TRADEMARK  Actual claim/connection unnecessary

 Popularity immaterial
I. DEFINITION 2. Flag/coat of arms/other insignia of the PH, or of any foreign nation, or any simulation
thereof
Trademarks
3. (1) Name, portrait, signature identifying a particular individual
 Any visible sign Exc: written consent
o Visible sign – does not include audible or other sensory functions (2) NPS of a deceased President during the life of his widow
 Capable of distinguishing the goods (trademark) or services (service mark) of an Exc: written consent of the widow
enterprise and 4. Identical with a registered mark belonging to a different proprietor/ mark with an earlier
filing or priority date, with respect to:
 Shall include a stamped or marked container of the goods.
 Same goods/services
Collective mark  Closely related g/s
 Nearly resembles such marks as to be likely to deceive or cause confusion
 Any visible sign  Use of identical mark alone does not automatically guarantee infringement
 designated as such in the application for registration (Mighty Corp vs EJ Gallo)
o shall be accompanied by a copy of the agreement governing the use of the  No infringement in the ff. cases:
collective mark o “LOTUS” for soy sauce vs. edible oil
 capable of distinguishing the origin or any other common characteristic, o “CAMIA” for ham vs. lard, butter
 including the quality of goods/services of different enterprises which use the sign under o “HICOCK” for shoes vs. handkerchief, briefs
the control of the registered owner of the collective mark o “SHELL” & “ESSO” for petroleum vs. cigarettes
o “CANON” for sandals vs. paints, chemical products
Acquiring mark
5. Identical with/confusingly similar to/constitutes a translation of a well-known mark
 Rights are acquired through registration  Well-known internationally/in the PH – competent authority determines w/n
well-known
II. FUNCTIONS – Mirpuri vs. CA o Competent authority – includes IPO, DTI, SC
1. To point out distinctly the origin or ownership of the goods. o Takes into account the knowledge of relevant sector of the public rather
2. To secure owner of the trademark in bringing into the market the fruit of his than the public at large
o Includes knowledge in PH obtained as a result of the promotion of the
industry and skill.
mark
3. To assure the public that they are procuring the genuine article.
o Criteria:
4. To prevent fraud and imposition.
 Duration, extent, geographical area of use
5. To protect the manufacturer against substitution and sale of an inferior and
 PH market shares
different article.
 Degree of inherent/acquired distinction
III. NON-REGISTRABLE MARKS  Quality-image/reputation
1. (1) Immoral, deceptive/scandalous matter, or  Extent of registration
(2) Matter which (a) disparage/falsely suggest a connection with persons, institutions,  Exclusivity of registration
beliefs/national symbols, or (b) bring them into contempt/ disrepute  Extent of use
 Exclusivity of use
  Commercial value  “MASTER” not generic term but a suggestive term (Societe Des
 Record of successful protection Produits Nestle vs. CA)
 Outcome of litigations o Not generic solely because such mark is also used as a name of or to identify a
 Presence/absence of similar marks unique product or service
 Even if not registered here 9. Signs/indications that have become customary or usual to designate the g/s in everyday
 Used for identical/similar g/s language or in established trade practices
6. Identical with/confusingly similar to/constitutes a translation of a well-known mark 10. Signs/indications that serve to designate the characteristics of the g/s
 Registered in PH  As to kind, quality, quantity, intended purpose, value, geographical origin, time, or
 Goods not similar production of goods
 Use of mark indicate a connection o Geographically descriptive term – designates geographic location; tend to
 Interests of the owner are likely to be damaged by such use be regarded as a descriptive term
 Protection of non-registered mark is limited to similar g/s; if registered, protection o Test: Is the mark the name of the place? If yes, descriptive
extends to non-related g/s 11. Shapes that may be necessitated by the
7. Likely to mislead public  technical factors/
 As to nature, quality, characteristics/geographical origin  by the nature of the goods themselves/
 Colorable imitation – close/ingenious imitation as to be calculated to  factors that affect their intrinsic value
deceive ordinary persons or purchaser giving such attention as a 12. Contrary to public order/morality
purchased always does
 Tests in determining colorable imitation
o Dominancy – similarity of the prevalent features of the competing Confusion in trademark infringement
trademark.
1. Confusion of goods – an otherwise prudent purchaser is induced to purchase one product
 Contains the main, essential, or dominant features of
in the belief that he is purchasing another.
another
2. Confusion of business – goods are different but the defendant’s products can be
 Duplication not necessary
reasonably be assumed to originate from the plaintiff.
 It is enough that it is likely to cause confusion mistake
o Holistic – consideration of the entirety of the marks as applied to
IV. PROCEDURE IN REGISTRATION
the products
 Must focus not only on predominant words but on the Application
features o Request
o Both tests may be used together o Name & address of applicant
 Proof of actual confusion not necessary, it is enough that there is o Domicile
likelihood of confusion (McDonald’s vs. LC Big Mak) o If juridical entity, law where organized
8. Signs that are generic for the g/s that they seek to identify o Agent/representative
o Generic term – common descriptive name; genus of the particular product;
o If claiming priority of an earlier application
refers to the basic nature of the wares
 Name of State where applied
o Suggestive term – requires imagination, thought, and perception to reach a
 Date
conclusion as to the nature of the goods (secondary meaning).  Application number
o If it claims color, a statement or names of the color/s
 o If three-dimensional mark, a statement to that effect 17. Gutta percha, india 34. Tobacco
o One or more reproduction mark rubber
o Transliteration/translation of the mark
o Names of goods/services according to NICE classification
Disclaimers – the purpose is to make a record that a significant element of a composite mark
o Signature is not being exclusively appropriated apart from the composite

The ff. must be disclaimed:

Applicant o A generic term
 May be natural/juridical o Descriptive matter
 All should be named if more than one
o Matter that does not function as trademark
 May file through an attorney/agent
 If not domiciled in PH, designate in writing submitted w/in 60 days from filing date Disclaimer shall not prejudice applicant’s rights to register another application of a later date,
without need of any notice where the disclaimed matter has become distinctive to the applicant’s goods or services.
o If designated person cannot be found, serve upon the Director of Bureau of Trademark
 If applicant dies/incapacitated, appointed executor may prosecute the application Declaration of actual use – file within 3 years from the filing date of the application,
otherwise mark may be removed

NICE classification Filing date – filing date shall be when the ff. elements are received by the Office:

 Applicant must indicate names of goods/services as grouped in NICE o Express/implied indication that registration is sought
 Application may relate to several classes of goods o Identity of applicant
o Indication of contact information of applicant
Goods: 18. Leather and Services:
o Reproduction of the mark
1. Chemical products imitations 35. Advertising
2. Paints, varnishes 19. Building materials 36. Insurance o List of goods/services for which registration is sought
3. Bleaching agents, 20. Furniture 37. Construction o Filing fee
perfumes 21. Small domestic 38. Communication
4. Industrial oils utensils 39. Transportation A period of one month from mailing date of notice is given to complete/correct deficiencies.
5. Pharmaceuticals 22. Rope, strings 40. Material treatment New filing date shall be date when Office received corrected/completed application.
6. Common metals 23. Yarns, threads 41. Educations and
7. Machines 24. Tissues entertainment Priority right – granted to applications filed in PH who previously filed an application in other
8. Hand tools 25. Clothing 42. Miscellaneous countries. Owner of registration cannot sue for acts committed prior to date of registration.
9. Scientific apparatus 26. Lace, embroidery
10. Surgical instruments 27. Carpets, rugs Examination procedure – to determine completeness/correctness of application If applicant
11. Household 28. Games is not entitled to registration, applicant is given 4 months to amend application.
installations 29. Meat, fish
12. Vehicles 30. Coffee, tea, Reviving abandoned application – may be revived within 3 months from date of
13. Firearms chocolate abandonment, upon good cause, and filing of required fee.
14. Precious metals 31. Agricultural
15. Musical instruments products Opposing an application – if a person believes that he would be damaged by the registration,
16. Paper and paper 32. Beer
he may file an opposition within 30 days from publication of application.
articles 33. Wines, licquors
V. CERTIFICATE OF REGISTRATION
Prima Facie evidence of validity – a certificate of registration is prima facie evidence of
validity of registration, registrant’s ownership, and registrant’s exclusive right to use.
Issuance and publication of certificate – certificate is issued when period for filing
opposition has expired or denied.
VII.
Cancellation or amendment – in case of amendment, the amendment must not alter
materially the character of the mark.
Correction in case of mistake of IPO – if through fault of the office, free of charge.
Use of mark in a different form – as long as it does not alter its distinctive character, it shall
not be a ground for cancellation.
Use of mark for goods belonging to the class registered – use in connection with one or
more g/s belonging to a class shall prevent its cancellation.
Use of mark by related company – shall inure to the registrant’s benefit. No effect on the
validity.
VI. DURATION OF CERTIFICATE OF REGISTRATION
Duration – 10 years, provided that the declarant shall file a declaration of actual use and
evidence within 1 year from the fifth anniversary of the date of the registration of the mark
VIII.
Non-use of Mark – may be excused if caused by circumstances arising independently of the
will of the owner. Must be clearly beyond the control of the registrant.
Lack of funds is not an excuse.
May be made anytime within 6 mos before or after the expiration of the period.
Marks registered prior to RA 166 shall be remain in force and effect but shall be deemed to have
been granted under RA 166.
RIGHTS CONFERRED
Exclusive right – owner has the exclusive right to prevent all third parties from using
the course of trade identical/similar signs or containers.
Presumption: identical sign for g/s = likelihood of confusion presumed.
Limitation on trademarks involving Medicines – no trademark infringement of
patented drugs/medicines allowed under Sec. 72.1 of RA 9502.
Rights conferred to owner of Well-Known Mark – if registered in PH, right extends
to g/s which are not similar to those registered, provided that use indicates a
connection. If not registered, right limited to similar goods.
Limitation – registration shall not preclude third parties from using names etc. which
are for mere identification or information and cannot mislead the public as to the
source of the g/s.
ASSIGNMENT AND TRANSFER
Assignment –may be assigned with or without the transfer of business. If intent is to mislead
the public = void

Renewal – may be renewed for periods of ten years at its expiration Form – in writing, signatures of the contracting parties
Request for renewal shall include the ff:
1. Indication that a renewal is sought Recording – IPOPHIL. No effect upon third persons until recorded.
2. Name & address
3. Registration number License contracts – should provide for effective control by the licensor of the quality of the
4. Filing date of application g/s. if no quality control = not valid.
5. Name & address of representative
6. Names of the recorded goods/services IX. CANCELLATION OF REGISTRATION
7. Signature
Where – BLA
 When – within 5 years from the date of the registration of the mark. Filed anytime in the ff: Trademark dilution – lessening of the capacity of a famous mark to identify and distinguish
g/s, regardless of the presence or absence of (1) competition between the owner and other
1. It becomes a generic name parties, or (2) likelihood of confusion, mistake or deception.
2. Abandoned
3. Mark obtained fraudulently Entitled to injunction
4. Mark used without permission
5. Fails to use marks in the PH Action for false/fraudulent declaration – procure registration in IPO by false/fraudulent
declarations, whether written or oral = liable in a civil action.
Shangri-la vs CA – the filing of suit to enforce the registered mark shall exclude any other court
or agency from assuming jurisdiction. Earlier petition to cancel shall not constitute prejudicial Damages & injunction – damages in case of infringement. Measure is reasonable profit which
question to enforce rights to mark. ITC, cannot bar from instituting infringement case in the owner would have made, or what defendant actually made out of the infringement.
regular courts.
If the intent is to mislead or defraud, court may double the damages.
Effect – rights conferred shall be terminated.
Destruction of infringing materials – infringing goods may be destroyed without
X. REMEDIES AGAINST INFRINGEMENT compensation. Simple removal of the affixed trademark is not sufficient.

Civil remedies – infringement Infringement action of a foreign national – a national/domiciled in a country which is a
party to treaties, or extends reciprocal rights to PH citizens may file suit.
Grounds:
Presumptions: knowledge that it will cause confusion is presumed if bears the “Registered
1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation
mark” or ®
2. Reproduce, counterfeit, copy, colorably imitate and apply such to labels, signs, prints,
packages, etc. intended to be used in commerce
XI. LIMITATIONS
Yao vs. People – mere unauthorized use of container bearing the registered mark for
commercial purposes, which is likely to cause confusion, mistake, or deception can be
Prior user – in good faith, prior to the filing date or priority date, used the mark for
considered infringement.
business/enterprise
Prosource int’l vs Horphag – elements of infringement:
Printer of infringing mark – if solely in the business of printing for others, innocent
1. Registered trademark, if tradename – need not be registered infringer, owner of mark entitled only to injunction against future printing

2. Trademark/name is reproduced Advertisement – remedies against innocent publisher of ads = injunction

3. Infringing mark is used in connection with the sale
Imported drugs – no infringement if allowed under RA 9502
4. Use likely to cause confusion or mistake
XII. TRADE NAMES/BUSINESS NAMES
5. Use is without consent
Trade name – name/designation identifying the enterprise aka. Business identifier
 Names that cannot be used – contrary to public order or morals or liable to deceive trade Del Monte Corp vs CA – did not erase the mark of Del Monte, repeated use of the bottles, sold
circles directly to consumers = unfair competition

Protected even without registration – any subsequent use of third person, whether trade name False designation of origin/ false description
or mark or collective mark, likely to mislead the public = deemed unlawful
Elements

Remedies – in Sec. 153 to 156 1. Likely to cause confusion, or mistake

2. In commercial advertising or promotion, misrepresents the nature, characteristics,
Change of ownership of trade name = transfer of enterprise geographic origin of his/her g/s

Unfair competition in Civil Code (Art 28) – Through the use of force, intimidation, deceit,
XIII. UNFAIR COMPETITION
machination, or any unjust, oppressive or high-handed methods
1. Person who sells goods or gives the general appearance of goods of another, likely to influence
purchasers to believe that the goods offered are that of another manufacturer/dealer Elements
2. By artifice, or device, or employs means calculated to induce the false belief that such person is
offering the services of another 1. Involves injury to a competitor or trade rival
3. False statement in the course/trade, or commit any other act contrary to good faith to discredit 2. Involve acts which is contrary to good conscience or shocking to judicial sensibilities
the goods, business, or service.

Elements
XIV. CRIMINAL PENALTY – imprisonment of two years – five years, 50,000 – 200,000 fine for
1. Confusing similarity in the general appearance – may result from external factors like violation of Sec. 155, 168, 169.1
packaging
2. Intent to deceive –may be inferred from the similarity of the appearance (McDonald’s vs. LC
Big Mak)

Unfair competition vs Trademark Infringement

Unfair competition – is broader;passing off one’s goods as that of another; fraudulent intent
necessary; registration not necessary

Trademark infringement – there is not mere likelihood of confusion but actual or probable
deception; unauthorized use; fraudulent intent not necessary; prior registration is prerequisite

Unfair competition vs. product brands

Mighty Corp. vs. EJ Gallo – no unfair competition because there was no attempt to pass off Gallo
cigarettes as product of EJ Gallo

Converse vs Jacinto Rubber – there is unfair competition because all features of Chuck Taylor are
present

Unfair competition and use of containers