B.

Trademarks
1. Marks vs. collective marks vs. trade names
2. Acquisition of ownership
a. Concept of actual use
b. Effect of registration
3. Non-registrable marks
4. Well-known marks
5. Priority right
6. Rights conferred by registration
7. Cancellation of registration
8. Trademark infringement
9. Unfair competition

1. Marks vs. collective marks vs. trade names

121.1. "Mark" means any visible sign capable of distinguishing (distinctive) the goods (trademark) or services (service
mark) of an enterprise and shall include a stamped or marked container of goods;
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;
121.3. "Trade name" means the name or designation identifying or distinguishing an enterprise;

The law went further to declare that a trademark is a visible sign, thus barring the possibility of audible signs being
considered as trademark.

Great White Shark v. Caralde, Jr., G.R. No. 192294, [November 21, 2012]
A trademark device is susceptible to registration if it is crafted fancifully or arbitrarily and is capable of identifying and
distinguishing the goods of one manufacturer or seller from those of another. Apart from its commercial utility, the
benchmark of trademark registrability is distinctiveness. Thus, a generic figure, as that of a shark in this case, if
employed and designed in a distinctive manner, can be a registrable trademark device, subject to the provisions of the
IP Code.

2. Acquisition of ownership
SECTION 122. How Marks are Acquired . — The rights in a mark shall be acquired through registration made validly
in accordance with the provisions of this law.
159.1. Notwithstanding the provisions of Section 155 hereof, 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.

TM rights are acquired through valid registration!

BUT see Berris v. Abyadang and E.Y. Industrial v. Shen Dar – ownership is acquired based on prior use.

Berris v Abyadang (Oct. 13, 2010)

 Respondent Abyadang filed a trademark application for “NS D-10 PLUS” for use in connection with Fungicide (class
5) with active ingredient 80% Mancozeb.

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 Petitioner Berris filed an opposition on the ground that the mark is confusingly similar to its registered trademark “D-
10 80 WP” also used for Fungicide (Class 5) with active ingredient 80% Mancozeb.
 Who has the better right over the mark?
Ownership of a mark is acquired by registration and actual use by the manufacturer/distributor of
goods.
A certificate of registration constitutes prima facie evidence of
1.the validity of registration;
2.The registrant’s ownership of the mark;
3.The registrant’s exclusive right to use the same in connection with the goods and services and
those that are related thereto specified in the certificate. (Sec. 138)

 This prima facie presumption brought about by the registration of a mark may be challenged and overcome by proof
of the nullity of the registration or of non-use of the mark, except when excused.
 The presumption may likewise be defeated by evidence of prior use by another person; that is, it will controvert a
claim of legal appropriation or of ownership based on registration by a subsequent user.
A trademark is a creation of use and belongs to one who first used it in trade or commerce

Birkenstock v. Phil. Shoe Expo, G.R. No. 194307, [November 20, 2013]
“Clearly, it is not the application or registration of a trademark that vests ownership thereof, but it is the ownership of a
trademark that confers the right to register the same. A trademark is an industrial property over which its owner
is entitled to property rights which cannot be appropriated by unscrupulous entities that, in one way or
another, happen to register such trademark ahead of its true and lawful owner. The presumption of ownership
accorded to a registrant must then necessarily yield to superior evidence of actual and real ownership of a trademark .
The Court's pronouncement in Berris Agricultural Co., Inc. v. Abyadang is instructive on this point…”

ABS-CBN Publishing, Inc. v. Director of the Bureau of Trademarks, G.R. No. 217916, [June 20, 2018]
In 2004, ABS-CBN filed with IPOPhils an application for the registration of its trademark "METRO" under Class 16 for
"magazines." The case was assigned to an examiner who, after examination, refused the applicant mark's registration.
Per the Examiner, the mark is identical with 3 other marks, and is therefore unregistrable according to Section 123.1
(d) of the Intellectual Property Code: (1) "Metro" (word) with Application No. 42000002584, (2) "Metro" (logo) with
Application No. 42000002585, and (3) "Inquirer Metro" with Application No. 42000003811.

ABS-CBN asserts that it has a vested right over the mark because it has applied [thought its predecessor company] in
1994 for the registration of the same under the old Trademark Law. Since then, it actually used the mark in commerce.
It claims that under the old Trademark law, actual use in commerce is a pre-requisite to the acquisition of ownership
over a trademark and that its actual use of the mark enabled it to automatically acquire trademark rights, which should
have extended under the IPC in 1998. However, ABS-CBN itself admitted that its 1994 application was already
"deemed abandoned."

SC:
“While it is quite noticeable that the petitioner failed to discuss the implications of this abandonment, it remains a fact
that once a trademark is considered abandoned, the protection accorded by the IPC, or in this case the old Trademark
Law, is also withdrawn. The petitioner, in allowing this abandonment, cannot now come before the Court to cry foul if
another entity has, in the time that it has abandoned its trademark and in full cognizance of the IPC and the IPO rules,
registered its own.”

a. Concept of actual use

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.

Prior use is not a requirement in registration but there must be actual use after application.
-Declaration of Actual Use – within three (3) years from filing of the application

b. Effect of registration

Term of Protection:
Ten (10) years from registration
renewable for periods of ten (10) years each – indefinite – provided a declaration of use is
filed within 1 year from filing and from the 5th year of registration

3. Non-registrable marks

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- Immoral, deceptive, or scandalous matters
- Matter which may disparage or falsely suggest a connection with persons, etc.
- Contrary to public order or morality
[Note: Sec. 123, rearranged according to nature]
- Flags/coat of arms of nations
- Names, portraits or signature of living persons
- Exception: with consent (ex: Manny Pacquiao)
- Names, portraits or signature of a deceased President of the Philippines
- Exception: with written consent of his/her living widow
-First-to-File Rule
Identical or confusingly similar with existing registered or earlier filed application trademarks including well-known
marks
(Sec. 123.1 (d))
- Misleading marks Sec. 123.1 (g)
- Generic terms [signs or of indications that have become customary or usual to designate the goods or services in
everyday language or in bona fide and established trade practice] Sec. 123.1(h) and (i)
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- Descriptive terms [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] Sec. 123.1(j)
- Color by itself;
- Shapes dictated by technical factors

Shang Properties v. St. Francis, G.R. No. 190706, [July 21, 2014]
As deftly explained in the U.S. case of Great Southern Bank v. First Southern Bank: "[d]escriptive geographical
terms are in the 'public domain' in the sense that every seller should have the right to inform customers of the
geographical origin of his goods. A 'geographically descriptive term' is any noun or adjective that designates
geographical location and would tend to be regarded by buyers as descriptive of the geographic location of origin of
the goods or services.

A geographically descriptive term can indicate any geographic location on earth, such as continents, nations, regions,
states, cities, streets and addresses, areas of cities, rivers, and any other location referred to by a recognized name.
In order to determine whether or not the geographic term in question is descriptively used, the following question is
relevant: (1) Is the mark the name of the place or region from which the goods actually come? If the answer is yes,
then the geographic term is probably used in a descriptive sense, and secondary meaning is required for protection“.

Sec. 123. A mark cannot be registered if it... (e) is identical with, or confusingly similar to, or constitutes a translation of
a mark which is considered by the competent authority of the Philippines to be well known internationally and in the
Philippines, whether or not it is registered here, as being already the mark of a person other than the applicant for
registration, and used for identical or similar goods or services: Provided, That 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

(f) is identical with, or confusingly similar to, or constitutes a translation of a mark considered wellknown in accordance
with the preceding paragraph, which is registered in the Philippines with respect to goods or services which are not
similar to those with respect to which registration is applied for: Provided, That use of the 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;
(Sec. 123)

Secondary Meaning
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.

Shang Properties v. St. Francis, G.R. No. 190706, [July 21, 2014]
“Under Section 123.2 of the IP Code, specific requirements have to be met in order to conclude that a geographically
descriptive mark has acquired secondary meaning, to wit:
(a) the secondary meaning must have arisen as a result of substantial commercial use of a mark in the
Philippines;
(b)such use must result in the distinctiveness of the mark insofar as the goods or the products are
concerned;and
(c) proof of substantially exclusive and continuous commercial use in the Philippines for five (5) years before
the date on which the claim of distinctiveness is made.

Unless secondary meaning has been established, a geographically-descriptive mark, due to its general public domain
classification, is perceptibly disqualified from trademark registration.”

4. Well-known marks
Paris Convention: Article 6bis
(1) The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested
party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction,
an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country
of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of
this Convention and used for identical or similar goods...

Sehwani v In-N-Out (Oct.15, 2007)

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Article 6bis which governs the protection of wel-lknown trademarks, is a self-executing provision and does not require
legislative enactment to give it effect in the member country.

The essential requirement under this Article is that the trademark to be protected must be "well-known" in the country
where protection is sought. The power to determine whether a trademark is well-known lies in the "competent
authority of the country of registration or use." This competent authority would be either the registering authority if it
has the power to decide this, or the courts of the country in question if the issue comes before a court.

Fredco v. Harvard (June 1, 2011)

“Since "any combination" of the …criteria is sufficient to determine that a mark is well-known, it is clearly not
necessary that the mark be used in commerce in the Philippines. Thus, while under the territoriality principle a mark
must be used in commerce in the Philippines to be entitled to protection, internationally well-known marks are the
exceptions to this rule.”

Rule 18, A.M. No. 10-3-10-SC

SEC. 2. Well-known mark. – 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.

Criteria - any combination

a) the duration, extent and geographical area of any use of the mark;
b) the market share, in the Philippines and in other countries;
c) the degree of the inherent or acquired distinction of the mark;
d) the quality-image or reputation acquired by the mark;
e) the extent to which the mark has been registered in the world;
f) the exclusivity of registration attained by the mark in the world;
g) the extent to which the mark has been used in the world;
h) the exclusivity of use attained by the mark in the world
i) the commercial value attributed to the mark in the world;
j) the record of successful protection of the rights in the mark;
k) the outcome of litigations dealing with the issue of whether the mark is a well-known mark; and
l) the presence or absence of identical or similar marks validly registered for or used on identical or similar goods or
services and owned by persons other than the person claiming that his mark is a well-known mark.

“There is no question …that "Harvard" is a well-known name and mark not only in the United States but also
internationally, including the Philippines. The mark "Harvard" is rated as one of the most famousmarks in the world. It
has been registered in at least 50 countries. It has been used and promoted extensively in numerous publications
worldwide. It has established a considerable goodwill worldwide since the founding of Harvard University more than
350 years ago…”

5. 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.
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.
131.3. Nothing in this section shall entitle the owner of a registration granted under this section to sue for acts
committed prior to the date on which his mark was registered in this country: Provided , That, notwithstanding the
foregoing, the owner of a well-known mark as defined in Section 123.1(e) of this Act, that is not registered in the
Philippines, may, against an identical or confusingly similar mark, oppose its registration, or petition the cancellation of
its registration or sue for unfair competition, without prejudice to availing himself of other remedies provided for under
the law.
131.4. In like manner and subject to the same conditions and requirements, the right provided in this section may be
based upon a subsequent regularly filed application in the same foreign country: Provided , That any foreign
application filed prior to such subsequent application has been withdrawn, abandoned, or otherwise disposed
of, without having been laid open to public inspection and without leaving any rights outstanding, and has not served,
nor thereafter shall serve, as a basis for claiming a right of priority. (Sec. 37, R.A. No. 166a)

Who has a priority right?

Page 5 of 16
6. Rights conferred by registration

Right to exclusive use of the mark in connection with one’s own goods or services resulting in likelihood of confusion.

Right to prevent others from use of an identical mark for the same, similar or related goods or services. (Sec.147)

Will trademark registration abroad be valid and binding here in the Philippines?
- No. Principle of Territoriality
- Exception: Well-known marks
- Exception: Bad Faith

7. Cancellation of registration
SECTION 151. Cancellation. —
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.
(b) At any time, if the registered mark becomes the generic name for the goods or services, or a portion
thereof, for which it is registered, or 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. 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. (n)
(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.

SECTION 152. Non-use of a Mark When Excused

1. Non-use of a mark may be excused if caused by circumstances arising independently of the will of the trademark
owner. Lack of funds shall not excuse non-use of a mark.
2. The use of the mark in a form different from the form in 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 diminish the protection granted to
the mark.
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 is registered shall prevent its cancellation or removal in respect of all other goods or services of the
same class.
4. The use of a mark by a company related with the registrant or 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

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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. (n)

8. Trademark infringement
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.
(Sec. 22, R.A. No. 166a)

Trademark Infringement
Unauthorized use of a registered trademark, or of a colorable imitation of the same, for similar or related goods in
which such use is likely to cause confusion or mistake, or to deceive.

Elements:
1. Ownership of a trademark through registration
2. That the trademark is reproduced, counterfeited, copied, or colourably imitated by another
Exact reproduction/counterfeiting/copying of the mark
Use of a colorable imitation thereof
• “Colorable imitation” denotes such a close or ingenious imitation as to be calculated to deceive ordinary persons, or
such a resemblance to the original as to deceive an ordinary purchaser giving such attention as a purchaser usually
gives, as to cause him to purchase the one supposing it to be the other. (Rule 18, Section 4, AM No. 10-3-10-SC)
3. No consent by the trademark owner or assignee
4. Use in connection with the sale, offering for sale, or advertising of any such goods, business or services or those
related thereto
Use of identical or similar mark for non identical, dissimilar or non-related goods = No infringement
• Exception 1: Internationally Well-Known Marks
• Exception 2: Dilution of Mark
5. Likelihood of Confusion
In the foregoing enumeration, it is the element of "likelihood of confusion" that is the gravamen of trademark
infringement. But "likelihood of confusion" is a relative concept. The particular, and sometimes peculiar, circumstances
of each case are determinative of its existence. Thus, in trademark infringement cases, precedents must be evaluated
in the light of each particular case. (Prosource International, Inc. v. Horphag Research Management SA, G.R. No.
180073, [November 25, 2009], 620 PHIL 539-553)

Types of confusion:
• As to the goods themselves (“Confusion of goods”)
Same or competing goods
• As to the source or origin of such goods (“Confusion of business”)
Wherein the goods of the parties are different but the defendant’s product can reasonably be assumed to originate
from the plaintiff thereby deceiving the public into believing that there is some connection between the plaintiff and
defendant, which in fact, does not exist (Mighty Corporation vs. EJ Gallo, 434 SCRA 473, [2004]])

Tests of confusion:
• Dominancy Test
Prevalent features of a product
• Holistic Test
Marks compared in their entirety

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ABS-CBN Publishing, Inc. v. Director of the Bureau of Trademarks, G.R. No. 217916, [June 20, 2018]
“To determine whether a mark is to be considered as "identical" or that which is confusingly similar with that of
another, the Court has developed two (2) tests: the dominancy and holistic tests. While the Court has time and again
ruled that the application of the tests is on a case to case basis, upon the passage of the IPC, the trend has been to
veer away from the usage of the holistic test and to focus more on the usage of the dominancy test . As stated… in
McDonald’s vs. L.C. Big Mak, the "test of dominancy is now explicitly incorporated into law in Sec. 155.1 of the IPC
which defines infringement as the 'colorable imitation of a registered mark x x x or a dominant feature thereof.'"

Other factors:
• Idem Sonans Rule (same sound) – aural effects of the words and letters contained in the marks are also considered
in determining the issue of confusing similarity
• Examples:
◼ “Pycogenol” vs. “PCO-GENOL”(Prosource vs. Horphag)
◼ “Dermaline” vs. “Dermalin” (Dermaline Inc. vs. Myra Pharmaceuticals)
◼ “Nanny” vs. “Nan” (Nestle S.A. vs. Dy Jr.)

Trademark Fair Use

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.

Shang Properties v. St. Francis, G.R. No. 190706, [July 21, 2014]
“…even on the assumption that secondary meaning had been acquired, …this does not automatically trigger the
concurrence of the fraud element required under Section 168.2 of the IP Code, as exemplified by the acts mentioned
in Section 168.3 of the same. Ultimately, …there can be no unfair competition without this element [fraud]...
considering too the notoriety of the Shangri-La brand in the real estate industry …, the more reasonable conclusion is
that the former's use of the marks "THE ST. FRANCIS TOWERS" and "THE ST. FRANCIS SHANGRI-LA PLACE"
was meant only to identify, or at least associate, their real estate project/s with its geographical location.”

Tradename Infringement
 Same protection as for trademark
Section 165.3 in relation to Section 153 to 156,IPC
 Only (but big) difference: registration is NOT a requirement for ownership of a tradename
Section 165.2 (a), IPC:
“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.”

In Coffee Partners, Inc. vs. San Francisco Coffee & Roastery, Inc. (G.R. No. 169504, 3 March 2010), the SC squarely
ruled upon the issue of whether petitioner’s use of the trademark "SAN FRANCISCO COFFEE" constitutes
infringement of respondent’s trade name "SAN FRANCISCO COFFEE & ROASTERY, INC.," even if the trade name is
not registered with the Intellectual Property Office (IPO).

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The Supreme Court held that a trade name need not be registered with the IPO before an infringement suit may be
filed by its owner against the owner of an infringing trademark. All that is required is that the trade name is previously
used in trade or commerce in the Philippines.

Section 165.2 (b), IPC

In particular, any subsequent use of the trade name by a third party, whether as a trade name or a mark or collective
mark, or any such use of a similar trade name or mark, likely to mislead the public, shall be deemed unlawful.

Tradename Infringement
Elements: (same with trademark except for 1)
1. Ownership of a tradename; registration with IPO is not required.
2. That the tradename is reproduced, counterfeited, copied, or colorably imitated by the infringer;
3. Use in connection with the sale, offering for sale, or advertising of any goods, business or services, or those that
are related thereto
4. No consent by the tradename owner
5. Likelihood of Confusion

9. Unfair competition

Premise: Protection of one’s goodwill over his/her products/services (not trademark/trade name)

Unfair competition has been defined as the passing off (or palming off) or attempting to pass off upon the public of the
goods or business of one person as the goods or business of another with the end and probable effect of deceiving
the public. (Superior Commercial Enterprises vs. Kunnan, G.R. 169974 [2010])

Is “hoarding” of softdrink or beer bottles to stifle supply a form of unfair competition under the IP Code?
No, it is unfair competition under Article 28 of NCC.

Elements:
1. Confusing similarity in the general appearance of the goods;
2. Intent to deceive the public and defraud a competitor

“True test" of unfair competition:

 whether the acts of the defendant have the intent of deceiving or are calculated to deceive the ordinary buyer
making his purchases under the ordinary conditions of the particular trade to which the controversy relates

Distinctions
“The distinctions between suits for trademark infringement and unfair competition prove useful:
(a) the former is the unauthorized use of a trademark, whereas the latter is the passing off of one's goods as those of
another;
(b) fraudulent intent is unnecessary in the former, while it is essential in the latter; and
(c) in the former, prior registration of the trademark is a pre-requisite to the action, while it is not necessary in the
latter.”
(Co v. Spouses Yeung, G.R. No. 212705 , [September 10, 2014])

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SECTION 169. False Designations of Origin ; False Description or Representation. —

169.1. Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce
any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or
misleading description of fact, or false or misleading representation of fact, which:
(a) Is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or
association of such person with another person, or as to the origin, sponsorship, or approval of his or her
goods, services, or commercial activities by another person; or
(b) In commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic
origin of his or her or another person's goods, services, or commercial activities, shall be liable to a civil action
for damages and injunction provided in Sections 156 and 157 of this Act by any person who believes that he
or she is or is likely to be damaged by such act.

169.2. Any goods marked or labelled in contravention of the provisions of this Section shall not be imported into the
Philippines or admitted entry at any customhouse of the Philippines. The owner, importer, or consignee of goods
refused entry at any customhouse under this section may have any recourse under the customs revenue laws or may
have the remedy given by this Act in cases involving goods refused entry or seized. (Sec. 30, R.A. No. 166a)

Example: Ambush Marketing

Fredco v. Harvard (June 1, 2011)

“Fredco does not have any affiliation or connection with Harvard University, or even with Cambridge, Massachusetts.
Fredco… was not established in 1936, or in the U.S.A. as indicated… in its oblong logo. …riding on the prestige and
popularity of Harvard University, and thus appropriating part of Harvard University's goodwill without the latter's
consent..
“These provisions are intended to protect the right of publicity of famous individuals and institutions from commercial
exploitation of their goodwill by others.”

Uyco vs. Lo (Jan. 28, 2013)

Vicente Lo filed a case against Uyco, et. al. for manufacturing and selling KEROSENE BURNERS with marks that
were allegedly assigned to him (“Casa Hipolito S.A. Portugal, HIPOLITO & SEA HORSE & TRIANGLE DEVICE” etc.)
and marked “Made in Portugal” and “Original Portugal” even though the burners were manufactured in the Philippines
Remedies and Jurisdiction
 Administrative action – IPO-BLA, concurrent with RTC-SCCs
 Civil Action, RTC-SCC concurrent with IPO-BLA
 Criminal Action, exclusive with RTC-SCC
2-5 years imprisonment
P50,000-P200,000 in fine

Reliefs
Section 156. Actions, and Damages and Injunction for Infringement. –

156.1. The owner of a registered mark may recover damages from any person who infringes his rights, and the
measure of the damages suffered shall be either the reasonable profit which the complaining party would have made,
had the defendant not infringed his rights, or the profit which the defendant actually made out of the infringement, or in
the event such measure of damages 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
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the services in connection with which the mark or trade name was used in the infringement of the rights of the
complaining party.

156.2. On application of the complainant, the court may impound during the pendency of the action, sales invoices
and other documents evidencing sales.

156.3. In cases where actual intent to mislead the public or to defraud the complainant is shown, in the discretion of
the court, the damages may be doubled.

156.4. The complainant, upon proper showing, may also be granted injunction.

Section 157. Power of Court to Order Infringing Material Destroyed. –

157.1 In any action arising under this Act, in which a violation of any right of the owner of the registered mark is
established, the court may order that goods found to be infringing be, without compensation of any sort, disposed of
outside the channels of commerce in such a manner as to avoid any harm caused to the right holder, or destroyed;
and all labels, signs, prints, packages, wrappers, receptacles and advertisements in the possession of the defendant,
bearing the registered mark or trade name or any reproduction, counterfeit, copy or colorable imitation thereof, all
plates, molds, matrices and other means of making the same, shall be delivered up and destroyed.

157.2. In regard to counterfeit goods, the simple removal of the trademark affixed shall not be sufficient other than in
exceptional cases which shall be determined by the Regulations, to permit the release of the goods into the channels
of commerce.

Section 158. Damages; Requirement of Notice. - In any suit for infringement, the owner of the registered mark shall
not be entitled to recover profits or damages unless the acts have been committed with knowledge that such imitation
is likely to cause confusion, or to cause mistake, or to deceive. Such knowledge is presumed if the registrant gives
notice
that his mark is registered by displaying with the mark the words '"Registered Mark" or the letter R within a circle or if
the defendant had otherwise actual notice of the registration.

Section 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:

159.1. Notwithstanding the provisions of Section 155 hereof, 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.

159.2. 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.

159.3. 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 of
such newspapers, magazines, or other similar periodicals or in future transmissions of such electronic
communications. The limitations of this subparagraph shall apply only to innocent infringers:…

Provided, That such injunctive relief shall not be available to the owner of the right infringed with respect to an issue of
a newspaper, magazine, or other similar periodical or an electronic communication containing infringing matter where
restraining the dissemination of such infringing matter in any particular issue of such periodical or in an electronic
communication would delay the delivery of such issue or transmission of such electronic communication is customarily
conducted in accordance with the sound business practice, and not due to any method or device adopted to evade
this
section or to prevent or delay the issuance of an injunction or restraining order with respect to such infringing matter.

CASE LAW UPDATES

Seri Somboonsakdikul v. Orlane G.R. No. 188996; February 01, 2017

Facts:
▪ Seri filed an application for registration of the mark “LOLANE” under Class 3 (personal care products)
▪ Orlane S.A. filed an opposition on the ground that the mark “LOLANE” is similar with “ORLANE”

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Issue:
Whether there is confusing similarity between “ORLANE “ and “LOLANE”?
Ruling:
▪ In determining likelihood of confusion the Court must consider:
o Resemblance between the trademarks or colorable imitation
✓Dominancy Test
✓Holistic Test
o Similarity of the goods to which the trademarks are attached
o Likely effect on the purchaser
o Registrant’s express or implied consent
▪ Colorable imitation – similarity in form, content, words, sounds, meaning, special arrangement or general
appearance of the trademark or tradename
▪ No confusing similarity
▪ The suffix LANE is not the dominant feature of Seri’s mark
▪ There are visual differences between LOLANE and ORLANE
▪ LOLANE is stylized with L & A conjoined
▪ ORLANE is in plain block uppercase letters

Wilton Dy and/or Philites v. Koninklijke Philips G.R. No. 186088; March 22, 2017
Facts:
▪ Philites filed a trademark application covering its fluorescent bulb, incandescent light, starter, and ballast.
▪ Philips:
o Filed an opposition
o Violates several provisions of the IP Code.
o Identical with, or confusingly similar to, or constitutes a translation of a well-known mark
Issues:
1. Whether Respondent’s mark is well-known?
2. Whether the mark applied for by Petitioner is identical or confusingly similar with that of Respondent’s?
Ruling:
1. ▪ The “PHILIPS” mark is well-known
▪ In Freco Manufacturing Corporation v Harvard University:
▪ When well-known: If considered to be well-known by a competent authority
▪ Competent authority – Court, Director General, Director of the Bureau of Legal Affairs, any admin agency or
office vested with quasi-judicial or judicial jurisdiction to hear and adjudicate any action to enforce the rights to
a mark.
2. ▪ Determining similarity and likelihood of confusion
o Dominancy test – focuses on similarities of prevalent features
o Holistic or totality test – consideration of the entirety of marks as applied to the product
▪ The mark “PHILITES” bears an uncanny resemblance or confusing similarity with respondent’s mark “PHILIPS”
Ruling:
▪ Ordinary purchaser can conclude an association or relation between the marks
▪ Both trademarks are used in the sale of the same goods
▪ The container or actual wrapper/packaging of Petitioner’s light bulbs show that there is a strong similitude and
likeness
between the two trademarks that will likely cause deception or confusion to the purchasing public

W Land Holding, Inc. v. Starwood Hotels and Resorts Worldwide, Inc.G.R. No. 222366; Dec. 04, 2017
Facts:
▪ In 2005, Starwood Hotels applied for registration of the mark “W”
▪ Class 43 – services for providing food and drink; temporary accommodation; and
▪ Class 44 – medical services; veterinary services; hygienic and beauty care for human beings or animals;
agriculture, horticulture and forestry services
▪ In 2006,W Land applied for registration of its own “W” mark
▪ Class 36 – insurance; financial affairs; monetary affairs; real estate affairs)
▪ Starwood opposed
▪ W Land filed a petition to cancel Starwood’s mark for non-use since it has no hotel or establishment rendering the
services covered by the registration.
Issue:
Whether actual use is a pre-requisite in registrability of a trademark?
Ruling:
▪ Use
o Genuine, not merely token; bona fide use which results or tends to result, into a commercial interaction
▪ Sufficient proof of actual use
o Website showing goods being sold or services being rendered
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 o Use of the mark on an interactive website (for it to be interactive, there should be targeting of Filipino
consumers for it to qualify genuine use)
o Respondent’s “W” mark is prominently displayed in the website

Berris v Abyadang (Oct. 13, 2010)

“The determination of priority of use of a mark is a question of fact. Adoption of the mark alone does not suffice. One
may make advertisements, issue circulars, distribute price lists on certain goods, but these alone will not inure to the
claim of ownership of the mark until the goods bearing the mark are sold to the public in the market. Accordingly,
receipts, sales invoices, and testimonies of witnesses as customers, or orders of buyers, best prove the actual use of
a mark in trade and commerce during a certain period of time.”

Mang Inasal Philippines, Inc. v. IFP Manufacturing Corporation G.R. No. 221717; June 19, 2017
Facts:
▪ IFP filed an application for the registration of the mark
“OK Hotdog Inasal” under Class 30 (flour and preparations made from cereals)
▪ Mang Inasal is the owner of the mark “Mang Inasal, Home of Real Pinoy Style Barbeque and Device” under Class 43
(Services providing food and drink)
o Registered with the IPO in 2006
o Used since 2003
Issue:
Whether OK Hotdog Inasal mark is confusingly similar to the Mang Inasal mark.
Sub-Issue:
Whether “INASAL” can be appropriated as a mark.
Ruling:
▪ Concept of confusion:
o Confusion of goods – product confusion
o Confusion of business – source or origin confusion
▪ Dominancy Test
▪ Holistic or totality test
▪ IFP copied the dominant feature “INASAL” of Mang Inasal
▪ The services of IFP and Mang Inasal are related to each other
▪ An average buyer who comes across the curls marketed under the OK Hotdog Inasal mark is likely to be confused
as to the true source of such curls “The dominant element "INASAL," as stylized in the Mang Inasal mark, is different
from the term "inasal" per se. The term "inasal" per se is a descriptive term that cannot be appropriated. However, the
dominant element "INASAL," as stylized in the Mang Inasal mark, is not. Petitioner, as the registered owner of the
Mang Inasal mark, can claim exclusive use of such element.”

Societe des Produits, Nestle, S.A. v. Puregold Price Club G.R. No. 217194; Sept. 6, 2017
Facts:
▪ Puregold:
o Filed an application for the registration of the trademark “COFFEE MATCH” with the IPO.
o Classified under Class 30 (coffee, tea, cocoa, sugar, artificial coffee, flour, etc.)
▪ Nestle:
o Filed an opposition
o Exclusive owner of the “COFFEE-MATE” trademark
o Confusing similarity between “COFFEE-MATE” and “COFFEE MATCH”
o "COFFEE-MATE" declared as an internationally wellknown mark
Issue:
Whether Respondent’s mark may be registered?
Ruling:
▪ It may be registered.
▪ Determining similarity or likelihood of confusion:
o Dominancy Test – similarity of prevalent features
o Holistic Test – consideration of the entirety of the marks
▪ “COFFEE” is the common dominant feature
▪ IP Code prohibits exclusive registration of generic marks
▪ The word "COFFEE" cannot be exclusively appropriated by either Nestle or Puregold since it is generic or
descriptive of the goods they seek to identify.
▪ Generic or descriptive words are not subject to registration and belong to the public domain
▪ “MATE” v. “MATCH”
o Visual and aural characters are distinguishable
o Phonetic difference

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Juan vas. Juan G.R. No. 221732, August 23, 2017
FACTS:
 Roberto owns a laundry business called, Lavandera Ko. He claims to have used said mark since 1994.
 Subsequently, his brother, Fernando, registered the same mark with the IPO. Thus, he filed an action in RTC
including
the cancellation of trademark registration.
 RTC dismissed the action, stating that neither Robert nor Fernando has the right over the mark Lavandera Ko
because
the true owner of the mark is Santiago Suarez.
 According to RTC, Suarez, in 1942, composed a song called, Lavandera Ko. The RTC took notice of an article on
the Internet.
ISSUE:
Is the RTC correct in its ruling?
RULING:
 Copyright should not be confused with trademark.
 Copyright - intangible, incorporeal right granted by statute to the author or originator of certain literary or artistic
productions
 Trademark - any designation which is adopted and used by a person to denominate goods which he markets, or
services which he renders, or business which he conducts.
 The mark, Lavandera Ko, used by Fernando and Robert, is used as a tradename or service name since the
business
involved consists of rendering laundry services.
 The song, Lavandera Ko, composed by Suarez, is protected by copyright, not trademark.

De La Salle Montessori International of Malolos, Inc. v. De La Salle Brothers Inc. G.R. No. 233073; Feb. 07,
2018
Facts:
▪ Petitioner reserved with the SEC its corporate name De La Salle Montessori International Malolos Inc.
▪ Respondents filed a petition against Petitioner with the SEC to change the latter’s corporate name
▪ Respondents' Argument:
o Petitioner’s corporate name is misleading or confusingly similar
o Have acquired prior right to use the “De La Salle” and “La Salle” names.
o The use of “De La Salle” gives an impression that it is part of the “La Salle” group.
▪ Petitioner’s Argument:
o Respondents cannot claim the exclusive use “De La Salle” because of the ruling in the Lyceum of the
Philippines case.
Issues:
1. Whether there is confusing similarity in corporate names?
2. Whether the Lyceum of the Philippines case is applicable?
Ruling:
▪ There is confusing similarity in corporate names
▪ Test is whether the similarity is such as to mislead a person using ordinary care and discrimination
▪ Similarity in in the parties’ names but also the business they are engaged in
▪ Proof of actual confusion not needed, it is enough that confusion is probable or likely to occur.
▪ The Lyceum of the Philippines case does not apply
▪ “Lyceum”
o Generally refers to a school or institution: Generic term
▪ "De La Salle"
o Means “the room”
o Suggestive or fanciful

Citigroup, Inc. v. Citystate Savings Bank, Inc., G.R. No. 205409, [June 13, 2018]
“Examining these marks, this Court finds that petitioner's marks can best be described as consisting of the
prefix "CITI" added to other words.
“Applying the dominancy test, this Court sees that the prevalent feature of respondent's mark, the golden
lion's head device, is not present at all in any of petitioner's marks. The only similar feature between respondent's
mark and petitioner's collection of marks is the word "CITY" in the former, and the "CITI" prefix found in the latter. This
Court agrees with the findings of the Court of Appeals that this similarity alone is not enough to create a likelihood of
confusion.

Asia Pacific Resources v. Paperone, Inc.,G.R. Nos. 213365-66, [December 10, 2018]
“Relative to the issue on confusion of marks and trade names, jurisprudence has noted two types of
confusion, viz.: (1) confusion of goods (product confusion), where the ordinarily prudent purchaser would be induced
to purchase one product in the belief that he was purchasing the other; and (2) confusion of business (source or origin

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confusion), where, although the goods of the parties are different, the product, …is such as might reasonably be
assumed to originate with the registrant of an earlier product; and the public would then be deceived either into that
belief or into the belief that there is some connection between the two parties, though inexistent.”

“Thus, while there is confusion of goods when the products are competing, confusion of business exists when
the products are non-competing but related enough to produce confusion of affiliation. “This case falls under the
second type of confusion. Although we see a noticeable difference on how the trade name of respondent is being
used in its products as compared to the trademark of petitioner, there could likely be confusion as to the origin of the
products. Thus, a consumer might conclude that PAPER ONE products are manufactured by or are products of
Paperone, Inc. Additionally, …the goods of the parties are obviously related as they are both kinds of paper products.”

Kensonic v. Uni-Line, G.R. Nos. 211820-21 & 211834-35, [June 6, 2018]

“Uni-Line's opposition to Kensonic's ownership of the SAKURA mark insists that the SAKURA mark is not
copyrightable for being generic. Such insistence is unacceptable.
“[T]he controversy revolves around the SAKURA mark which is not a copyright. The distinction is significant. A
mark is any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise,
and includes a stamped or marked container of goods. In contrast, a copyright is the right to literary property as
recognized and sanctioned by positive law; …Obviously, the SAKURA mark is not an artistic or literary work but a sign
used to distinguish the goods or services of one enterprise from those of another.”
“An examination of the pertinent laws also reveals that Uni-Line mistakenly argues that the SAKURA mark
was not capable of registration for being generic. Section 123 (h) of the Intellectual Property Code prohibits the
registration of a trademark that consists exclusively of signs that are generic for the goods or services that they seek
to identify. It is clear from the law itself, therefore, that what is prohibited is not having a generic mark but having such
generic mark being identifiable to the good or service.”
“This, however, is not the situation herein. Although SAKURA refers to the Japanese flowering cherry and is,
therefore, of a generic nature, such mark did not identify Kensonic's goods unlike the mark in Asia Brewery, Inc. v.
Court of Appeals. Kensonic's DVD or VCD players and other products could not be identified with cherry blossoms.
Hence, the mark can be appropriated.”
Based on the foregoing pronouncement in Taiwan Kolin Corporation, Ltd. v. Kolin Electronics, Co., Inc., there
are other sub-classifications present even if the goods are classified under Class 09. For one, Kensonic's goods
belonged to the information technology and audiovisual equipment sub-class, but Uni-Line's goods pertained to the
apparatus and devices for controlling the distribution of electricity sub-class. Also, the Class 09 goods of Kensonic
were
final products but Uni-Line's Class 09 products were spare parts. In view of these distinctions, the Court agrees with
Uni-Line that its Class 09 goods were unrelated to the Class 09 goods of Kensonic.

Kolin v. Kolin (March 25, 2015)

Section 144. Classification of Goods and Services. –
144.1. Each registration, and any publication of the Office which concerns an application or registration effected by the
Office shall indicate the goods or services by their names, grouped according to the classes of the Nice Classification,
and each group shall be preceded by the number of the class of that Classification to which that group of goods or
services belongs, presented in the order of the classes of the said Classification.
144.2. Goods or services may not be considered as being similar or dissimilar to each other on the ground that , in any
registration or publication by the Office, they appear in different classes of the Nice Classification.

Joseph Matal v. Simon Tam 82 U. S. ____ (2017)

Facts:
▪ Tam and his band, The Slants, sought to register the band’s name with the U.S.Trademark
▪ The Office denied the application due to disparaging towards “persons of Asian decent”
▪ The Lanham Act of 1946 prohibits trademarks that consist of or compromise 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.
Issue:
Whether the disparagement clause is invalid under the First Amendment (Freedom of Speech)?
Ruling:
▪ The Disparagement Clause violates the Free Speech Clause.
▪ Trademarks are private, not government speech.
▪ The Disparagement Clause specifically singled out a subset of messages that the government determined to be
offensive and prohibits them, which was plainly unconstitutional viewpoint discrimination.

Q: Is the ruling relevant in the Philippines?

Q: Have we adopted the principle of viewpoint discrimination?
“The traditional view has been to tolerate the viewpoint of the speaker and the content of his or her expression. This
view, thus, restricts laws or regulation that allows public officials to make judgments of the value of such viewpoint or

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message content. This should still be the principal approach.” [Archdiocese of Bacolod v. COMELEC, G.R. No.
205728. January 21,2015]

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