Class Notes For March 24, 2020 PDF

Intellectual Property Law
PCU College of Law, 2nd Sem, AY 2019-2020
Class Notes for March 24, 2020
SUMMARY OF TRADEMARK LAW

NOTE: You may refer to the Class Notes for March 17, 2020 for the latter part of our discussion on
Trademark Law.
Trademark – Any visible sign capable of distinguishing goods or services of an enterprise and
shall include a stamped or marked container of the goods. In relation thereto, a trade name means
a name or designation identifying or distinguishing an enterprise.
• To avoid the need to register separate applications with each national or regional office, the
WIPO administers an international registration system for trademarks. The system is governed
by two treaties:
(1) The Madrid Agreement Concerning the International Registration of Marks; and the
(2) Madrid Protocol.
• There is also the TRIPS Agreement or the Trade Related Aspects of Intellectual Property
Rights.
• Modern authorities on trademark law view trademarks as performing three (3) distinct
functions:
(1) They indicate origin or ownership of the articles to which they are attached;
(2) They guarantee that those articles come up to a certain standard of quality; and
(3) They advertise the articles they symbolize.
• Today, trademark is not merely a symbol of origin and goodwill, it is often the most effective
agent for the actual creation and protection of goodwill. It imprints upon the public mind an
anonymous and impersonal guaranty of satisfaction, creating a desire for further satisfaction.
• Trademark has become an asset of the company.
• As an asset, you can sell the trademark independently of the business.
International Conventions and Reciprocity Rule:
• Any person who:

(a) Is a national of,
(b) Is domiciled in, or
(c) Has a real and effective industrial establishment in a country which:
➢ Is a party to any convention, treaty or agreement relating to IP Rights or repression
of unfair competition, to which the Philippines is a party;
➢ Or extends reciprocal rights to Philippine nationals;
Shall be entitled to IP Code benefits to the extent necessary to give effect to such
convention, treaty or reciprocal law, in addition to the rights to which any owner of an IP
right is otherwise entitled under IPC.
HOWEVER: any condition, restriction, limitation, diminution, requirement, penalty or
burden imposed on a Philippine national seeking IP protection in that foreign country, shall
reciprocally be enforceable upon its nationals within the Philippines.
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Etepha v. Director of Patents

• The objects of a trademark are “to point out distinctly the origin or ownership of the articles to
which it is affixes, to secure to him who has been instrumental in bringing into market a superior
article or merchandise, the fruit of his industry and skill, and to prevent fraud and imposition.”
• Confusion is likely between trademarks, however, only if their overall presentations in any of
the particulars: of sound, appearance or meaning are such as would lead the purchasing public
into believing that the products to which the marks are applied emanated from the same source.
Standard of REGISTRABILITY – distinctiveness.
• The names and denominations generally used in commerce to designate the class of goods or
merchandise cannot be the subject of a trademark.
Ang Tibay v. Teodoro

• “Ang Tibay” is not a descriptive term within the meaning of the Trademark Law but rather a
fanciful or coined phrase which may properly and legally be appropriated as a trademark or
tradename.
How are marks acquired?

• Under the Intellectual Property Code, it is through registration.
• Under RA 166, it is through actual use.
Transitional problems because of the shift:

• Under the old law, local applicants were required to use the mark for at least 2 months prior to
the filing of the application.
• The rule on prior use entailed a risky undertaking because you need to build the business and
spend for investments, overhead costs for at least two (2) months. Within the same period,
someone else might use the mark sought to be registered.
• Under RA 166:
➢ Prior use was the basis of ownership of the trademark.
➢ Prior user in Philippine commerce shall own the trademark.
➢ Prior user in Philippine commerce will prevail as against a registered non-user.
EXCEPT: internationally well-known mark.
• The law changed because the Philippines became a party to the Paris Convention. The Paris
Convention required us to adhere to the “national treatment” principle.
• “National Treatment” – giving others the same treatment as one’s own nationals. This is similar
to the anti-discrimination clause.
What marks may NOT BE REGISTERED?

• Sec. 123 enumerates the marks that may not be registered. In general, the marks so enumerated
are not distinctive; i.e., incapable of pointing out the source of goods or services.
• The enumeration can be summarized into the following categories:
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➢ Deceptive – suggests a false connection.
➢ Flag/coat of arms -- Paris Convention makes it an obligation not to allow registration
of flag or national symbols. These are outside the commerce of men.
BUT: Some countries have acquired a reputation for producing goods of superior
quality. Just remember that the country’s flag is used, not as a trademark, but as an
indicator of the country of origin of the goods. (ex: Switzerland)
➢ Name, portrait, or signature identifying a particular living individual.
➢ Identical with a registered mark, or a mark with an earlier filing/priority date. It is crucial
to file ASAP because the owner of a mark with an earlier filing date would prevail as
against the owner of a mark with a later filing date. Time is critical and essential.
➢ Well-known mark. Under the IP Code, only registered internationally well-known
marks in the Philippines can oppose on the ground of dilution.
➢ Generic
➢ Become customary or usual to designate the goods or services in everyday language.
This is called “genericide” wherein marks that used to be distinctive lose their
distinctiveness because of popularity of the mark.
How do you know if there has been “genericide”? – usual basis is whether the mark has
been included in the dictionary. Some companies spend a substantial amount of money
checking dictionaries.
NOTE: Xerox and Kodak are arbitrary trademarks. The terms were coined by the
manufacturers. In reality, arbitrary trademarks are entitled to the strongest protection. In
the Philippins, the more arbitrary the trademark is, the more we think we have license
to use it.
➢ Characteristics of the goods or services. These terms do not point to the source or origin
of the goods.
➢ Contrary to public order or morality.
General rule:
• The enumeration under Section 123 lists marks that cannot be registered because these do not
meet the standards of distinctiveness.
Exception:
• Certain marks may be registered provided they acquired secondary meaning.
What are these marks?

(1) Descriptive marks
(2) Shapes
(3) Colors
→ While not registrable at first instance because they are deemed non-distinctive, they
may be registered provided they have acquired secondary meaning.
Doctrine of Secondary Meaning
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• A word or phrase originally incapable of exclusive appropriation with reference to an article on
the market because geographically or otherwise descriptive, might nevertheless have been used
so long and so exclusively by one producer with reference to his article that, in that trade and
to that branch of the purchasing public, the word or phrase has come to mean that the article
was his product.
Kabushi Kaisha Isetan v. IAC

• The Paris Convention for the Protection of Industrial Property does not automatically exclude
all countries of the world which have signed it from using a tradename which happens to be
used in one country.
• The Paris Convention clearly indicated conditions which must exist before any trademark
owner can claim and be afforded rights:
(1) The mark must be internationally known or well-known;
(2) The subject of the right must be a trademark, not a patent or copyright or anything else;
(3) The mark must be for use in the same or similar kinds of goods; and
(4) The person claiming must be the owner of the mark.
Dominancy Test – Sets sight on the similarity of the prevalent features of the competing
trademarks that might cause confusion and deception, thus constitutes infringement. Under this
norm, the question at issue turns on whether the use of the mark involved would be likely to cause
confusion or mistake in the minds of the public or deceive purchasers.
Holistic Test – Entails a consideration of the entirety of the marks as applied to the products,
including the labels and packaging, in determining confusing similarity.
Filing Date – Date you actually filed the application, PROVIDED, you met all the minimum
requirements under Sec. 127.
→ The IPO enforces this strictly. If inadvertently, the duty officer of the day of the IPO
gave you a filing date but it turns out that you did not submit the list of goods and
services, when the application is submitted to the trademark examiner, the TE will
revoke your filing date.
→ When you submit a new list of goods and services (this time, your submission is
complete), you are given a new filing date. It is considered as a new application.
→ It takes about six (6) to eight (8) months before your application is assigned to an
examiner. So there is a probability that within the timeframe, somebody else filed an
application and would have an earlier filing date, assuming the minimum
requirements are met.
→ As between a revoked filing date and someone else’s earlier filing date, the latter will
prevail.
Priority Date – Date when you filed a foreign application for the same mark in another country,
a Paris Convention country, or a TRIPS country. Then file the application in the Philippine within
six (6) months, you can obtain the earlier foreign filing date as your filing date in the Philippines.
The law will deem your application filed as of that date of filing of the foreign application. But in
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order for you to avail of the foreign priority date, you must have filed the Philippine application
within six (6) months from the time you filed the foreign application.
• Priority dates are important because as between an earlier filing date and an earlier priority date,
the priority date prevails.
Requirements for claim of priority:

(1) Within six (6) months from application abroad;
(2) Certified copy of the application and English translation; and
(3) Submission of foreign registration.
NB: Under Sec. 131 of the IP Code, there is no six (6) month limitation. This is an error, or might
have been an inadvertent mistake, because priority date is actually a Convention obligation (Paris
Convention). To resolve this, the IPO issued an administrative circular that clarifies that priority
date can only be claimed if the Philippine application is filed within six (6) months.
BASIS:
(a) Principle of reciprocity – to construe IP Code as providing for limitless time would be
contrary to national interest.
(b) Convention obligation – the domestic law provision that implements the international
treaty obligation should be read in conjunction with international treaty.
Examination – Determination of whether an applicant has complied with the formal and
substantive (whether or not a mark is registrable) requirements of registration.
Opposition – the law does not require the oppositor to be a trademark owner, so long as he will
sustain damage by the registration, he may oppose.
CASES (quoted verbatim):
Gabriel v. Perez
• The exclusive distributor does not acquire any proprietary interest in the principal's trademark.
• Petitioner would also anchor her claim of exclusive ownership of the trademark in question on
the fact that she defrayed substantial expenses in the promotion of respondent's soap as covered
by the trademark "WONDER" and the printing of the packages which she further claimed to have
been designed thru her efforts as she was the one who hired the services of an artist who created
the design of the said packages and trademark. Such claim was disposed correctly by respondent
Director of Patents, thus:
"Petitioner's act in defraying substantial expenses in the promotion of the
Respondent's goods and the printing of the packages are the necessary or essential
consequences of Paragraph 6 of the agreement because, anyway, those activities are
normal in the field of sale and distribution, as it would redound to her own benefit as
distributor, and those acts are incumbent upon her to do. While it may be argued that sale
by the Petitioner may be regarded as trademark use by her. nevertheless it should also be
regarded that such sale is a consequence of the 'Exclusive Distributorship Agreement'
and it inured to the benefit of the Respondent because it was his trademark that was being
used. But this does not result in the Respondent's surrender in her favor of the right to
register the trademark in her own name. What would happen if the first five years' period
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terminates and the Respondent decides not to continue with the agreement under
Paragraph 1 thereof? What trademark would be use if he himself assumes the distribution
thereof or if he contracts with another entity or person for exclusive distributorship?"
Distileria Washington v. La Tondeña

• Since the Court has found that the bottles have been transferred by way of sale, then La Tondeña
has relinquished all its proprietary rights over the bottles in favor of Distilleria Washington who
has obtained them in due course. Now as owner, it can exercise all attributes of ownership over the
bottles. This is the import of the decision that La Tondeña had transferred ownership over its
marked bottles or containers when it sold its gin products to the public. While others may argue
that Section 5 is applicable only to the immediate transferee of the marked bottles or container, this
matter is best discussed where the applicability of Sec. 5, R.A. 623 is squarely raised. It must be
recalled, however, that this is a case of replevin, not a violation of the "trademark protection of the
registrant" under R.A. 623 or of the Trademark Law.|||
• One last point. It may not be amiss to state that La Tondeña is a big and established distillery which
already has captured a big share of the gin market, estimated to be 90%. Distilleria Washington, on
the other hand, together with other small distillers — around 40 in number — concedes that it
cannot fight this giant, but only asks a share of the market. It cannot afford to manufacture its own
bottles and just have to rely on recycled bottles to sell its products. To disallow the use of these
recycled products would necessarily deprive it a share of the market which La Tondeña seeks to
monopolize.
• We recognize the role of large industry in the growth of our nascent economy. However, small
industries likewise play a vital role in economic growth, playing a significant part in the success of
such tiger economies as Korea, Taiwan and Thailand. Industries, big and small, should adopt
symbiotic relationship, not the animosity of Goliath and David. Our holding today merely
recognizes that in the country's march toward economic development and independence, it is
essential that a balance protecting small industries and large scale businesses be maintained.
Unno Commercial v. General Milling

• The right to register trademark is based on ownership. When the applicant is not the owner of
the trademark being applied for, he has no right to apply for the registration of the
same. Under the Trademark Law only the owner of the trademark, trade name or service mark
used to distinguish his goods, business or service from the goods, business or service of others is
entitled to register the same.
• The term owner does not include the importer of the goods bearing the trademark, trade name,
service mark, or other mark of ownership, unless such importer is actually the owner thereof in
the country from which the goods are imported. A local importer, however, may make application
for the registration of a foreign trademark, trade name or service mark if he is duly authorized by
the actual owner of the name or other mark of ownership.
Birkenstock v. Phil Shoe Expo

• It must be emphasized that registration of a trademark, by itself, is not a mode of acquiring
ownership. If the applicant is not the owner of the trademark, he has no right to apply for its
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registration. Registration merely creates a prima facie presumption of the validity of the
registration, of the registrant's ownership of the trademark, and of the exclusive right to the use
thereof. Such presumption, just like the presumptive regularity in the performance of official
functions, is rebuttable and must give way to evidence to the contrary.
• 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.
Shangri-La v. DGCI
• Under the provisions of the former trademark law, R.A. No. 166, as amended, which was in effect
up to December 31, 1997, hence, the law in force at the time of respondent's application for
registration of trademark, the root of ownership of a trademark is actual use in commerce. Section
2 of said law requires that before a trademark can be registered, it must have been actually used
in commerce and service for not less than two months in the Philippines prior to the filing of an
application for its registration.
• Registration, without more, does not confer upon the registrant an absolute right to the registered
mark. The certificate of registration is merely a prima facie proof that the registrant is the owner
of the registered mark or trade name. Evidence of prior and continuous use of the mark or trade
name by another can overcome the presumptive ownership of the registrant and may very well
entitle the former to be declared owner in an appropriate case.
• Ownership of a mark or trade name may be acquired not necessarily by registration but by
adoption and use in trade or commerce. As between actual use of a mark without registration,
and registration of the mark without actual use thereof, the former prevails over the latter. For a
rule widely accepted and firmly entrenched, because it has come down through the years, is that
actual use in commerce or business is a pre-requisite to the acquisition of the right of ownership.
• While the present law on trademarks has dispensed with the requirement of prior actual use at
the time of registration, the law in force at the time of registration must be applied, and thereunder
it was held that as a condition precedent to registration of trademark, trade name or service mark,
the same must have been in actual use in the Philippines before the filing of the application for
registration. Trademark is a creation of use and therefore actual use is a pre-requisite to exclusive
ownership and its registration with the Philippine Patent Office is a mere administrative
confirmation of the existence of such right.
• By itself, registration is not a mode of acquiring ownership. When the applicant is not the owner
of the trademark being applied for, he has no right to apply for registration of the same.
Registration merely creates a prima facie presumption of the validity of the registration, of the
registrant's ownership of the trademark and of the exclusive right to the use thereof. Such
presumption, just like the presumptive regularity in the performance of official functions, is
rebuttable and must give way to evidence to the contrary.
• ||| One who has imitated the trademark of another cannot bring an action for infringement,
particularly against the true owner of the mark, because he would be coming to court with unclean
hands. Priority is of no avail to the bad faith plaintiff. Good faith is required in order to ensure that
a second user may not merely take advantage of the goodwill established by the true owner.|||
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• However, while the Philippines was already a signatory to the Paris Convention, the IPC only
took effect on January 1, 1988, and in the absence of a retroactivity clause, R.A. No. 166 still
applies. Under the prevailing law and jurisprudence at the time, the CA had not erred in ruling
that:
The Paris Convention mandates that protection should be afforded to
internationally known marks as signatory to the Paris Convention, without regard as to
whether the foreign corporation is registered, licensed or doing business in the
Philippines. It goes without saying that the same runs afoul to Republic Act No. 166,
which requires the actual use in commerce in the Philippines of the subject mark
or devise. The apparent conflict between the two (2) was settled by the Supreme Court
in this wise —
"Following universal acquiescence and comity, our municipal law on
trademarks regarding the requirement of actual use in the Philippines must
subordinate an international agreement inasmuch as the apparent clash is
being decided by a municipal tribunal (Mortensen vs. Peters, Great Britain, High
Court of Judiciary of Scotland, 1906, 8 Sessions 93; Paras, International Law
and World Organization, 1971 Ed., p. 20). Withal, the fact that international law
has been made part of the law of the land does not by any means imply the
primacy of international law over national law in the municipal sphere. Under
the doctrine of incorporation as applied in most countries, rules of international
law are given a standing equal, not superior, to national legislative enactments
(Salonga and Yap, Public International Law, Fourth ed., 1974, p.
16)." [Emphasis supplied]
• Consequently, the petitioners cannot claim protection under the Paris Convention. Nevertheless,
with the double infirmity of lack of two-month prior use, as well as bad faith in the respondent's
registration of the mark, it is evident that the petitioners cannot be guilty of infringement. It would
be a great injustice to adjudge the petitioners guilty of infringing a mark when they are actually
the originator and creator thereof.
Asia Brewery v. CA
• The main thrust of SMC's complaint is not infringement of its trademark, but unfair competition
arising from the allegedly "confusing similarity" in the general appearance or trade dress of ABI's
BEER PALE PILSEN beside SMC's SAN MIGUEL PALE PILSEN.
• SMC claims that the "trade dress" of BEER PALE PILSEN is "confusingly similar" to its SAN
MIGUEL PALE PILSEN because both are bottled in 320 ml. steinie type, amber-colored bottles
with white rectangular labels.
• However, when as in this case, the names of the competing products are clearly different and their
respective sources are prominently printed on the label and on other parts of the bottle, mere
similarity in the shape and size of the container and label, does not constitute unfair competition.
The steinie bottle is a standard bottle for beer and is universally used. SMC did not invent it nor
patent it. The fact that SMC's bottle is registered under R.A. No. 623 (as amended by RA 5700, An
Act to Regulate the Use of Duly Stamped or Marked Bottles, Boxes, Casks, Kegs, Barrels and
Other Similar Containers) simply prohibits manufacturers of other foodstuffs from the unauthorized
use of SMC's bottles by refilling these with their products. It was not uncommon then for products
such as patis (fish sauce) and toyo (soy sauce) to be sold in recycled SAN MIGUEL PALE PILSEN
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bottles. Registration of SMC's beer bottles did not give SMC a patent on the steinie or on bottles of
similar size, shape or color.
• Moreover, SMC's brand or trademark: "SAN MIGUEL PALE PILSEN" is not infringed by ABI's
mark: "BEER NA BEER" or "BEER PALE PILSEN." ABI makes its own bottle with a bulging
neck to differentiate it from SMC's bottle, and prints ABI's name in three (3) places on said bottle
(front, back and bottle cap) to prove that it has no intention to pass off its "BEER" as "SAN
MIGUEL."
• There is no confusing similarity between the competing beers for the name of one is "SAN
MIGUEL" while the competitor is plain "BEER" and the points of dissimilarity between the two
outnumber their points of similarity.
• Petition ABI has neither infringed SMC's trademark nor committed unfair competition with the
latter's SAN MIGUEL PALE PILSEN product. While its BEER PALE PILSEN admittedly
competes with the latter in the open market, the competition is neither unfair nor fraudulent. Hence,
we must deny SMC's prayer to suppress it.
Del Monte Corp v. CA

• We also note that the respondent court failed to take into consideration several factors which should
have affected its conclusion, to wit: age, training and education of the usual purchaser, the nature
and cost of the article, whether the article is bought for immediate consumption and also the
conditions under which it is usually purchased. Among these, what essentially determines the
attitude of the purchaser, specifically his inclination to be cautious, is the cost of the goods. To be
sure, a person who buys a box of candies will not exercise as much care as one who buys an
expensive watch. As a general rule, an ordinary buyer does not exercise as much prudence in buying
an article for which he pays a few centavos as he does in purchasing a more valuable
thing. Expensive and valuable items are normally bought only after deliberate, comparative and
analytical investigation. But mass products, low priced articles in wide use, and matters of everyday
purchase requiring frequent replacement are bought by the casual consumer without great care. In
this latter category is catsup.
• At that, even if the labels were analyzed together it is not difficult to see that the Sunshine label is
a colorable imitation of the Del Monte trademark. The predominant colors used in the Del Monte
label are green and red-orange, the same with Sunshine. The word "catsup" in both bottles is printed
in white and the style of the print/letter is the same. Although the logo of Sunshine is not a tomato,
the figure nevertheless approximates that of a tomato.
• As previously stated, the person who infringes a trade mark does not normally copy out but only
makes colorable changes, employing enough points of similarity to confuse the public with enough
points of differences to confuse the courts. What is undeniable is the fact that when a manufacturer
prepares to package his product, he has before him a boundless choice of words, phrases, colors
and symbols sufficient to distinguish his product from the others. When as in this case, Sunshine
chose, without a reasonable explanation, to use the same colors and letters as those used by Del
Monte though the field of its selection was so broad, the inevitable conclusion is that it was done
deliberately to deceive
McDonald’s v. MacJoy
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• Essentially, the issue here is whether there is a confusing similarity between the MCDONALD'S
marks of the petitioner and the respondent's "MACJOY & DEVICE" trademark when applied to
Classes 29 and 30 of the International Classification of Goods, i.e., food and ingredients of food.
• In determining similarity and likelihood of confusion, jurisprudence has developed two tests,
the dominancy test and the holistic test. The dominancy test focuses on the similarity of the
prevalent features of the competing trademarks that might cause confusion or deception. In
contrast, the holistic test requires the court to consider the entirety of the marks as applied to the
products, including the labels and packaging, in determining confusing similarity. Under the latter
test, a comparison of the words is not the only determinant factor.
• By reason of the respondent's implausible and insufficient explanation as to how and why out of
the many choices of words it could have used for its trade-name and/or trademark, it chose the
word "MACJOY," the only logical conclusion deducible therefrom is that the respondent would
want to ride high on the established reputation and goodwill of the MCDONALD's marks, which,
as applied to petitioner's restaurant business and food products, is undoubtedly beyond
question.|||
Taiwan Kolin v. Kolin Electronics

• While both competing marks refer to the word "KOLIN" written in upper case letters and in bold
font, the Court at once notes the distinct visual and aural differences between them: Kolin
Electronics' mark is italicized and colored black while that of Taiwan Kolin is white in pantone red
color background. The differing features between the two, though they may appear minimal, are
sufficient to distinguish one brand from the other.
• It cannot be stressed enough that the products involved in the case at bar are, generally speaking,
various kinds of electronic products. These are not ordinary consumable household items, like
catsup, soy sauce or soap which are of minimal cost. The products of the contending parties are
relatively luxury items not easily considered affordable. Accordingly, the casual buyer is
predisposed to be more cautious and discriminating in and would prefer to mull over his purchase.
Confusion and deception, then, is less likely.
Seri v. Orlane
• Second, as to the aural aspect of the marks, LOLANE and ORLANE do not sound alike. Etepha
v. Director of Patents, et al. finds application in this case. In Etepha, we ruled that there is no
confusing similarity between PERTUSSIN and ATUSSIN. The Court considered among other
factors the aural differences between the two marks as follows:
5. As we take up Pertussin and Atussin once again, we cannot
escape notice of the fact that the two words do not sound alike — when
pronounced. There is not much phonetic similarity between the
two. The Solicitor General well-observed that in Pertussin the
pronunciation of the prefix "Per", whether correct or incorrect,
includes a combination of three letters P, e and r; whereas, in
Atussin the whole starts with the single letter A added to suffix
"tussin". Appeals to the ear are dissimilar. And this, because in a
word combination, the part that comes first is the most
pronounced. An expositor of the applicable rule here is the decision in
the Syrocol-Cheracol controversy. There, the ruling is that trademark
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Syrocol (a cough medicine preparation) is not confusedly similar to
trademark Cheracol (also a cough medicine preparation). Reason: the
two words "do not look or sound enough alike to justify a holding of
trademark infringement", and the "only similarity is in the last
syllable, and that is not uncommon in names given drug compounds".
(Citation omitted, emphasis supplied.)
• Similar to Etepha, appeals to the ear in pronouncing ORLANE and LOLANE are dissimilar. The
first syllables of each mark, i.e., OR and LO do not sound alike, while the proper pronunciation
of the last syllable LANE — "LEYN" for LOLANE and "LAN" for ORLANE, being of French
origin, also differ. We take exception to the generalizing statement of the Director General, which
was affirmed by the CA, that Filipinos would invariably pronounce ORLANE as "ORLEYN."
This is another finding of fact which has no basis, and thus, justifies our reversal of the decisions
of the IPO Director General and the CA. While there is possible aural similarity when certain
sectors of the market would pronounce ORLANE as "ORLEYN," it is not also impossible that
some would also be aware of the proper pronunciation — especially since, as respondent claims,
its trademark ORLANE has been sold in the market for more than 60 years and in the Philippines,
for more than 40 years.
Lyceum of the Philippines v. CA

• We conclude and so hold that petitioner institution is not entitled to a legally enforceable
exclusive right to use the word "Lyceum" in its corporate name and that other institutions may
use "Lyceum" as part of their corporate names. To determine whether a given corporate name is
"identical" or "confusingly or deceptively similar" with another entity's corporate name, it is not
enough to ascertain the presence of "Lyceum" or "Liceo" in both names. One must evaluate
corporate names in their entirety and when the name of petitioner is juxtaposed with the names
of private respondents, they are not reasonably regarded as "identical" or "confusingly or
deceptively similar" with each other.|||
UFC Philippines v. Barrio Fiesta

• We agree that respondent's mark cannot be registered. Respondent's mark is related to a product,
lechon sauce, an everyday all-purpose condiment and sauce, that is not subjected to great scrutiny
and care by the casual purchaser, who knows from regular visits to the grocery store under what
aisle to find it, in which bottle it is contained, and approximately how much it costs. Since
petitioner's product, catsup, is also a household product found on the same grocery aisle, in
similar packaging, the public could think that petitioner had expanded its product mix to include
lechon sauce, and that the "PAPA BOY" lechon sauce is now part of the "PAPA" family of
sauces, which is not unlikely considering the nature of business that petitioner is in. Thus, if
allowed registration, confusion of business may set in, and petitioner's hard-earned goodwill may
be associated to the newer product introduced by respondent, all because of the use of the
dominant feature of petitioner's mark on respondent's mark, which is the word "PAPA." The
words "Barrio Fiesta" are not included in the mark, and although printed on the label of
respondent's lechon sauce packaging, still do not remove the impression that "PAPA BOY" is a
product owned by the manufacturer of "PAPA" catsup, by virtue of the use of the dominant
feature. It is possible that petitioner could expand its business to include lechon sauce, and that
would be well within petitioner's rights, but the existence of a "PAPA BOY" lechon sauce would
already eliminate this possibility and deprive petitioner of its rights as an owner of a valid mark
included in the Intellectual Property Code.|||
Page 11 of 21
• Respondent had an infinite field of words and combinations of words to choose from to coin a
mark for its lechon sauce. While its claim as to the origin of the term "PAPA BOY" is plausible,
it is not a strong enough claim to overrule the rights of the owner of an existing and valid mark.
Furthermore, this Court cannot equitably allow respondent to profit by the name and reputation
carefully built by petitioner without running afoul of the basic demands of fair play.|||
McDonald’s v. L.C. Big Mak

• To establish trademark infringement, the following elements must be shown: (1) the validity of
plaintiff’s mark; (2) the plaintiff’s ownership of the mark; and (3) the use of the mark or its
colorable imitation by the alleged infringer results in “likelihood of confusion.” Of these, it is
the element of likelihood of confusion that is the gravamen of trademark infringement. |||
• Applying the dominancy test, the Court finds that respondents’ use of the “Big Mak” mark results
in likelihood of confusion. First, “Big Mak” sounds exactly the same as “Big Mac.” Second, the
first word in “Big Mak” is exactly the same as the first word in “Big Mac.” Third, the first two
letters in “Mak” are the same as the first two letters in “Mac.” Fourth, the last letter in “Mak” while
a “k” sounds the same as “c” when the word “Mak” is pronounced. Fifth, in Filipino, the letter “k”
replaces “c” in spelling, thus “Caloocan” is spelled “Kalookan.”
• In short, aurally the two marks are the same, with the first word of both marks phonetically the
same, and the second word of both marks also phonetically the same. Visually, the two marks have
both two words and six letters, with the first word of both marks having the same letters and the
second word having the same first two letters. In spelling, considering the Filipino language, even
the last letters of both marks are the same.
• Clearly, respondents have adopted in “Big Mak” not only the dominant but also almost all the
features of “Big Mac.” Applied to the same food product of hamburgers, the two marks will likely
result in confusion in the public mind.
• The Court has taken into account the aural effects of the words and letters contained in the marks
|||
in determining the issue of confusing similarity.|||
• Certainly, “Big Mac” and “Big Mak” for hamburgers create even greater confusion, not only
aurally but also visually.
Emerald Garment v. CA
• Applying the foregoing tenets to the present controversy and taking into account the factual
circumstances of this case, we considered the trademarks involved as a whole and rule that
petitioner's "STYLISTIC MR. LEE" is not confusingly similar to private respondent's "LEE"
trademark.
• Petitioner's trademark is the whole "STYLISTIC MR. LEE." Although on its label the word "LEE"
is prominent, the trademark should be considered as a whole and not piecemeal. The dissimilarities
between the two marks become conspicuous, noticeable and substantial enough to matter especially
in the light of the following variables that must be factored in.
• First, the products involved in the case at bar are, in the main, various kinds of jeans. These are not
your ordinary household items like catsup, soy sauce or soap which are of minimal cost. Maong
pants or jeans are not inexpensive. Accordingly, the casual buyer is predisposed to be more cautious
Page 12 of 21
and discriminating in and would prefer to mull over his purchase. Confusion and deception, then,
is less likely. In Del Monte Corporation v. Court of Appeals, we noted that:
. . . Among these, what essentially determines the attitudes of the purchaser,
specifically his inclination to be cautious, is the cost of the goods. To be sure, a person
who buys a box of candies will not exercise as much care as one who buys an expensive
watch. As a general rule, an ordinary buyer does not exercise as much prudence in buying
an article for which he pays a few centavos as he does in purchasing a more valuable
thing. Expensive and valuable items are normally bought only after deliberate,
comparative and analytical investigation. But mass products, low priced articles in wide
use, and matters of everyday purchase requiring frequent replacement are bought by the
casual consumer without great care. . . .
• Second, like his beer, the average Filipino consumer generally buys his jeans by brand. He does not
ask the sales clerk for generic jeans but for, say, a Levis, Guess, Wrangler or even an Armani. He
is, therefore, more or less knowledgeable and familiar with his preference and will not easily be
distracted.
• Finally, in line with the foregoing discussions, more credit should be given to the "ordinary
purchaser." Cast in this particular controversy, the ordinary purchaser is not the "completely unwary
consumer" but is the "ordinarily intelligent buyer" considering the type of product involved.
• The definition laid down in Dy Buncio v. Tan Tiao Bok is better suited to the present case. There,
the "ordinary purchaser" was defined as one "accustomed to buy, and therefore to some extent
familiar with, the goods in question. The test of fraudulent simulation is to be found in the
likelihood of the deception of some persons in some measure acquainted with an established design
and desirous of purchasing the commodity with which that design has been associated. The test is
not found in the deception, or the possibility of deception, of the person who knows nothing about
the design which has been counterfeited, and who must be indifferent between that and the other.
The simulation, in order to be objectionable, must be such as appears likely to mislead the ordinary
intelligent buyer who has a need to supply and is familiar with the article that he seeks to purchase."
Shangri-La v. CA
• The core issue is simply whether, despite the institution of an Inter Partes case for cancellation of
a mark with the BPTTT (now the Bureau of Legal Affairs, Intellectual Property Office) by one
party, the adverse party can file a subsequent action for infringement with the regular courts of
justice in connection with the same registered mark.
• We rule in the affirmative.
• Following both law and the jurisprudence enunciated in Conrad and Company, Inc. v. Court of
Appeals, the infringement case can and should proceed independently from the cancellation case
with the Bureau so as to afford the owner of certificates of registration redress and injunctive writs.
In the same light, so must the cancellation case with the BPTTT (now the Bureau of Legal Affairs,
Intellectual Property Office) continue independently from the infringement case so as to determine
whether a registered mark may ultimately be cancelled.
Mirpuri v. CA
Article 6bis
Page 13 of 21
(1) The countries of the Union undertake, either administratively 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. These provisions shall also apply when the essential part of the mark constitutes a
reproduction of any such well-known mark or an imitation liable to create confusion
therewith.
(2) A period of at least five years from the date of registration shall be allowed for
seeking the cancellation of such a mark. The countries of the Union may provide for a period
within which the prohibition of use must be sought.
(3) No time limit shall be fixed for seeking the cancellation or the prohibition of the use
of marks registered or used in bad faith."
• This Article governs protection of well-known trademarks. Under the first paragraph, each
country of the Union bound itself to undertake to refuse or cancel the registration, and prohibit
the use of a trademark which is a reproduction, imitation or translation, or any essential part of
which trademark constitutes a reproduction, liable to create confusion, of a mark considered by
the competent authority of the country where protection is sought, to be well-known in the
country as being already the mark of a person entitled to the benefits of the Convention, and used
for identical or similar goods.
• Article 6bis was first introduced at The Hague in 1925 and amended in Lisbon in 1952. It is a self-
executing provision and does not require legislative enactment to give it effect in the member
country. It may be applied directly by the tribunals and officials of each member country by the
mere publication or proclamation of the Convention, after its ratification according to the public
law of each state and the order for its execution.
• The essential requirement under Article 6bis 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.
|||
IPAP v. Ochoa
• The IPAP also rests its challenge on the supposed conflict between the Madrid Protocol and
the IP Code, contending that the Madrid Protocol does away with the requirement of a resident
agent under Section 125 of the IP Code; and that the Madrid Protocol is unconstitutional for
being in conflict with the local law, which it cannot modify.
• The IPAP's contentions stand on a faulty premise. The method of registration through the
IPOPHL, as laid down by the IP Code, is distinct and separate from the method of registration
through the WIPO, as set in the Madrid Protocol. Comparing the two methods of registration
despite their being governed by two separate systems of registration is thus misplaced.
• In arguing that the Madrid Protocol conflicts with Section 125 of the IP Code, the IPAP
highlights the importance of the requirement for the designation of a resident agent. It underscores
that the requirement is intended to ensure that non-resident entities seeking protection or
privileges under Philippine Intellectual Property Laws will be subjected to the country's
Page 14 of 21
jurisdiction. It submits that without such resident agent, there will be a need to resort to costly,
time consuming and cumbersome extra-territorial service of writs and processes.
• The IPAP misapprehends the procedure for examination under the Madrid Protocol. The
difficulty, which the IPAP illustrates, is minimal, if not altogether inexistent. The IPOPHL
actually requires the designation of the resident agent when it refuses the registration of a mark.
Local representation is further required in the submission of the Declaration of Actual Use, as
well as in the submission of the license contract. The Madrid Protocol accords with the intent
and spirit of the IP Code, particularly on the subject of the registration of trademarks. The Madrid
Protocol does not amend or modify the IP Code on the acquisition of trademark rights
considering that the applications under the Madrid Protocol are still examined according to the
relevant national law. In that regard, the IPOPHL will only grant protection to a mark that meets
the local registration requirements.
Sehwani v. In-n-Out
• The fact that respondent's marks are neither registered nor used in the Philippines is of no
moment. The scope of protection initially afforded by Article 6bis of the Paris Convention has been
expanded in the 1999 Joint Recommendation Concerning Provisions on the Protection of Well-
Known Marks, wherein the World Intellectual Property Organization (WIPO) General Assembly
and the Paris Union agreed to a nonbinding recommendation that a well-known mark should be
protected in a country even if the mark is neither registered nor used in that country. Part I, Article
2 (3) thereof provides:
(3) [Factors Which Shall Not Be Required] (a) A Member State shall not require, as a
condition for determining whether a mark is a well-known mark:
(i) that the mark has been used in, or that the mark has been registered or that an
application for registration of the mark has been filed in or in respect of, the Member State;
(ii) that the mark is well known in, or that the mark has been registered or that an
application for registration of the mark has been filed in or in respect of, any jurisdiction other
than the Member State; or
(iii) that the mark is well known by the public at large in the Member State.
(Underscoring supplied)
• Moreover, petitioners' claim that no ground exists for the cancellation of their registration lacks
merit. Section 151 (b) of RA 8293 provides:
SECTION 151. Cancellation. — 151.1. A petition to cancel a registration of a mark
under this Act may be filed with the Bureau of Legal Affairs by any person who believes that he
is or will be damaged by the registration of a mark under this Act as follows:
xxx xxx xxx
(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. . . . .
• The evidence on record shows that not only did the petitioners use the IN-N-OUT Burger
trademark for the name of their restaurant, but they also used identical or confusingly similar
mark for their hamburger wrappers and french-fries receptacles, thereby effectively
misrepresenting the source of the goods and services.
Page 15 of 21
Fredco v. Harvard
• Article 8 of the Paris Convention has been incorporated in Section 37 of R.A. No. 166, as follows:
Section 37. Rights of foreign registrants. — Persons who are nationals of, domiciled in,
or have a bona fide or effective business or commercial establishment in any foreign country,
which is a party to any international convention or treaty relating to marks or trade-names, or the
repression of unfair competition to which the Philippines may be a party, shall be entitled to the
benefits and subject to the provisions of this Act to the extent and under the conditions essential
to give effect to any such convention and treaties so long as the Philippines shall continue to be a
party thereto, except as provided in the following paragraphs of this section.
xxx xxx xxx
Trade-names of persons described in the first paragraph of this section shall be
protected without the obligation of filing or registration whether or not they form parts of
marks.
xxx xxx xxx (Emphasis supplied)
• Thus, under Philippine law, a trade name of a national of a State that is a party to the Paris
Convention, whether or not the trade name forms part of a trademark, is protected "without the
obligation of filing or registration."
• "Harvard" is the trade name of the world famous Harvard University, and it is also a trademark
of Harvard University. Under Article 8 of the Paris Convention, as well as Section 37 of R.A.
No. 166, Harvard University is entitled to protection in the Philippines of its trade name
"Harvard" even without registration of such trade name in the Philippines. This means that no
educational entity in the Philippines can use the trade name "Harvard" without the consent of
Harvard University. Likewise, no entity in the Philippines can claim, expressly or impliedly
through the use of the name and mark "Harvard," that its products or services are authorized,
approved, or licensed by, or sourced from, Harvard University without the latter's consent.
• Article 6bis of the Paris Convention has been administratively implemented in the Philippines
through two directives of the then Ministry (now Department) of Trade, which directives were
upheld by this Court in several cases. On 20 November 1980, then Minister of Trade Secretary
Luis Villafuerte issued a Memorandum directing the Director of Patents to reject, pursuant to the
Paris Convention, all pending applications for Philippine registration of signature and other
world-famous trademarks by applicants other than their original owners.
• In Mirpuri, the Court ruled that the essential requirement under Article 6bis of the Paris
Convention is that the trademark to be protected must be "well-known" in the country where
protection is sought. The Court declared that the power to determine whether a trademark is well-
known lies in the competent authority of the country of registration or use. The Court then stated
that the competent authority would either be the registering authority if it has the power to decide
this, or the courts of the country in question if the issue comes before the courts.
Ecole de Manille v. Cointreau

• In the instant case, it is undisputed that Cointreau has been using the subject mark in France since
1895, prior to Ecole's averred first use of the same in the Philippines in 1948, of which the latter
was fully aware thereof. In fact, Ecole's present directress, Ms. Lourdes L. Dayrit (and even its
foundress, Pat Limjuco Dayrit), had trained in Cointreau's Le Cordon Bleu culinary school in Paris,
Page 16 of 21
France. Cointreau was likewise the first registrant of the said mark under various classes, both
abroad and in the Philippines, having secured Home Registration No. 1,390,912 dated November
25, 1986 from its country of origin, as well as several trademark registrations in the Philippines.
• On the other hand, Ecole has no certificate of registration over the subject mark but only a pending
application covering services limited to Class 41 of the Nice Classification, referring to the
operation of a culinary school. Its application was filed only on February 24, 1992, or after
Cointreau filed its trademark application for goods and services falling under different classes in
1990. Under the foregoing circumstances, even if Ecole was the first to use the mark in the
Philippines, it cannot be said to have validly appropriated the same.
• It is thus clear that at the time Ecole started using the subject mark, the same was already being
used by Cointreau, albeit abroad, of which Ecole's directress was fully aware, being an alumna of
the latter's culinary school in Paris, France. Hence, Ecole cannot claim any tinge of ownership
whatsoever over the subject mark as Cointreau is the true and lawful owner thereof. As such, the
IPO Director General and the CA were correct in declaring Cointreau as the true and lawful owner
of the subject mark and as such, is entitled to have the same registered under its name.
• In any case, the present law on trademarks, Republic Act No. 8293, otherwise known as
the Intellectual Property Code of the Philippines, as amended, has already dispensed with the
requirement of prior actual use at the time of registration. Thus, there is more reason to allow the
registration of the subject mark under the name of Cointreau as its true and lawful owner.
• As a final note, "the function of a trademark is to point out distinctly the origin or ownership of the
goods (or services) to which it is affixed; to secure to him, who has been instrumental in bringing
into the market a superior article of merchandise, the fruit of his industry and skill; to assure the
public that they are procuring the genuine article; to prevent fraud and imposition; and to protect
the manufacturer against substitution and sale of an inferior and different article as his product." As
such, courts will protect trade names or marks, although not registered or properly selected as
trademarks, on the broad ground of enforcing justice and protecting one in the fruits of his toil.
Philip Morris v. Fortune
• But, even if the dominancy test were to be used, as urged by the petitioners, but bearing in mind
that a trademark serves as a tool to point out distinctly the origin or ownership of the goods to which
it is affixed, the likelihood of confusion tantamount to infringement appears to be farfetched. The
reason for the origin and/or ownership angle is that unless the words or devices do so point out the
origin or ownership, the person who first adopted them cannot be injured by any appropriation or
imitation of them by others, nor can the public be deceived.
• Since the word "MARK," be it alone or in combination with the word "TEN" and the Roman
numeral "VII," does not point to the origin or ownership of the cigarettes to which they apply, the
local buying public could not possibly be confused or deceived that respondent's "MARK" is the
product of petitioners and/or originated from the U.S.A., Canada or Switzerland. And lest it be
overlooked, no actual commercial use of petitioners' marks in local commerce was proven. There
can thus be no occasion for the public in this country, unfamiliar in the first place with petitioners'
marks, to be confused.
• For another, a comparison of the trademarks as they appear on the goods is just one of the
appreciable circumstances in determining likelihood of confusion. Del Monte Corp. v. CA dealt
with another, where we instructed to give due regard to the "ordinary purchaser," thus:
Page 17 of 21
The question is not whether the two articles are distinguishable by their label
when set side by side but whether the general confusion made by the article upon the eye
of the casual purchaser who is unsuspicious and off his guard, is such as to likely result
in his confounding it with the original. As observed in several cases, the general
impression of the ordinary purchaser, buying under the normally prevalent conditions in
trade and giving the attention such purchasers usually give in buying that class of goods
is the touchstone.
• When we spoke of an "ordinary purchaser," the reference was not to the "completely unwary
customer" but to the "ordinarily intelligent buyer" considering the type of product involved.
• It cannot be over-emphasized that the products involved are addicting cigarettes purchased mainly
by those who are already predisposed to a certain brand. Accordingly, the ordinary buyer thereof
would be all too familiar with his brand and discriminating as well. We, thus, concur with the CA
when it held, citing a definition found in Dy Buncio v. Tan Tiao Bok, that the "ordinary purchaser"
in this case means "one accustomed to buy, and therefore to some extent familiar with, the goods
in question."
• Pressing on with their contention respecting the commission of trademark infringement, petitioners
finally point to Section 22 of R.A. No. 166, as amended. As argued, actual use of trademarks in
local commerce is, under said section, not a requisite before an aggrieved trademark owner can
restrain the use of his trademark upon goods manufactured or dealt in by another, it being sufficient
that he had registered the trademark or trade-name with the IP Office. In fine, petitioners submit
that respondent is liable for infringement, having manufactured and sold cigarettes with the
trademark "MARK" which, as it were, are identical and/or confusingly similar with their duly
registered trademarks "MARK VII," "MARK TEN" and "LARK".
• This Court is not persuaded.
• In Mighty Corporation v. E & J Gallo Winery, the Court held that the following constitute the
elements of trademark infringement in accordance not only with Section 22 of R.A. No. 166, as
amended, but also Sections 2, 2-A, 9-A and 20 thereof:
(a) a trademark actually used in commerce in the Philippines and registered in
the principal register of the Philippine Patent Office,
(b) is used by another person in connection with the sale, offering for sale, or
advertising of any goods, business or services or in connection with which such use
is likely to cause confusion or mistake or to deceive purchasers or others as to the source
or origin of such goods or services, or identity of such business; or such trademark is
reproduced, counterfeited, copied or colorably imitated by another person and such
reproduction, counterfeit, copy or colorable imitation is applied to labels, signs, prints,
packages, wrappers, receptacles or advertisements intended to be used upon or in
connection with such goods, business or services as to likely cause confusion or mistake
or to deceive purchasers,
(c) the trademark is used for identical or similar goods, and
(d) such act is done without the consent of the trademark registrant or assignee.
• As already found herein, while petitioners have registered the trademarks "MARK VII," "MARK
TEN" and "LARK" for cigarettes in the Philippines, prior actual commercial use thereof had not
been proven. In fact, petitioners' judicial admission of not doing business in this country effectively
belies any pretension to the contrary.
Page 18 of 21
La Chemise Lacoste v. Fernandez

• Our recognizing the capacity of the petitioner to sue is not by any means novel or precedent setting.
Our jurisprudence is replete with cases illustrating instances when foreign corporations not doing
business in the Philippines may nonetheless sue in our courts.
• In upholding the right of the petitioner to maintain the present suit before our courts for unfair
competition or infringement of trademarks of a foreign corporation, we are moreover recognizing
our duties and the rights of foreign states under the Paris Convention for the Protection of
Industrial Property to which the Philippines and France are parties. We are simply interpreting
and enforcing a solemn international commitment of the Philippines embodied in a multilateral
treaty to which we are a party and which we entered into because it is in our national interest to
do so.
The Paris Convention provides in part that:
ARTICLE 1
"(1) The countries to which the present Convention applies constitute themselves into a
Union for the protection of industrial property.
"(2) The protection of industrial property is concerned with patents, utility models,
industrial designs, trademarks service marks trade names, and indications of source or
appellations of origin and the repression of unfair competition.
xxx xxx xxx
ARTICLE 2
"(2) Nationals of each of the countries of the Union shall, as regards the protection of
industrial property, enjoy in all the other countries of the Union the advantages that their
respective laws now grant, or may hereafter grant, to nationals, without prejudice to the
rights specially provided by the present Convention. Consequently, they shall have the
same protection as the latter, and the same legal remedy against any infringement of their
rights, provided they observe the conditions and formalities imposed upon nationals.
xxx xxx xxx

ARTICLE 6bis
"(1) The countries of the Union undertake, either administratively 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, imitation or
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 the present Convention and used for
identical or similar goods. These provisions shall also apply when the essential part of
the mark constitutes a reproduction of any such well-known mark or an imitation liable
to create confusion therewith.
xxx xxx xxx
ARTICLE 8
Page 19 of 21
"A trade name shall be protected in all the countries of the Union without the obligation
of filing or registration, whether or not it forms part of a trademark.
xxx xxx xxx
ARTICLE 10bis
"(1) The countries of the Union are bound to assure to persons entitled to the benefits of
the Union effective protection against unfair competition.
xxx xxx xxx
ARTICLE 10ter
"(1) The countries of the Union undertake to assure to nationals of the other countries of
the Union appropriate legal remedies to repress effectively all the acts referred to in
Articles 9, 10 and 10bis.
"(2) They undertake, further, to provide measures to permit syndicates and associations
which represent the industrialists, producers or traders concerned and the existence of
which is not contrary to the laws of their countries, to take action in the Courts or before
the administrative authorities, with a view to the repression of the acts referred to in
Articles 9,10 and 10bis, in so far as the law of the country in which protection is claimed
allows such action by the syndicates and associations of that country.
xxx xxx xxx
ARTICLE 17
"Every country party to this Convention undertakes to adopt, in accordance with its
constitution, the measures necessary to ensure the application of this Convention.
"It is understood that at the time an instrument of ratification or accession is deposited
on behalf of a country; such country will be in a position under its domestic law to give
effect to the provisions of this Convention."
|||
Puma v. IAC
• Petitioner maintains that it has substantially complied with the requirements of Section 21-A of
Republic Act (RA) No. 166, as amended. According to the petitioner, its complaint specifically
alleged that it is not doing business in the Philippines and is suing under the said Republic Act;
that Section 21-A thereof provides that "the country of which the said corporation or juristic
person is a citizen, or in which it is domiciled, by treaty, convention or law, grants a similar
privilege to corporate or juristic persons of the Philippines" but does not mandatorily require that
such reciprocity between the Federal Republic of Germany and the Philippines be pleaded; that
such reciprocity arrangement is embodied in and supplied by the Union Convention for the
Protection of Industrial Property (Paris Convention) to which both the Philippines and Federal
Republic of Germany are signatories and that since the Paris Convention is a treaty which,
pursuant to our Constitution, forms part of the law of the land, our courts are bound to take judicial
notice of such treaty, and, consequently, this fact need not be averred in the complaint.
We agree.
• In the leading case of La Chemise Lacoste, S.A. v. Fernandez, (129 SCRA 373), we ruled:
Page 20 of 21
"But even assuming the truth of the private respondent's allegation that the
petitioner failed to allege material facts in its petition relative to capacity to sue, the
petitioner may still maintain the present suit against respondent Hemandas. As early as
1927, this Court was, and it still is, of the view that a foreign corporation not doing
business in the Philippines needs no license to sue before Philippine courts for
infringement of trademark and unfair competition. Thus, in Western Equipment and
Supply Co. v. Reyes (51 Phil. 115), this Court held that a foreign corporation which has
never done any business in the Philippines and which is unlicensed and unregistered to
do business here, but is widely and favorably known in the Philippines through the use
therein of its products bearing its corporate and trade name, has a legal right to maintain
an action in the Philippines to restrain the residents and inhabitants thereof from
organizing a corporation therein bearing the same name as the foreign corporation, when
it appears that they have personal knowledge of the existence of such a foreign
corporation, and it is apparent that the purpose of the proposed domestic corporation is
to deal and trade in the same goods as those of the foreign corporation."
|||
Page 21 of 21

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Intellectual Property Law

PCU College of Law, 2nd Sem, AY 2019-2020

Class Notes for March 24, 2020

SUMMARY OF TRADEMARK LAW

International Conventions and Reciprocity Rule:

• Any person who:

Etepha v. Director of Patents

Standard of REGISTRABILITY – distinctiveness.

Ang Tibay v. Teodoro

How are marks acquired?

Transitional problems because of the shift:

What marks may NOT BE REGISTERED?

What are these marks?

Doctrine of Secondary Meaning

Kabushi Kaisha Isetan v. IAC

Requirements for claim of priority:

CASES (quoted verbatim):

Distileria Washington v. La Tondeña

Unno Commercial v. General Milling

Birkenstock v. Phil Shoe Expo

Del Monte Corp v. CA

Taiwan Kolin v. Kolin Electronics

Lyceum of the Philippines v. CA

UFC Philippines v. Barrio Fiesta

McDonald’s v. L.C. Big Mak

in determining the issue of confusing similarity.|||

Ecole de Manille v. Cointreau

La Chemise Lacoste v. Fernandez

xxx xxx xxx

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