him of a right
and search report
in exchange of such risk.
D. Applicant is notified of the publication and remind him to request
for substantive examination within 6 months from publication
What if the grant is after 4 years after the commission?
E. Published application are laid open for third party observation
The law is clear. The act being committed should be 4 years prior to the
grant. Sir thinks though that if there is delay not due to the applicant’s
Why is publication important?
fault, he must not suffer the consequences. But there is no jurisprudence
Because it is a notice to third parties.
about this yet. But this should be interpreted in favor of the applicant.
The 4 year period should be relaxed in that sense.
44.2. After publication of a patent application, any interested party may
inspect the application documents filed with the Office.
Substantive Examination
Applicant prosecuted ex parte. Proceeding is a law contest between
This opens the application for scrutiny from third persons. If there is a
the Examiner, representing the public and trying to give the applicant
finding that this is not patentable, the third person must file an
the least possible monopoly, and the applicant, on the other hand,
opposition with the Bureau of Legal Affairs. So from an ex parte
trying to get as much monopoly possible.
proceeding, it is now adversarial – between the opposition and the
applicant.

Request for Early Publication (Atty Q skipped this part)

Applicant may request for the early publication of the application,
provided that:
1. Applicant submits a written waiver of the
 Above mentioned 18 month period, and
 Establishment of a search report
2. Publication should not be earlier that 6 months from the filing date,
and
3. Payment of the Fee (P5,550)

Rights of Applicant after Publication

Sec. 46. Rights Conferred by a Patent Application After Publication. -
The applicant shall have all the rights of a patentee under Section 76
against any person who, without his authorization, exercised any of the
rights conferred under Section 71 of this Act in relation to the invention
claimed in the published patent application, as if a patent had been
granted for that invention: Provided, That the said person had:

46.1. Actual knowledge that the invention that he was using was the
subject matter of a published application; or

46.2. Received written notice that the invention that he was using
was the subject matter of a published application being identified in
the said notice by its serial number: Provided, That the action may
not be filed until after the grant of a patent on the published
application and within four (4) years from the commission of the acts
complained of. (n)

An applicant shall have all the rights of a patentee, as if a patent has
been granted the application:
Provided:
1. That a written notice is sent to a person using the published
invention,
2. That the action may not be filed until after the grant of a patent,
3. That it should be within four (4) years from the commission of the
act.
In this stage, the other 2 requirements patentability are
examined which are:
1. Inventive Step Test
2. Industrial applicability
After requirements are complied, a notice of allowability is sent. If there
is refusal, the applicant can move for a reconsideration before the
hearing officer and he is only allowed one (1) motion of reconsideration.

TN: He is not yet a patent holder but the applicant is already given the The purpose of a reconsideration is for him to be given an opportunity
rights as if he is already a patentee. He can already sue for infringement. to point out to the examiner to have second look with his application. If
there is still refusal for the second reconsideration, it is considered as a
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final refusal. This can still be appealed to the Director Patents who is the
head of the Bureau of Patents. Then afterwards, it is elevated to the
Director General, then to the Court of Appeals, and afterwards to the
Supreme Court.

Once there is a notice of allowability, the applicant can pay the

necessary fees for publication. There will be a patent grant then there
is the publication. There is the issuance of the Letters Patent.

Term of Protection
20 years from the date of filing of the application
Provided,
1. That the Annual Fee is paid.
2. That the patent is not cancelled.

Atty Q: The 20-year term is not absolute because if we have pre-

registration requirements, we also have post registration requirement.

When does the Annual Fee become due?

The annual fee shall be paid upon the expiration of 4 years from the
date the application was published (First Publication), then afterwards
every year. Payment shall be made within three months before the due
date. The payment shall be terminated if the application shall be refused
of cancelled. Even if you are still not a patent holder, you are already
required an annual fee.

Another reason of 20 year period is not absolute is when your application

is cancelled. It is always subject to cancelation. An entire chapter is
devoted to that proceeding, Chapter 6 – Cancellation and Substitution
of Patent.

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