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Pau Duman / Intellectual Property Rights / Prof.

Amador / Page 1

IPL 134 Trademarks claims that this mark is internationally well-known and is
Prof. Vicente B. Amador protected under the Paris Convention.
Senior Partner
Sycip Salazar Hernandez & Gatmaitan 1. Issue: Real Party in Interest?

Acquisition of marks by Registration “SLIHM is not the owner of the Shangri-la hotels, but
through a licensing agreement, operates the same hotels.
Logically, a member of a group of companies cannot claim
SECTION 122. How Marks are Acquired. - The rights ownership over the alleged properties of its mother
in a mark shall be acquired through registration made company or any member of the conglomeration, which has
validly in accordance with the provisions of this law. (Sec. 2- distinct and separate personality of its own. Thus,
A, R A. No. 166a) defendant SLIM cannot claim to legally own the subject
Shangri-la trademark and S-logo by virtue of the alleged
Maintaining trademark rights through actual use ownership of the same by Kuok Group.”

124.2. The applicant or the registrant shall file a declaration 2. Issue: Is there trademark infringement?
of actual use of the mark with evidence to that effect, as
prescribed by the Regulations within three (3) years from “Granting that Kuok’s use of the Shangri-law tradename and
the filing date of the application. Otherwise, the application S-Logo since 1962 benefits defendant-appellant SLIHM as a
shall be refused or the mark shall be removed from the member of the conglomerate, the same is not the actual use
Register by the Director. required under Republic Act No. 166. The law requires the
actual use in commerce of the said tradename and S-Logo
124.3. One (1) application may relate to several goods in the Philippines. The bulk of defendants-appellants’
and/or services, whether they belong to one (l) class or to evidence show that the alleged use of the Shangri-la
several classes of the Nice Classification. tradename was done abroad and not in the Philippines. The
name Shangri-la was only actually used in the Philippines
Developers Group of Companies, Inc. vs. Shangri-la when the hotels with the same name were constructed in
International Hotel Management, Inc. et. al. CA- G. R. CV 1987. Defendants-appellants’ actual use in commerce of the
No. 53351 subject tradename and S-logo in the Philippines commenced
only in 1987.
Developers is the registered owner of the mark Shangri-La
and S Logo in the Philippines under Regn. No. 31904 issued
on May 31, 1983, which it started using in 1982. The alleged defendants-appellants’ publication of
advertisement worldwide is unavailing. To reiterate the
SIHM is the beneficial owner of the Shangri-La and the S Supreme Court ruling – Such right grows out of their actual
Logo, which it started using in 1962 as part of its corporate use. Adoption is not use. One may make advertisements,
name and as a mark for its hotels starting in 1975. It
Pau Duman / Intellectual Property Rights / Prof. Amador / Page 2

issue circulars, give out price lists on certain goods; but Nestle filed notice of opposition to CFC’s application for
these alone would not give exclusive right of use.” FLAVOR MASTER

If this case is decided under the IP Code, will the outcome CFC argued that its trademark, FLAVOR MASTER, is not
be different? confusingly similar with the former's trademarks, MASTER
Secondary meaning or acquired distinctiveness ROAST and MASTER BLEND.
may be gained only with respect to marks under 1. MASTER is either a generic or descriptive word Other
paragraphs (j),(k) and (l) words used with the trademarks are very different from
each other — in meaning, spelling, pronunciation, and
Precedents on Secondary Meaning sound.

• Phil. Nut Industry Inc. vs. Standard Brands Inc., GR
L-23035, July 31, 1975; PLANTERS trademark Bureau of Patents denied CFC’s trademark application, but
• Ang vs. Teodoro, GR No. L-48226, December 14, CA reversed its decision and ruled in favor of CFC.
194; ANG TIBAY trademark
CA held that the physical discrepancies between appellant
Sec. 123.2. As regards signs or devices mentioned in CFC's and appellee's respective logos are so ostensible that
paragraphs (j), (k), and (l), nothing shall prevent the the casual purchaser cannot likely mistake one for the other.
registration of any such sign or device which has become Supreme Court reversed the CA:
distinctive in relation to the goods for which registration is
requested as a result of the use that have been made of it 1. The Court of Appeals applied some judicial precedents
in commerce in the Philippines. which are not on all fours with this case.

The Office may accept as prima facie evidence that the 2. In infringement or trademark cases in the Philippines, no
mark has become distinctive, as used in connection with the set rules can be deduced in ascertaining whether one
applicant's goods or services in commerce, proof of trademark is confusingly similar to or is a colorable imitation
substantially exclusive and continuous use thereof by the of another. Each case must be decided on its own merits.
applicant in commerce in the Philippines for five (5) years
before the date on which the claim of distinctiveness is 2. The cases cited by the Court of Appeals to justify the
made. application of the totality or holistic test to this case
are inapplicable, the factual circumstances being
SOCIETE DES PRODUITS NESTLE, S.A. and NESTLE substantially different.
PHILIPPINES, INC. vs. COURT OF APPEALS and CFC 3.
CORPORATION, G.R. No. 112012. April 4, 2001. BIOFERIN and BUFFERIN for pains caused headaches and
colds are spelled and pronounced differently and are
Nestle’s Marks: MASTER ROAST and MASTER BLEND." prescribed by physicians
CFC’s Marks: "FLAVOR MASTER"
Pau Duman / Intellectual Property Rights / Prof. Amador / Page 3

ALACTA for goods under Class 6 for pharmaceutical and • Philip Morris Inc. et. al. vs. Fortune Tobacco Corp.,
nutritional preparation is distinguishable from ALASKA for July 16, 1993
goods under Class 47 for food ingredients. The latter does
not require prescription. “[T]here is no proof whatsoever that any of plaintiff’s
products which they seek to protect from any adverse effect
4. "The determination of whether two trademarks are of the trademark applied for by defendant, is in actual use
indeed confusingly similar must be taken from the viewpoint and available for commercial purposes anywhere in the
of the ordinary purchasers who are, in general, Philippines.***
undiscerningly rash in buying the more common and less In assailing the justification arrived at by respondent court
expensive household products like coffee, and are therefore when it recalled the writ of preliminary injunction,
less inclined to closely examine specific details of similarities petitioners are of the impression that actual use of their
and dissimilarities between competing products." trademarks in Philippine commercial dealings is not an
indispensable element under Article 2 of the Paris
Convention in that:
5. MASTER is the dominant feature of opposer's mark. (2) …no condition as to the possession of a domiciled or
MASTER is printed predominantly on the label and establishment in the country where protection is claimed
emphasized in TV, radio and printed advertising materials may be required of persons entitled to the benefits of the
with personalities like Robert Jaworski and Atty. Ric Puno Jr., Union for the enjoyment of any industrial property rights.
who are given the titles Master of the Game and Master of Yet petitioner’s perception along this line is nonetheless
the Talk Show. resolved by Sections 2 and 2-A of the Trademark Law which
speaks about the necessity of actual commercial use of the
6. In addition, the word "MASTER" is neither a generic nor a trademark in the local forum: …
descriptive term. As such, said term can not be invalidated
as a trademark and, therefore, may be legally protected. Following universal acquiescence and comity, our municipal
Rather, the term "MASTER" is a suggestive term brought law on trademarks regarding the requirement of actual use
about by the advertising scheme of Nestle. in the Philippines must subordinate an international
agreement inasmuch as the apparent clash is being decided
7. The term "MASTER", therefore, has acquired a certain by a municipal tribunal. … Under the doctrine of
connotation to mean the coffee products MASTER ROAST incorporation as applied in most countries, rules of
and MASTER BLEND produced by Nestle. As such, the use international law are given a standing equal, if not superior,
by CFC of the term "MASTER" in the trademark for its coffee to national legislative enactments.”
product FLAVOR MASTER is likely to cause confusion or
mistake or even to deceive the ordinary purchasers. • But see Section 123(e) * * * In determining
whether a mark is well known, account shall
Territorial character of trademarks be taken of the knowledge of the relevant sector of the
public, rather than of the public at large, including
Pau Duman / Intellectual Property Rights / Prof. Amador / Page 4

knowledge in the Philippines which has been obtained as a • Application process
result of the promotion of the mark; • early filing date or priority date
• Examination process
“Through advertisement, a well-established and well-earned • conflict with other marks applied for or m
reputation may be gained in countries where the trademark registered or with prior users of the trademark
owner has itself no established business connection.
Goodwill may thus be seen to be much less confined
territorially than say, a hundred or fifty years ago. It is no How to Obtain Protection
longer true that a trademark of itself cannot travel to
markets where there is no article to wear the badge and no • Actual use in commerce
trader to offer the article. Advertisement of trademark is • Application for registration
geared toward promotion of use of the marked article and
the attraction of potential buyers and users; by fixing the The old Trademark Law followed an actual use system, while
identity of the marked article in the public mind, it prepares the IP Code followed a hybrid filing-actual use system
the way for growth in such commerce whether the While actual use was required for at least two months
commerce be handled by the trademark owner itself or by before application under old TM law, the IP Code allows
its licensees or independent traders.” application without use and requires it only within three
years from filing date
See also:

SECTION 3. International Conventions and Reciprocity. - SECTION 124. Requirements of Application. - 124.1.
Any person who is a national or who is domiciled or has a The application for the registration of the mark shall be in
real and effective industrial establishment in a country Filipino or in English and shall contain the following:
which is a party to any convention, treaty or agreement (a) A request for registration;
relating to intellectual property rights or the repression of (b) The name and address of the applicant;
unfair competition, to which the Philippines is also a party, (c) The name of a State of which the applicant is a
or extends reciprocal rights to nationals of the national or where he has domicile; and the name of a State
in which the applicant has a real and effective industrial or
Philippines by law, shall be entitled to benefits to the extent commercial establishment, if any;
necessary to give effect to any provision of such convention,
treaty or reciprocal law, in addition to the rights to which (d) Where the applicant is a juridical entity, the law
any owner of an intellectual property right is otherwise under which it is organized and existing;
entitled by this Act. (n) (e) The appointment of an agent or representative, if the
applicant is not domiciled in the Philippines;
Essential Steps to Protection (f) Where the applicant claims the priority of an earlier
application, an indication of:
• Actual use in commerce
Pau Duman / Intellectual Property Rights / Prof. Amador / Page 5

i) The name of the State with whose national office the 124.3. One (1) application may relate to several goods
earlier application was filed or if filed with an office other and/or services, whether they belong to one (l) class or to
than a national office, the name of that office, several classes of the Nice Classification.
ii) The date on which the earlier application was filed, 124.4. If during the examination of the application, the
and Office finds factual basis to reasonably doubt the veracity of
any indication or element in the application, it may require
iii) Where available, the application number of the the applicant to submit sufficient evidence to remove the
earlier application; doubt. (Sec. 5, R.A. No. 166a)
(g) Where the applicant claims color as a distinctive
feature of the mark, a statement to that effect as well as SECTION 127. Filing Date – determines the right of priority
the name or names of the color or colors claimed and an of the application, the examination and publication so it is
indication, in respect of each color, of the principal parts of important to comply with the requirements for a filing date
the mark which are in that color; under this provision
(h) Where the mark is a three-dimensional mark, a
statement to that effect; Question: ABC filed an application for trademark DEF with
the IP Office on 1/1/04 claiming the priority date of its US
(i) One or more reproductions of the mark, as application filed with the USPTO on 6/1/03. Is the applicant
prescribed in the Regulations; entitled to a priority date of 6/1/03.
(j) A transliteration or translation of the mark or of
some parts of the mark, as prescribed in the SECTION 131. Priority Right. - 131.1. An application
Regulations; for registration of a mark filed in the Philippines by a person
(k) The names of the goods or services for which the referred to in Section 3, and who previously duly filed an
registration is sought, grouped according to the classes of application for registration of the same mark in one of those
the Nice Classification, together with the number of the countries, shall be considered as filed as of the day the
class of the said Classification to which each group of goods application was first filed in the foreign country.
or services belongs; and 131.2. No registration of a mark in the Philippines by a
person described in this section shall be granted until such
(l) A signature by, or other self-identification of, the mark has been registered in the country of origin of the
applicant or his representative. applicant.
124.2. The applicant or the registrant shall file a declaration
of actual use of the mark with evidence to that effect, as Limitation on right to sue
prescribed by the Regulations within three (3) years from 131.3. Nothing in this section shall entitle the owner of a
the filing date of the application. Otherwise, the application registration granted under this section to sue for acts
shall be refused or the mark shall be removed from the committed prior to the date on which his mark was
Register by the Director. 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
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Philippines, may, against an identical or confusingly similar identification referred to in the preceding paragraphs, will be
mark, oppose its registration, or petition the cancellation of required, except, where the signature concerns the
its registration or sue for unfair competition, without surrender of a registration
prejudice to availing himself of other remedies provided for
under the law.
SECTION 132.Application Number and Filing Date are given
When a first foreign application is withdrawn when the filing requirements are met
131.4. In like manner and subject to the same conditions
and requirements, the right provided in this section may be SECTION 133. Examination and Publication – examination
based upon a subsequent regularly filed application in the on the issue of registrability, and if approved the trademark
same foreign country: Provided, That any foreign application application will be published in the Official Gazette
filed prior to such subsequent application has been
withdrawn, abandoned, or otherwise disposed of, without
having been laid open to public inspection and without SECTION 126. Disclaimers. The Office may allow or require
leaving any rights outstanding, and has not served, nor the applicant to disclaim an unregistrable component of an
thereafter shall serve, as a basis for claiming a right of otherwise registrable mark but such disclaimer shall not
priority. (Sec. 37, R.A. No. 166a) prejudice or affect the applicant's or owner's rights then
existing or thereafter arising in the disclaimed matter, nor
SECTION 128. Single Registration for Goods and/or such shall disclaimer prejudice or affect the applicant's or
Services- several classes of goods and/or services may be owner's right on another application of later date if the
included in one (1) application, but the application shall disclaimed matter became distinctive of the applicant's or
result in one registration additional fees are imposed owner's goods, business or services. (Sec. 13, R.A. No.
goods determine the protection afforded under the related 166a)
goods doctrine
• declaration of use within three years from filing date Conflict with rival applicants or users
must provide evidence of actual use on specific
products and registration will mention only such • What are the rights of a prior user of a trademark vis
products a vis the registered owner but junior user of an
identical mark?
SECTION 130.Signature and Other Means of Self- • TRIPS Agreement says that “the rights [of a
Identification. registered owner] shall not prejudice any existing
• hand-written signature, printed or stamped signature prior rights.”
• communications made by telefacsimile accepted • Section 236. Preservation of Existing Rights. -
followed by original within thirty days Nothing herein shall adversely affect the rights on
the enforcement of rights in patents, utility models,
No attestation, notarization, authentication, legalization or industrial designs, marks and works, acquired in
other certification of any signature or other means of self- good faith prior to the effective date of this Act. (n)
Pau Duman / Intellectual Property Rights / Prof. Amador / Page 7

• Pursuant to TRIPS, the IP Code makes rights to
trademarks available on the basis of use
• Under Section 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.

The only possible exception may be well-known trademarks,
which may bar other applications “whether or not it is
registered here”

Question: ABC filed an application for trademark DEF with
the IP Office on 6/1/04 claiming the priority date of its US
application filed with the USPTO on 1/1/04. The IP Office
granted the registration when ABC filed its certificate of
registration from the USPTO.

ABC then sued XYZ for trademark infringement for acts
committed for the preceding 4 years during which it used
the mark.

Will the action prosper?
Will your answer be the same if DEF is a well-known mark?
Pau Duman / Intellectual Property Rights / Prof. Amador / Page 8

Intellectual Property Law 134 From creation From filing, From filing,
Trademarks without any formality publication, grant publication,
grant
Comparative Table

Copyright Patents Trademarks
During lifetime and Twenty years from Ten years
50 years after death filing date renewable
Original Technical solution Visible sign without
intellectual of a problem in capable of limitation
creations in the any field of human distinguishing
literary or artistic activity goods or services
domain of enterprise

Stimulation of artistic Promotion of Protection of
creativity for the innovation for free goodwill and
Originality Novelty, inventive Distinctiveness
public good exploitation the public
step and industrial
against
applicability
confusion

Reproduction, Making, using, Use in commerce
dramatization, selling, offering for without consent of
first public sale and importing a mark or a
distribution, dominant feature
rental, public in connection with
display, public sale, offering for
performance other sale, distribution,
communication to advertising in a
public manner likely to
cause confusion
Pau Duman / Intellectual Property Rights / Prof. Amador / Page 9

Section 121.1."Mark" means any visible sign capable of change of form notwithstanding, SPECS for spectacles,
distinguishing the goods (trademark) or services (service DYANSHINE for shoe polish from dye and shine; KWIKSTART
mark) of an enterprise and shall include a stamped or for car batteries; but may be registrable upon proof of
marked container of goods; (Sec. 38, R.A. No. 166a) secondary meaning
• Suggestive – indirect or vague reference to
Is the MGM Roaring Lion registrable as a trademark in the information about the product and requires a
Philippines?
thought process, ROACH MOTEL for cockroach trap,
COPPERTONE for tan oil, PLAYBOY for magazine, CYCLONE
Is the Harley Davidson roaring engine registrable as a for wire fence, STRONGHOLD for nails
trademark in the Philippines? • Arbitrary or Fanciful – usually coined words, ROLEX
for watches, KODAK for cameras
In what ways is a collective mark different from a Why Distinctiveness Matters
trademark?
Section 121.2. "Collective mark" means any visible Pearl & Dean (Phil.), Incorporated vs. Shoemart,
sign designated as such in the application for registration Incorporated, and North Edsa Marketing, Incorporated, G.R.
and capable of distinguishing the origin or any other No. 148222, August 15, 2003
common characteristic, including the quality of goods or Issue: TM infringement, Non-distinctive mark
services of different enterprises which use the sign under Facts:
the control of the registered owner of the collective mark; 1. P&D manufactures advertising display units or light
(Sec. 40, R.A. No. 166a) boxes, which utilize specially printed posters
sandwiched between plastic sheets and illuminated
How are trademarks classified based on their with back lights.
distinctiveness? 2. It secured a TM registration for "Poster Ads" which
Spectrum of Distinctiveness petitioner's president said was a contraction of
• Generic – no trademark significance, cannot be "poster advertising."
exclusively appropriated except as a part of an 3. But the goods covered were "stationeries such as
otherwise composite mark, and even then must be letterheads, envelopes, calling cards and newsletters,"
disclaimed, e.g, Kamiseta, Pancake House which P&D did not actually manufacture.
• Descriptive – tells us the intended purpose, function,
use,size, desirable characteristics of goods, nature of The SC held:
goods or effects upon users,
1. The trademark registration did not cover poster ads.
If at all, the cause of action should have been for
e.g., T-JOISTS for floor and roof systems; self-laudatory unfair competition, a situation which was possible
marks like TASTY for bread, CHAP STICK for lip balm; even if P & D had no registration.
Pau Duman / Intellectual Property Rights / Prof. Amador / Page 10

2. Nonetheless, respondents are not liable for unfair Supreme Court reversed the CA:
competition.
3. There was no evidence that P & D's use of "Poster Ads" 1. The Court of Appeals applied some judicial precedents
was distinctive or has been associated by the public with which are not on all fours with this case.
P&D by reason of long and exclusive use in its business.
"'Poster Ads' was too generic a name so it was difficult to 2. In infringement or trademark cases in the Philippines, no
identify it with any company. Hence, in the mind of the set rules can be deduced in ascertaining whether one
public, the goods and services carrying the trademark trademark is confusingly similar to or is a colorable imitation
"Poster Ads" could not be distinguished from the goods and of another. Each case must be decided on its own merits.
services of other entities.
3. The cases cited by the Court of Appeals to justify the
4. "Poster Ads" cannot acquire secondary meaning. application of the totality or holistic test to this case are
SOCIETE DES PRODUITS NESTLE, S.A. and NESTLE inapplicable, the factual circumstances being substantially
PHILIPPINES, INC. vs. COURT OF APPEALS and CFC different.
CORPORATION, G.R. No. 112012. April 4, 2001. BIOFERIN and BUFFERIN for pains caused headaches and
colds are spelled and pronounced differently and are
Nestle’s Marks: MASTER ROAST and MASTER BLEND." prescribed by physicians
CFC’s Marks: "FLAVOR MASTER" ALACTA for goods under Class 6 for pharmaceutical and
Nestle filed notice of opposition to CFC’s application for nutritional preparation is distinguishable from ALASKA for
FLAVOR MASTER goods under Class 47 for food ingredients. The latter does
not require prescription.
CFC argued that its trademark, FLAVOR MASTER, is not
confusingly similar with the former's trademarks, MASTER 4. "The determination of whether two trademarks are
ROAST and MASTER BLEND. indeed confusingly similar must be taken from the viewpoint
1. MASTER is either a generic or descriptive word Other of the ordinary purchasers who are, in general,
words used with the trademarks are very different from undiscerningly rash in buying the more common and less
each other — in meaning, spelling, pronunciation, and expensive household products like coffee, and are therefore
sound. less inclined to closely examine specific details of similarities
and dissimilarities between competing products."

Bureau of Patents denied CFC’s trademark application, but 5. MASTER is the dominant feature of opposer's mark.
CA reversed its decision and ruled in favor of CFC. MASTER is printed predominantly on the label and
emphasized in TV, radio and printed advertising materials
CA held that the physical discrepancies between appellant with personalities like Robert Jaworski and Atty. Ric Puno Jr.,
CFC's and appellee's respective logos are so ostensible that who are given the titles Master of the Game and Master of
the casual purchaser cannot likely mistake one for the other. the Talk Show.
Pau Duman / Intellectual Property Rights / Prof. Amador / Page 11

6. In addition, the word "MASTER" is neither a generic nor a
descriptive term. As such, said term can not be invalidated
as a trademark and, therefore, may be legally protected.
Rather, the term "MASTER" is a suggestive term brought
about by the advertising scheme of Nestle.

7. 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.

What elements of this art design are registrable as
trademarks and how do you classify them in terms of
distinctiveness ?

Trademarks, Patents and Copyright as Subjects of
Commercial Transactions

SECTION 4. Definitions. - 4.1. The term "intellectual
property rights" consists of:
a) Copyright and Related Rights;
b) Trademarks and Service Marks;
c) Geographic Indications;
d) Industrial Designs;
e) Patents;
f) Layout-Designs (Topographies) of Integrated
Circuits; and
g) Protection of Undisclosed Information (n, TRIPS).

What elements in this pictorial illustration are registrable as 4.2. The term "technology transfer arrangements" refers
trademarks in the Philippines and how do you classify them to contracts or agreements involving the transfer of
in terms of distinctiveness? systematic knowledge for the manufacture of a product, the
application of a process, or rendering of a service including
management contracts; and the transfer, assignment or
Pau Duman / Intellectual Property Rights / Prof. Amador / Page 12

licensing of all forms of intellectual property rights, including
licensing of computer software except computer software Don’ts of IP Licensing
developed for mass market.
SECTION 87. Prohibited Clauses. - Except in cases under
Section 150. License Contracts. – Any license contract Section 91, the following provisions shall be deemed prima
concerning the registration of a mark, or an application facie to have an adverse effect on competition and trade:
therefor, shall provide for effective control by the licensor of
the quality of the goods or services of the licensee in 87.1. Those which impose upon the licensee the obligation
connection with which the mark is used. If the license to acquire from a specific source capital goods, intermediate
contract does not provide for such quality control or if such products, raw materials, and other technologies, or of
quality control is not effectively carried out, the license permanently employing personnel indicated by the licensor;
contract shall not be valid. 87.2. Those pursuant to which the licensor reserves the
right to fix the sale or resale prices of the products
Technology Transfer Arrangement manufactured on the basis of the license;

Section 4.2. The term "technology transfer arrangements" 87.3. Those that contain restrictions regarding the volume
refers to contracts or agreements involving the transfer of and structure of production;
systematic knowledge for the manufacture of a product, the 87.4. Those that prohibit the use of competitive
application of a process, or rendering of a service including technologies in a non-exclusive technology transfer
management contracts; and the transfer, assignment or agreement;
licensing of all forms of intellectual property rights, including 87.5. Those that establish a full or partial purchase option
licensing of computer software except computer software in favor of the licensor;
developed for mass market. 87.6. Those that obligate the licensee to transfer for free
to the licensor the inventions or
Requirement for Enforceability
Section 92. Non-Registration with the Documentation, improvements that may be obtained through the use of the
Information and Technology Transfer Bureau. - Technology licensed technology;
transfer arrangements that conform with the provisions of 87.7. Those that require payment of royalties to the
Sections 86 and 87 need not be registered with the owners of patents for patents which are not used;
Documentation, Information and Technology Transfer 87.8. Those that prohibit the licensee to export the
Bureau. Non-conformance with any of the provisions of licensed product unless justified for the protection of the
Sections 87 and 88, however, shall automatically render the legitimate interest of the licensor such as exports to
technology transfer arrangement unenforceable, countries where exclusive licenses to manufacture and/or
unless said technology transfer arrangement is approved distribute the licensed product(s) have already been
and registered with the Documentation, Information and granted;
Technology Transfer Bureau under the provisions of Section
91 on exceptional cases. (n)
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87.9. Those which restrict the use of the technology
supplied after the expiration of the technology transfer 88.2. Continued access to improvements in techniques and
arrangement, except in cases of early termination of the processes related to the technology shall be made available
technology transfer arrangement due to reason(s) during the period of the technology transfer arrangement;
attributable to the licensee; 88.3. In the event the technology transfer arrangement
87.10. Those which require payments for patents and other shall provide for arbitration, the Procedure of Arbitration of
industrial property rights after their expiration, termination the Arbitration Law of the Philippines or the Arbitration
arrangement; Rules of the United Nations Commission on International
87.11. Those which require that the technology recipient Trade Law (UNCITRAL) or the Rules of Conciliation and
shall not contest the validity of any of the patents of the
technology supplier; Arbitration of the International Chamber of Commerce (ICC)
87.12. Those which restrict the research and development shall apply and the venue of arbitration shall be the
activities of the licensee designed to absorb and adapt the Philippines or any neutral country; and
transferred technology to local conditions or to initiate 88.4. The Philippine taxes on all payments relating to the
research and development programs in connection with new technology transfer arrangement shall be borne by the
products, processes or equipment; licensor. (n)
87.13. Those which prevent the licensee from adapting the
imported technology to local conditions, or introducing
innovation to it, as long as it does not impair the quality Exceptions to the Don’ts and Do’s
standards prescribed by the licensor; SECTION 91. Exceptional Cases. - In exceptional or
87.14. Those which exempt the licensor for liability for non- meritorious cases where substantial benefits will accrue to
fulfillment of his responsibilities under the technology the economy, such as high technology content, increase in
transfer arrangement and/or liability arising from third party foreign exchange earnings, employment generation,
suits brought about by the use of the licensed product or regional dispersal of industries and/or substitution with or
the licensed technology; and use of local raw materials, or in the case of Board of
87.15. Other clauses with equivalent effects. (Sec. 33-C (2), Investments, registered companies with pioneer status,
R.A 165a) exemption from any of the above requirements may be
allowed by the Documentation, Information and Technology
Transfer Bureau after evaluation thereof on a case by case
Do’s of IP Licensing basis. (n)

SECTION 88. Mandatory Provisions. - The following
provisions shall be included in voluntary license contracts:
88.1. That the laws of the Philippines shall govern the
interpretation of the same and in the event of litigation, the
venue shall be the proper court in the place where the
licensee has its principal office;
Pau Duman / Intellectual Property Rights / Prof. Amador / Page 14

1. Under Sec. 37 of TM Law (and now Sec. 165 of IP
Not All Marks are Created Equal Code), trade names are protected against
subsequent use by a third party in a manner likely to
mislead the public.
2. Sec. 18 of Corp. Code also protects the registered
corporate names of Rolex companies in the Phils. A
corporation’s right to use its corporate name is a property
right, which it may protect against the whole world.
3. The ROLEX name and mark is known worldwide as a
leading brand or name for timepieces. It is a world
famous mark.
4. Respondent’s argument that confusion is not likely is
unacceptable because “what is sought to be protected is not
the product alone, but the trade name itself of petitioner.

4. The protection to which the prior user of a corporate
name is entitled is not limited to guarding its goods
You can’t go wrong with a mark like ROLEX or business from actual market competition with
identical or similar products of the parties but
Montres Rolex, S. A. vs. Rolex Scientific Corporation, SEC extends to all cases in which the use of the junior
Decision, April 28, 2004 appropriator of the name is likely to lead to confusion
Issue: Unauthorized use of Rolex trademark and trade name as to source, as where prospective purchasers would
Facts: be misled into thinking that the complaining
1. Petitioner is the registered owner of the trademark corporation has extended its business into the field,
ROLEX for watches in the Phils. and elsewhere. or is in any way connected with the activities of the
ROLEX is used as a trade name. infringer; or when it forestalls the normal expansion
2. ROLEX trademark is registered in numerous countries of its business.
worldwide. It is used as part of the corporate name of a
Rolex subsidiary in the Phils.

3. Respondent used and registered ROLEX as part of its
corporate name in the Phils. ahead of the Rolex subsidiary.
Respondent manufactures laboratory supplies. Respondent
claims that confusion is unlikely because it is using ROLEX
only as part of its corporate name, but not as a trademark.

Held:
Pau Duman / Intellectual Property Rights / Prof. Amador / Page 15

If you have not heard of Intel, you don’t belong to this Why it is given special treatment
century !!!
Pribhdas J. Mirpuri .vs. Court of Appeals, Director of Patents
and the Barbizon Corporation, G.R. No. 114508. November
19, 1999
Issue: Well-known mark
Facts:
1. Escobar applied with the BPTT for the registration of
the trademark "Barbizon" for use in brassieres and
ladies undergarments. She claimed use of the mark
since 1970.
2. Barbizon opposed the application on the basis of its
use of “Barbizon” for apparel.
3. Escobar prevailed but her registration lapsed because
she failed to file affidavit of use.
4. Barbizon opposed Escobar’s re-application. Opposition
was based on new grounds: fraudulent registration in 1974,
violation of Art. 189 (3) the RPC, protection of well-known
mark under Art. 6bis of Paris Convention
SC held:
1. Opposition is not barred by res judicata because
Everybody Loves Microsoft!!! while the first opposition was only based on claim of
confusing similarity second opposition was based on
new grounds not raised in the first case.
2. Barbizon’s opposition is anchored on protection of
well-known mark Article under 6bis of the Paris
Convention

3. The “Barbizon” trademark is well-known because:
(a) It has been used as early as 1933 on products such as
robes, pajamas, lingerie, nightgowns and slips;
(b) It was registered with the USPO in 1934 and 1949; and
variations of the same trademark, i.e., "BARBIZON" with
Bee design and "BARBIZON" with the representation of a
woman were also registered with the USPO in 1961 and
1976;
Pau Duman / Intellectual Property Rights / Prof. Amador / Page 16

(c) It has been used in the Philippines and in many • a mark is considered by Philippine authorities to be
countries all over the world for over forty years. well-known internationally and in the Phils.
(d) "Barbizon" products have been advertised in • the mark may or may not be registered in the Phils.
international publications and the marks registered in 36 • the mark is used for identical or similar goods and
countries worldwide; services to those of the rival user
• the well-known mark bars the rival mark
It doesn’t pay to copy another’s mark
particularly if it’s well known Par (f) covers situation where:

• a mark is considered well-known internationally and
Section 123. Registrability. A mark cannot be registered if in the Phils.
it:* • such mark is also registered in the Phils.
(e) Is identical with, or confusingly similar to, or • the goods or services for which the mark is
constitutes a translation of a mark which is considered by registered are not similar to those in respect of which
the competent authority of the Philippines to be well-known rival mark is applied for
internationally and in the Philippines, whether or not it is • well-known mark bars the rival mark if “connection”
registered here, as being already the mark of a person other with and “prejudice” to owner of mark are shown
than the applicant for registration, and used for identical or Rule102. Criteria. In determining whether a mark is well
similar goods or services: known, the following criteria or any combination thereof
may be taken into account:
Provided, That in determining whether a mark is well- (a) The duration, extent and geographical area of any use of
known, account shall be taken of the knowledge of the the mark, in particular, the duration, extent and
relevant sector of the public, rather than of the public at geographical area of any promotion of the mark, including
large, including knowledge in the Philippines which has been the advertising or publicity and the presentation at fairs, or
obtained as a result of the promotion of the mark; exhibitions, of the goods and services
to which the mark applies;
SECTION 123.Registrability. A mark cannot be registered if (b) the market share, in the Philippines and in other
it:* countries, of the goods and services to which the mark
(f) Is identical with, or confusingly similar to, or applies;
constitutes a translation of a mark considered well-known in ( c) the degree of the inherent or acquired distinction of the
accordance with the preceding paragraph, which is mark;
registered in the Philippines with respect to goods or (d) the quality, image or reputation acquired by the mark;
services which are not similar to those with respect to which (e) the extent to which the mark has been registered in the
registration is applied for: Provided, world
(f) the exclusivity of registration attained by the mark in the
Par (e) covers situation where: world;
Pau Duman / Intellectual Property Rights / Prof. Amador / Page 17

(g) the extent to which the mark has been used in the granted by Members to the nationals of any other country
world; shall be accorded immediately and unconditionally to the
(h) the exclusivity of use attained by the mark in the world; nationals of all other Members.
(i) The commercial value attributed to the mark in the
world; Section 123. Registrability. A mark cannot be registered if
(j) The record of successful protection of the rights in the it:*
mark (e) Is identical with, or confusingly similar to, or
(k)the outcome of litigations dealing with the issue of constitutes a translation of a mark which is considered by
whether the mark is a well-known mark the competent authority of the Philippines to be well-known
(l) the presence or absence of identical or similar marks internationally and in the Philippines, whether or not it is
validly registered for or used on identical or similar goods registered here, as being already the mark of a person other
and services and owned by persons other than the person than the applicant for registration, and used for identical or
claiming that his mark is a well-known mark. similar goods or services:
Protection of Trade Names
• Paris Convention mandates that member countries Provided, That in determining whether a mark is well-
shall protect the trade names of nationals of other known, account shall be taken of the knowledge of the
members “without the obligation of filing or relevant sector of the public, rather than of the public at
registration” large, including knowledge in the Philippines which has been
• Section 18 of the Corporation Code prevents the use obtained as a result of the promotion of the mark;
as corporate names of designations “protected by
law” Why do I have to worry about it?

SECTION 123.Registrability. A mark cannot be registered if
it:*
(f) Is identical with, or confusingly similar to, or
1. What is the national treatment principle in IP law? constitutes a translation of a mark considered well-known in
accordance with the preceding paragraph, which is
Each WTO member shall accord to nationals of other registered in the Philippines with respect to goods or
Members treatment no less favorable than that which it services which are not similar to those with respect to which
accords to its own nationals with regard to the protection of registration is applied for: Provided,
intellectual property
That use of the mark in relation to those goods or services
2. What is the most-favored national treatment in IP would indicate a connection between those goods or
law? services, and the owner of the registered mark: Provided
further, That the interests of the owner of the registered
With regard to the protection of intellectual mark are likely to be damaged by such use;
property, any advantage, favor, privilege or immunity
Pau Duman / Intellectual Property Rights / Prof. Amador / Page 18

You are truly something special Section 121.3. "Trade name" means the name or
designation identifying or distinguishing an enterprise; (Sec.
Rule102. Criteria. In determining whether a mark is well 38, R.A. No. 166a)
known, the following criteria or any combination thereof
may be taken into account: A mark can be a trade name and vice versa
(a) The duration, extent and geographical area of any use of
the mark, in particular, the duration, extent and ROLEX, KODAK, INTEL, MICROSOFT, AMAZON, BARBIZON
geographical area of any promotion of the mark, including Protection of Trade Names
the advertising or publicity and the presentation at fairs, or
exhibitions, of the goods and services • Paris Convention mandates that member countries
to which the mark applies; shall protect the trade names of nationals of other
(b) the market share, in the Philippines and in other members “without the obligation of filing or
countries, of the goods and services to which the mark registration”
applies; • Section 18 of the Corporation Code prevents the use
( c) the degree of the inherent or acquired distinction of the as corporate names of designations “protected by
mark; law”
(d) the quality, image or reputation acquired by the mark;
(e) the extent to which the mark has been registered in the When is it immoral and when deceptive?
world Section 165. Trade Names or Business Names. - 165.1. A
(f) the exclusivity of registration attained by the mark in the name or designation may not be used as a trade name if by
world; its nature or the use to which such name or designation
(g) the extent to which the mark has been used in the may be put, it is contrary to public order or morals and if, in
world; particular, it is liable to deceive trade circles or the public as
(h) the exclusivity of use attained by the mark in the world; to the nature of the enterprise identified by that name.
(i) The commercial value attributed to the mark in the
world;
(j) The record of successful protection of the rights in the
mark No registration is required for protection
(k)the outcome of litigations dealing with the issue of
whether the mark is a well-known mark 165.2.(a) Notwithstanding any laws or regulations
(l) the presence or absence of identical or similar marks providing for any obligation to register trade names, such
validly registered for or used on identical or similar goods names shall be protected, even prior to or without
and services and owned by persons other than the person registration, against any unlawful act committed by third
claiming that his mark is a well-known mark. parties.
Call it by any other name and it won’t mean the same (b) In particular, any subsequent use of the trade name
by a third party, whether as a trade name or a mark or
Pau Duman / Intellectual Property Rights / Prof. Amador / Page 19

collective mark, or any such use of a similar trade name or
mark, likely to mislead the public, shall be deemed unlawful.

Enterprise must be be transferred with the trade name

165.3. The remedies provided for in Sections 153 to 156
and Sections 166 and 167 shall apply mutatis mutandis.
165.4. Any change in the ownership of a trade name shall
be made with the transfer of the enterprise or part thereof
identified by that name. The provisions of Subsections 149.2
to 149.4 shall apply mutatis mutandis.

Domain name as a trademark
A BENCH is what you wear to sit on one

Is it alright to use your name as a mark when you’re dead?

Section 123.1. A mark cannot be registered if it* *(e)
Consists of the 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 lifetime of his widow, if any,
except by the written consent of the widow;

What you hear is what you paid for

A name may be a mark
Pau Duman / Intellectual Property Rights / Prof. Amador / Page 20

If TEXT ALOUD doesn’t tell you what it is, it time to quit and even then, it’s just prima facie after five years!!!
this course!!
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.

If it has a secondary meaning, it must have a primary

Doctrine of secondary meaning or acquired distinctiveness
• limited to marks under paragraphs (j),(k) and (l),
and excludes absolutely unregistrable trademarks
• Phil. Nut Industry Inc. vs. Standard Brands Inc., GR
Don’t use it if it tells you what the product is L-23035, July 31, 1975; PLANTERS
Section 123. A mark cannot be registered if it: • Ang vs. Teodoro, GR No. L-48226, December 14,
(j) consists exclusively of signs or of indications that may 194; ANG TIBAY
serve in trade to designate the kind, quality, quantity
intended purpose, value, geographical origin, time or It’s the consumer’s mind that counts
production of the goods or the rendering of the services or Tests of Strength
other characteristics of the goods or services. • Strength refers to the distinctiveness of the mark
• Fanciful-suggestive-descriptive continuum is often
used to determine strength or weakness of marks
… unless you are ready to use it for the at least five years • It is a question of consumer recognition
before you can claim it as your own • It is not determined by the value of the goods on
123.2 As regards signs or devices mentioned in paragraphs which it is used
(j), (k), and (l), nothing shall prevent the registration of any
such sign or device which has become distinctive in relation …and the more users there are, the less distinctive it is
to the goods for which registration is requested as a result • Strength is also determined by number of third-party
of the use that have been made of it in commerce in the uses
Philippines. • e.g., In a crowded field, MRS. OF THE
WORLD is not likely to be confused with MISS
WORLD, Miss World UK vs. Mrs. American
Pageant, Inc. 856 F. 2d 1445
Pau Duman / Intellectual Property Rights / Prof. Amador / Page 21

colored lines of each side of ADIDAS shoes was registered
Do you order it single or double? on proof of secondary meaning, In re Dassler, 134 USPQ
• A mark may be used singly or in combination with 265
other marks
e.g., company name is used as house mark in addition to If is useful for practical purposes, it doesn’t function as a
another mark on labels: SONY VAIO, KELLOGG POP-TARTS, mark
Kellogg vs. General Foods Corp., 166 USPQ 27
• Multiple marks may be used together by multiple Product and Container Shapes may be protected under
users unfair competition law if following elements are present:
e.g., lawn mower manufactured by Yardman and retailed by • Non-functionality
Sears Roebuck can be • Proof of secondary meaning
• Likelihood of confusion
If it’s difficult to remember, it’s better than one that isn’t e.g., shape of classic automobile, Ferrari SpA vs. McBurnie,
Types of Marks 11 USPQ2d 1843; overall design of sports shoes, L. A. Gear
• Arbitrarily arranged letters given wide protection vs. Thom McAn Shoe, 12 USPQ2d 1001
because they are difficult to remember
• An alphanumeric telephone number may be used a … but if is neither functional nor ornamental, it might be
trademark, but if it includes a generic term, worth a try
composite mark can be descriptive and may be
protected only upon proof of secondary meaning Levi’s pocket tab is a valid trademark, not primarily
• But numbers used to indicate size, capacity, model or functional, and not merely ornamental, Levi Strauss & Co.
style are not used as trademarks vs. Blue Bell, 200 USPQ 434
• Abbreviations and nicknames may function as marks,
e.g., COKE for Coca-Cola, BUD for Budweiser You can’t appropriate what others need to compete
• Slogans can serve as marks, e.g.. Where There’s
Life… There’s Bud, but not Soil It-Wash it-Never- If one manufacturer should make an advance in
Needs Pressing for apparel effectiveness of operation or simplicity of form, or in utility
of color; and if that advance did not entitle him to a
If it is ornamental, keep it as a house décor monopoly by means of a machine or process or a product or
a design patent; and if by means of unfair trade suits he
Ornamental symbols and designs may serve as source could shut out other manufacturers who plainly intended to
designations, but not if exclusively ornamental, e.g., red, share in the benefits of unpatented utilities …
white and blue panels on basketball, In re Soccer Sport
Supply Co., 507 F 2d 1400; colored bands around top of he would be given gratuitously a monopoly more effective
men’s socks is not distinctive, In re Schenectady Varnish than that of the unobtainable patent in a ratio of eternity to
Co., 280 F2d 169; but a mark consisting of three parallel seventeen years – Pope automatic Merchandising Co. vs.
McCrum-Howell Co., 191 F. 979, 223 US 730
Pau Duman / Intellectual Property Rights / Prof. Amador / Page 22

If the Supreme Court said so, you better believe it!

Functional features cannot be appropriated as trademarks
• Asia Brewery Inc. vs. San Miguel Corp., July 5, 1993

Territorial character of trademarks
• Philip Morris Inc. et. al. vs. Fortune Tobacco Corp.,
July 16, 1993
• But see Section 123(e) * * * 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;
Pau Duman / Intellectual Property Rights / Prof. Amador / Page 23

sandwiched between plastic sheets and illuminated
Required Use As Condition For Registration with back lights.
2. It secured a TM registration for "Poster Ads" which
SECTION 124.2. The applicant or the registrant shall file petitioner's president said was a contraction of
a declaration of actual use of the mark with evidence to that "poster advertising."
effect, as prescribed by the Regulations within three (3) 3. But the goods covered by the registration were were
years from the filing date of the application. Otherwise, the "stationeries such as letterheads, envelopes, calling cards
application shall be refused or the mark shall be removed and newsletters," which P&D did not actually manufacture.
from the Register by the Director.
The SC held:
Declaration must specify the goods and outlets where they 1. Under ruling in Faberge Inc. vs. Intermediate Appellate
are sold Court, involving Section 20 of the old Trademark Law, "the
certificate of registration issued by the Director of Patents
Adoption alone of a trademark would not vest exclusive can confer (upon petitioner) the exclusive right to use its
right upon the proprietor own symbol only to those goods specified in the certificate,
subject to any conditions and
Trademark is a creation of use
limitations specified in the certificate . . . . One who has
Required Use As Condition For Maintenance adopted and used a trademark on his goods does not
prevent the adoption and use of the same trademark by
Section 145. * * * the registrant shall file a declaration of others for products which are of a different description."
actual use and evidence to that effect, or shall show valid Faberge, Inc. was correct and was in fact recently reiterated
reasons based on the existence of obstacles to such use, as in Canon Kabushiki Kaisha vs. Court of Appeals.
prescribed by the regulations, within one (1) year from the 2. Assuming arguendo that "Poster Ads" could validly qualify
fifth anniversary of the date of registration of the mark. as a trademark, the failure of P & D to secure a trademark
Otherwise, the mark shall be removed from the Register by registration for light boxes meant that there could not have
the Office. been any trademark infringement since registration was an
essential element thereof.
Pearl & Dean (Phil.), Incorporated vs. Shoemart, 3. Note Sec. 147, “identical or similar”
Incorporated and North Edsa Marketing, Incorporated, G.R.
No. 148222, August 15, 2003

Issue: TM infringement, Class of Goods
Facts:
1. P&D manufactures advertising display units or light
boxes, which utilize specially printed posters
Pau Duman / Intellectual Property Rights / Prof. Amador / Page 24

Canon Kabushiki Kaisha vs. Court of Appeals and NSR 5. In Faberge, Incorporated vs. Intermediate Appellate
Rubber Corporation, G.R. No. 120900. July 20, 2000 Court, the Director of patents allowed the junior user to use
Issue: Related Goods Doctrine the trademark of the senior user on the ground that the
briefs manufactured by the junior user, the product for
Facts: which the trademark BRUTE was sought to be registered,
1. NSR Rubber Corporation (private respondent) filed an was unrelated and non-competing with the products of the
application with the BPTTT for registration of the mark senior user consisting of after shave lotion, shaving cream,
CANON for sandals. deodorant, talcum powder, and toilet soap.
2. Canon Kabushiki Kaisha opposed the application.
3. Canon’s certificates of registration for the mark. CANON
in the Philippines and other countries covering goods in 6. Paris Convention Claim: "A tradename shall be
class 2 (paints, chemical products, toner, and dye stuff). protected in all the countries of the Union without
the obligation of filing or registration, whether or not
it forms part of a trademark.“
7. Kabushi Kaisha Isetan vs. Intermediate Appellate
Court : "Regarding the applicability of Article 8 of the
4. BPTT and CA dismissed the opposition. Paris Convention, this Office believes that there is no
5. Before the SC, Canon claims that its use of CANON on automatic protection afforded an entity whose
paints, chemical products, toner, and dye stuff, which are tradename is alleged to have been infringed through
used as shoe polisher and polishing agents justified the the use of that name as a trademark by a local
rejection of NSR’s application for CANON for sandals. entity.

The SC held:
1. Ordinarily, a trademark is a a property right that is Excused Non-Uses
protected by law.
2. But when a trademark is used by another on product SECTION 152. Non-use of a Mark When Excused. -
in which the opposer does not deal, the use of the 152.1. Non-use of a mark may be excused if caused by
same trademark on the latter's product cannot be circumstances arising independently of the will of the
validly objected to. trademark owner. Lack of funds shall not excuse non-use of
3. Related Goods Doctrine: There is a world of a mark.
difference between the paints, chemical products,
toner, and dyestuff of petitioner and the sandals of 152.2. The use of the mark in a form different from the
private respondent. form in which it is registered, which does not alter its
4. Natural Expansion of Business Doctrine: distinctive character, shall not be ground for cancellation or
It would be taxing one's credibility to aver at this point that removal of the mark and shall not diminish the protection
the production of sandals could be considered as a possible granted to the mark.
"natural or normal expansion" of its business operation".
Pau Duman / Intellectual Property Rights / Prof. Amador / Page 25

152.3. The use of a mark in connection with one or more of SECTION 147. Rights Conferred. - 147.1. The owner
the goods or services belonging to the class in respect of of a registered mark shall have the exclusive right to
which the mark is registered shall prevent its cancellation or prevent all third parties not having the owner's consent
removal in respect of all other goods or services of the same from using in the course of trade identical or similar signs or
class. containers for goods or services which are identical or
similar to those in respect of which the trademark is
Uses by Related Companies registered where such use would result in a likelihood of
confusion. In case of the use of an identical sign for identical
152.4. The use of a mark by a company related with the goods or services, a likelihood of confusion shall be
registrant or applicant shall inure to the latter's benefit, and presumed.
such use shall not affect the validity of such mark or of its
registration: Provided, That such mark is not used in such 147.2. The exclusive right of the owner of a well-known
manner as to deceive the public. If use of a mark by a mark defined in Subsection 123.1(e) which is registered in
person is controlled by the registrant or applicant with the Philippines, shall extend to goods and services which are
respect to the nature and quality of the goods or services, not similar to those in respect of which the mark is
such use shall inure to the benefit of the registrant or registered: Provided, That use of that mark in relation to
applicant. (n) 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
Administrative Actions for TM Enforcement owner of the registered mark are likely to be damaged by
such use. (n)
(i) Opposition
(ii) Cancellation Non-actionable Use
(iii) Administrative actions before the Bureau of Legal SECTION 148. Use of Indications by Third Parties for
Affairs Purposes Other than those for which the Mark is Used. -
(iv) Bureau of Customs Border Control Registration of the mark shall not confer on the registered
owner the right to preclude third parties from using bona
Civil Actions for TM Enforcement fide their names, addresses, pseudonyms, a geographical
name, or exact indications concerning the kind, quality,
(i) Trademark infringement quantity, destination, value, place of origin, or time of
(ii) Unfair competition production or of supply, of their goods or services: Provided,
(iii) False designation of Origin That such use is confined to the purposes of mere
(iv) Criminal Actions identification or information and cannot mislead the public
as to the source of the goods or services. (n)
Section 151. Cancellation - * * *
Rights of Registered Owner
Pau Duman / Intellectual Property Rights / Prof. Amador / Page 26

Section 151.2. Notwithstanding the foregoing (2) Period for filing:
provisions, the court or the administrative agency vested (a)Within five (5) years from the date of the
with jurisdiction to hear and adjudicate any action to registration of the mark under this Act
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 (b) At any time, if the registered mark becomes the
filing of a suit to enforce the registered mark with the generic name for the goods or services, or a portion thereof,
proper court or agency shall exclude any other court or for which it is registered, or has been abandoned, or its
agency from assuming jurisdiction over a subsequently filed registration was obtained fraudulently or contrary to the
petition to cancel the same mark. provisions of this Act, or if the registered mark is being used
by, or with the permission of, the registrant so as to
On the other hand, the earlier filing of petition to cancel the misrepresent the source of the goods or services on or in
mark with the Bureau of Legal Affairs shall not constitute a connection with which the mark is used
prejudicial question that must be resolved before an action
to enforce the rights to same registered mark may be The primary significance of the registered mark to the
decided. relevant public rather than purchaser motivation shall be the
test for determining whether the registered mark has
Section 134 Opposition become the generic name of goods or services on or in
connection with which it has been used
(1) any person who may be damaged by registration; (c) At any time, if the registered owner of the mark
may be a registrant or user of an identical or similar without legitimate reason fails to use the mark within the
mark Philippines, or to cause it to be used in the Philippines by
(2) opposition shall be in writing and verified by the virtue of a license during an uninterrupted period of three
oppositor or by any person on his behalf who knows (3) years or longer.
the facts
(3) specify the grounds on which it is based and include TRADEMARK INFRINGEMENT
a statement of the facts relied upon SECTION 155. Remedies; Infringement. - Any person
(4) certificates of registration of marks registered in other who shall, without the consent of the owner of the
countries or other supporting documents mentioned in the registered mark:
opposition shall be filed 155.1. Use in commerce any reproduction, counterfeit, copy,
(5) within thirty days from publication in the OG, extendible or colorable imitation of a registered mark or the same
up to 120 days container or a dominant feature thereof in connection with
the sale, offering for sale, distribution, advertising of any
Section 151, Cancellation goods or services including other preparatory steps
necessary to carry out the sale of any goods or services on
(1) any person who believes that he is or will be or in connection with which such use is likely to cause
damaged by the registration confusion, or to cause mistake, or to deceive; or
Pau Duman / Intellectual Property Rights / Prof. Amador / Page 27

155.2. Reproduce, counterfeit, copy or colorably imitate a Section 147.2 on well-known mark speaks of “connection”
registered mark or a dominant feature thereof and apply with and “damage” to owner of the mark arising from the
such reproduction, counterfeit, copy or colorable imitation to use of the mark on dissimilar goods
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:
Elements of infringement:
1. Use of registered trademark or colorable imitation thereof
or its dominant feature
(i) for the sale, distribution or advertising of goods and
services and other preparatory steps, or
(ii) on labels, signs, prints, packages, wrappers, receptacles
or advertisements
2. Without the consent of the owner
3. Such use is likely to cause confusion, or to cause
mistake, or to deceive

Exact imitation is not required
(i) Dominant feature test
(ii) Holistic test

Actual sale is not required, preparatory steps are sufficient

Actual confusion is not necessary, likelihood is enough
(i) Confusion as to goods
(ii) Confusion as to origin
Pau Duman / Intellectual Property Rights / Prof. Amador / Page 28

Emerald Garment Manufacturing Corp. vs. Court of Appeals (iii) consumer must depend upon his recollection of the
docketed as G.R. No. 100098, promulgated by the Supreme appearance of the product which he intends to
Court on December 29, 1995 was a litigation between H.D. purchase
Lee Company, Inc. of Delaware, USA and a Philippine (iv) consider the mark as a whole and not as dissected
company, Emerald Garment, whereby private respondent
H.D. Lee Company, as registrant of the trademark "LEE" in
the Philippines sought cancellation of the trademark (v) age, training and education of the usual purchaser, the
"STYLISTIC MR. LEE" from the Supplemental Register in the nature and cost of the article, whether the article is bought
name of the Philippine company.The Bureau of Patents and for immediate consumption and also the conditions under
Trademarks declared that STYLISTIC MR. LEE confusingly which it is usually purchased
similar to MR. LEE on the basis of the dominant-feature test. AMIGO MANUFACTURING, Inc. vs. CLUETT PEABODY CO.,
The word mark LEE is the dominant feature of both marks INC. G.R. No. 139300. March 14, 2001
the use of which is likely to confuse consumers.On the other Peabody:
hand, the HOLISTIC TEST mandates that the entirely of the 1. GOLD TOE, under Certificate of Registration No. 6797
marks in question must be considered in determining dated September 22, 1958;
confusing similarity. (ibid) Quoting Fruit of the Loom, Inc. 2. DEVICE, representation of a sock and magnifying glass
vs. Court of Appeals, 133 SCRA 405 (1984), the Supreme on the toe of a sock, under Certificate of Registration No.
Court advanced that " (I)n determining whether the marks 13465 dated January 25, 1968;
are confusingly similar, a comparison of the words is not the 3. DEVICE, consisting of a 'plurality of gold colored lines
only determinant factor. The trademarks in their entirely as arranged in parallel relation within a triangular area of toe of
they appear in their respective labels or hang tags must the stocking and spread from each other by lines of
also be considered in relation to the goods to which they contrasting color of the major part of the stocking' under
are attached. The discerning eye of the observer must focus Certificate of Registration No. 13887 dated May 9, 1968;
not only on the predominant words but also on the other and
features appearing in both labels in order that they may 4. LINENIZED, under Certificate of Registration No. 15440
draw his conclusion whether one is confusingly similar to dated April 13, 1970.
the other."

Section 155.1 on infringement now speaks of “colorable Amigo: 'GOLD TOP, Linenized for Extra Wear.' It has the
imitation of a registered mark … or a dominant feature dominant color 'white' at the center and a 'blackish brown'
thereof.” background with a magnified design of the sock's garter,
Del Monte Corporation vs. Court of Appeals G.R. No. L- and is labeled 'Amigo Manufacturing Inc., Mandaluyong,
78325, January 25, 1990 Metro Manila, Made in the Philippines'.
(i) Side-by-side comparison is not the final test of
similarity Bureau of Patents & Trademarks and Court of Appeals
(ii) general confusion made by the article upon the eye declared the marks confusingly similar. The Supreme Court
of the casual purchaser who is unsuspicious affirmed.
Pau Duman / Intellectual Property Rights / Prof. Amador / Page 29

a] Peabody presented Bureau registrations indicating the g] The similarities are of such degree, number and quality
dates of first use in the Philippines of the trademark and the that the overall impression given is that the two brands of
devices as follows: a) March 16, 1954, Gold Toe; b) socks are deceptively the same, or at least very similar to
February 1, 1952, the Representation of a Sock and a each another.
Magnifying Glass; c) January 30, 1932, the Gold Toe
Representation; and February 28, 1952, "Linenized." SC rejected respondent’s argument that Peabody did not
present evidence of first use to be entitled to protection.
Since Peabody registered its trademarks under the principal
b] The registration of the above marks in favor of register, the requirement of prior use had already been
respondent constitutes prima facie evidence, which fulfilled. There exists a prima facie presumption of the
petitioner failed to overturn satisfactorily, of respondent's correctness of the contents of the certificates, including the
ownership of those marks, the dates of appropriation and date of first use. Petitioner has failed to rebut this
the validity of other pertinent facts stated therein. presumption.

c] Moreover, the validity of the Certificates of Registration PEARL & DEAN (PHIL.), INCORPORATED vs. SHOEMART,
was not questioned. INCORPORATED, and NORTH EDSA MARKETING,
INCORPORATED, G.R. No. 148222, August 15, 2003
d] Amigo failed to present proof of the date of alleged first Issue: TM infringement
use of the trademark "Gold Top and Device". Thus, even Facts:
assuming that Peabody started using it only on May 15, 1. P&D manufactures advertising display units or light
1962, we can make no finding that Amigo started using it boxes, which utilize specially printed posters
ahead of Peabody. sandwiched between plastic sheets and illuminated
with back lights.
e] While pronunciations of the two marks do create 2. It secured a TM registration for "Poster Ads" which
confusion, respondent’s mark is a combination of the petitioner's president said was a contraction of
abovementioned trademarks registered separately by the "poster advertising." But the goods specified
petitioner in the Philippines and the United States. 3. But the goods covered were "stationeries such as
letterheads, envelopes, calling cards and newsletters,"
which P&D did not actually manufacture.
f] The difference in sound occurs only in the final letter at
the end of the marks. 'GOLD TOE' and 'GOLD TOP' are The SC held:
printed in identical lettering. Both show [a] representation 1. Under ruling in Faberge Inc. vs. Intermediate Appellate
of a man's foot wearing a sock. 'GOLD TOP' blatantly Court, involving Section 20 of the old Trademark Law, "the
incorporates petitioner's 'LINENIZED' which by itself is a certificate of registration issued by the Director of Patents
registered mark." can confer (upon petitioner) the exclusive right to use its
own symbol only to those goods specified in the certificate,
subject to any conditions and limitations specified in the
Pau Duman / Intellectual Property Rights / Prof. Amador / Page 30

certificate . . . . One who has adopted and used a trademark (g) trademark use
on his goods does not prevent the adoption and use of the 3. Trademark infringement; cause of action and elements
same trademark by others for products which are of a
different description." Faberge, Inc. was correct and was in
fact recently reiterated in Canon Kabushiki Kaisha vs. Court
of Appeals.
2. Assuming arguendo that "Poster Ads" could validly qualify a] The cause of action based on the first part of Section 22
as a trademark, the failure of P & D to secure a trademark Elements
registration for specific use on the light boxes meant that b] Generic and descriptive character
there could not have been any trademark infringement since c] Prior users of trademark
registration was an essential element thereof. d] Element of confusion: confusion as to goods and
confusion as to origin
e] Market consideration and price differences
Word- Analysis Approach and Sound Alikes f] Dominant-feature test vs. Holistic test
(i) “SALONPAS” and “LIONPAS,” TEXTWOOD and
DEXWOOD – likely to cause confusion 4. Unfair competition; elements
(ii) "WRANGLER" and "WRANCO," not likely to cause a] elements of an action for unfair competition
confusion b] dissimilarities in the packaging
Nature of the Goods and Channels of Trade
(i) “ESSO” for petroleum and for cigarettes 5. Remedies
Purchasers’ Attitude

Mighty Corporation, Et Al. V. E&J Gallo Winery, et al. SC
G.R. No. 154342, July 14, 2004
Mcdonald’s Corporation and McGeorge Food Industries, Inc.
vs. L.C. Big Mak Burger, Inc et al,G.R. No. 143993, August 1. Petition for certiorari; questions of fact and questions
18, 2004 of law
2. Applicable law at the time the case was filed
1. Remedial law; Petition for Review on Certiorari (a) Section 239
2. Trademark infringement; unfair competition; review (b) Curative statute
of factual findings 3. Article 6bis of the Paris Convention: elements of
(a) nature of business trademark infringement
(b) kind of goods sold 4. First use of trademarks
(c ) use of “Big Mak” as corporate name (a) PX stores
(d) holistic test (b) Affidavit of non-use
(e) dominant-feature test 5. Distinctions between trademark infringement
(f) passing off and unfair competition : Del Monte case
Pau Duman / Intellectual Property Rights / Prof. Amador / Page 31

(a) Elements under Section 22 the goodwill of the said goods, business or services so
(b) wines and cigarettes are related goods identified, which will be protected in the same manner as
(c) Product indicated in the certificate of registration other property rights.
(d) Types of confusion : goods vs. origin: The Supreme
Court adopted these two-part analysis inn Sterling 168.2. Any person who shall employ deception or any other
Products International, Incorporated v. means contrary to good faith by which he shall pass off the
Farbenfabriken Bayer Aktiengesellschaft, et al., and goods manufactured by him or in which he deals, or his
in the recent decision in McDonald’s Corporation business, or services for those of the one having established
McGeorge Food Industries, Inc. vs. L.C. Big Mak such goodwill, or who shall commit any acts calculated to
Burger, Inc., G.R. No. 143993, August 18, 200 produce said result, shall be guilty of unfair competition,
(e) Dominant Feature Test vs. Holistic Test and shall be subject to an action therefor.
(f) McDonald’s Corporation McGeorge Food Industries, 168.3. In particular, and without in any way limiting the
Inc. vs. L.C. Big Mak Burger, Inc., G.R. No. 143993, scope of protection against unfair competition, the following
August 18, 2004, demonstrated that the application shall be deemed guilty of unfair competition:
of one test excludes the other. Here the Supreme
Court applied the test of dominancy and rejected the (a) Any person, who is selling his goods and gives them
holistic test the general appearance of goods of another manufacturer or
Societe Des Produits Nestlé, S.A. v. Court of Appeals, where dealer, either as to the goods themselves or in the wrapping
the Court explicitly rejected the holistic test in this wise: of the packages in which they are contained, or the devices
or words thereon, or in any other feature of their
[T]he totality or holistic test is contrary to the elementary appearance, which would be likely to influence purchasers to
postulate of the law on trademarks and unfair competition believe that the goods offered are those of a manufacturer
that confusing similarity is to be determined on the basis of or dealer, other than the actual manufacturer or dealer, or
visual, aural, connotative comparisons and overall who otherwise clothes the goods with such appearance as
impressions engendered by the marks in controversy as shall deceive the public and defraud another of his
they are encountered in the realities of the marketplace. legitimate trade, or any subsequent vendor of such goods or
(Emphasis supplied) any agent of any vendor engaged in selling such goods with
a like purpose;

Trademark Conflicts and Prior Use (b) Any person who by any artifice, or device, or who
employs any other means calculated to induce the false
SECTION 168. Unfair Competition, Rights, Regulation belief that such person is offering the services of another
and Remedies. - 168.1. A person who has identified in the who has identified such services in the mind of the public;
mind of the public the goods he manufactures or deals in, or
his business or services from those of others, whether or (c) Any person who shall make any false statement in
not a registered mark is employed, has a property right in the course of trade or who shall commit any other act
Pau Duman / Intellectual Property Rights / Prof. Amador / Page 32

contrary to good faith of a nature calculated to discredit the faith of a nature calculated to discredit the goods, business
goods, business or services of another. or services of another
168.4. The remedies provided by Sections 156, 157 and 161
shall apply mutatis mutandis. (Sec. 29, R.A. No. 166a) This is called disparaging use of marks or trade libel in other
Unfair Competition jurisdiction
Examples: Genital Electric for panties – General Electric;
(i) No registration of mark is required in unfair competition Inutel Inside – Intel Inside; Where There’s Bugs, There’s
(ii) Defendant shall have given to his goods the general Life for insecticides – Where There’s Life, There’s Bud
appearance of the goods of the complaining party, either in
the wrapping of the packages in which they are contained,
or the devices or words thereon or in any other feature of
their appearance which would be likely to influence
purchasers to believe that the goods offered are those of
the complaining party;
(iii) the defendant should have clothed the goods with such
appearance for the purpose of deceiving the public and
defrauding the complaining party of his legitimate trade

(iv)Unfair competition usually arises in cases of trade dress
imitation

(v)Plaintiff in an unfair competition action must show that
his goods have acquired goodwill and reputation among
consumers

Section 169.1 False Designation of Origin … any false
(vi) The true test of unfair competition is whether the acts designation of origin, false or misleading description of fact,
of defendant are such as are calculated to deceive the or false or misleading representation of fact, which:
ordinary buyer making his purchases under the ordinary (a) Is likely to cause confusion, or to cause mistake, or to
conditions which prevail in the particular trade to which the deceive as to the affiliation, connection, or association of
controversy relates such person with another person, or as to the origin,
sponsorship, or approval of his or her goods, services, or
(vii)Fraudulent intent on the part of defendant to pass off commercial activities by another person; or
his goods or business as or for that of plaintiff is necessary
Section 168.2 subjects to liability for unfair competition “any
person who shall make any false statement in the course of
trade or who shall commit any other act contrary to good
Pau Duman / Intellectual Property Rights / Prof. Amador / Page 33

(b) In commercial advertising or promotion, (4) where actual intent to mislead the public or to defraud
misrepresents the nature, characteristics, qualities, or the complainant is shown, in the discretion of the court, the
geographic origin of his or her or another person's goods, damages may be doubled
services, or commercial activities, shall be liable to a civil (5) complainant, upon proper showing, may also be granted
action for damages and injunction provided in Sections 156 injunction
and 157 of this Act by any person who believes that he or (6) under Section 157, destruction of infringing goods and
she is or is likely to be damaged by such act. materials used for infringement; removal of infringing mark
not enough to justify release of goods
169.2. Any goods marked or labeled in contravention of the Search and seizure in civil cases now allowed under
provisions of this Section shall not be imported into the Supreme Court circular A.M. NO. 02-1-06-SC
Philippines or admitted entry at any customhouse of the
Philippines. The owner, importer, or consignee of goods SEC. 2. The writ of search and seizure. – Where any delay is
refused entry at any customhouse under this section may likely to cause irreparable harm to the intellectual property
have any recourse under the customs revenue laws or may right holder or where there is demonstrable risk of evidence
have the remedy given by this Act in cases involving goods being destroyed, the intellectual property right holder or his
refused entry or seized. (Sec. 30, R.A. No. 166a) duly authorized representative in a pending civil action for
infringement or who intends to commence such
Remedies and Reliefs In Unfair Competition an action may apply ex parte for the issuance of a writ of
search and seizure directing the alleged infringing defendant
SECTION 156. Actions, and Damages and Injunction or expected adverse party to admit into his premises the
for Infringement. persons named in the order and to allow the search,
(1) damages suffered shall be either inspection, copying, photographing, audio and audiovisual
(i) the reasonable profit which the complaining party would recording or seizure of any document and article specified in
have made, had the defendant not infringed his rights, or the order
(ii) the profit which the defendant actually made out of the
infringement; or Administrative Actions for TM Enforcement

(iii) if not ascertainable, a reasonable percentage based Section 166, Goods Bearing Infringing Marks or Trade
upon the amount of gross sales of the defendant or the Names may be barred from commerce through customs
value of the services in connection with which the mark or exclusion proceeding
trade name was used
(2) impounding during the pendency of the action, sales
invoices and other documents evidencing sales Criminal Penalties for Counterfeiting
(3) where actual intent to mislead the public or to defraud
the complainant is shown, in the discretion of the court, the SECTION 170. Penalties. - Independent of the civil
damages may be doubled and administrative sanctions imposed by law, a criminal
penalty of imprisonment from two (2) years to five (5) years
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and a fine ranging from Fifty thousand pesos (P50,000) to
Two hundred thousand pesos(P200,000), shall be imposed In the United States of America, in the case of Brookfield
on any person who is found guilty of committing any of the Communications Inc. v. West Coast Entertainment Corp, 50
acts mentioned in Section 155, Section 168 and Subsection U.S.P.Q. 2d 1545 (9th Cir. 1999), the Court regarded the
169.1. (Arts. 188 and 189, Revised Penal Code) practice of meta tagging as potential trademark
infringement, stating that such use might suggest
sponsorship or authorization by the trademark owner, or
that consumers looking for the products of the trademark
owner might be misdirected and diverted to a competitor's
website and be at least initially confused in their search for
the trademarked goods

Sale of Trademarks as Keywords

Retailers, for example, have purchased keywords so that
their banner advertisements are displayed whenever certain
trademarked products are the object of a search

Retailers, for example, have purchased keywords so that
Trademarks Online their banner advertisements are displayed whenever certain
trademarked products are the object of a search
VeriSign, estimates that 70% of domain names associated
with top brands are not registered by the true brand owner, In Playboy Enterprises Inc. v. Netscape Communications
prompting rights holders to defensively register their marks Corporation, C.D. Calif., No. SA CV 99-320 AHS (Eex) (June
as domain names 24, 1999), the Court denied preliminary relief stating that
the 'Playboy' and 'Playmate' keywords sold by the defendant
Trademark owners are also facing new types of were used by searchers as common or generic words, not
infringement, including user-traffic diversion through the marks
keywords and meta tags, or unauthorized linking and Pop-Up Advertisements
framing
Pop-up ads are used as marketing tools designed to capture
Metatags consumers' attention, and are based on software designed
to track users' online activity and then deliver targeted
A 'meta tag' or 'meta data' is a keyword or phrase advertising based on their preferences
embedded in a website's HTML (hypertext markup
language) code as a means for Internet search engines to
identify and categorize the contents of the website
Pau Duman / Intellectual Property Rights / Prof. Amador / Page 35

In American case of Washington Post Newsweek Interactive ________________________________________________
Co. v. Gator Corp., Civil Action No.02-909-A, July 16, 2002, ________________________________________________
the Court issued a preliminary injunction that prohibited the ________________________________________________
defendant from enabling third-party advertising to appear ________________________________________________
on a user's computer screen while the user was viewing ________________________________________________
websites owned or affiliated with the plaintiffs, who were ________________________________________________
online news companies. The Court found that the software ________________________________________________
violated the plaintiffs' trademarks by causing pop-up ________________________________________________
advertising to appear in proximity to them. ________________________________________________
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NOTES: ________________________________________________
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