Trademark Notes
*Why is trademark protected?
-because certain signs induce certain reactions/human
behavior.
-Justice Frankfurter: The protection of trademark is law’s
recognition of the psychological function of symbols.
*Purpose:
Consumers- minimizes search cost, no longer a need to keep
looking for source of making/ingridients
Producers
a. regulate business ethics
b. foster fair and honest competition
c. encourage the production of quality products
d. simultaneously discourages those who hope to sell inferior
products
e. serves as advertisement
-merchandising shortcut which induces a purchaser to select
what he wants, or what he has been lead to believe what he
wants
Trademark Protection:
-creates a legal right to stop others from using a mark that 2. Not be deceptive
confuses consumers or is likely to confuse them but 3. Not contrary ro public or morality
essentially drawing upon that psychological association in 4. Not identical or confusingly similar to an existing
the mind of consumers.
In sum, trademark gives its owner exclusive rights to:
-use tge trademark to identify goods and services
-to prevent others from using and marketing the same or
similar trademark for the same or similar goods or services
-to authorize the others to use the trademark and in return
for payment.
How may suffer?
Producers:
1. suffer loss in sales
2. TM owner may suffer a reputational harm
Definitions:
*Mark: Section 121.1
*Collective Mark: Section 121.2 - isssued by a reg owner of a
registered mark//different product of different enterprises
-example: placed in any product placed in same enterprises
na paper recycled
-Guimaras Quality Seal: signifies that Mangoes have
reputation
TRADE NAME- Means the name or designation identifying an
enterprise. Can this be trademarked?
-Fragrance? NO
-Music? NO
Trademark protection: Based in the use of a mark in
commerce; it is not based on protection as in copyright, or
invention as with patent.
Copyright v. Trademark
C- originality/from the moment of creation
T- distinctiveness/feom the moment of registration
How marks are acquired: Section 122
**TRADEMARK IS TERRITORIAL: Trademark is only protected
within the territory of its jurisdiction
*WIPO-international registration of marks//Madrid Protocol
-In copyright, its not territorial because it’s not registration
*even words are trademarked
example: just do it, we find ways
What is trademark infringement? There is cause of action
for TM infringement if:
1. Mark is valid and legally protectable: it must be registered
2. Plaintiff owns the mark
3. Defendant’s use of mark it is likely to create confusion
What may be registered?
1. It must be distinctive
trademark
Heirarchy of Terms according to Distinctiveness
1. Inherent distinctiveness-moving from one side to
another. There are certain marks and terms that are more
distinctive from others
-as it moves from generic-descriptive-suggestive-arbitrary
and fanciful
-so meaning, generic and descriptive may not be protective
by TM
-districtive: pwede if may ability to distinguish
*generic- common discriptive name of a product or class
example: cellphone is the term; brand is samsung, iPhone;
class is cellphones-generic. So you cannot trademark
“cellphone” because it will limit. Identify or classify only
product class
*descriptive-conveys characteristic or article to which it
refers/identifies what the product is
-example:powdered drink-cannot be trademarked or nude
lipstick
*suggestive-suggest characteristics of the goods, requires
the buyer to use the thought, imgaination or perception to
connect the mark with the goods. Includes any type of multi-
stage reasoning to understand the mark’s significance.
Exercise a little bit of meaning
-ex. instagram- connects, suggests characteristics
*arbitrary-familiar meaning but the mark is not related to it.
the word already exists pero the meaning is not related.
-use for one and another. Example: Apple, Ivory
*Fanciful-newly invented words or symbols like reddit. circumstances would bring evil that the lawmakers should
-Thus inherently distinctive prevent
*Speech may not be band on the ground that it expresses
GENERIC TERMS. 123 (h) ideas that offend
-function as the common descriptive name of a product *The Slants (East Asian Desents)-reclaim the terms and drain
-common descriptive names which identifies only the type of its denigrating force as deregatory term for Asian persons:
good of which the particular product or servies is a specie US Patent and TM refused because disparages:
HELD: violate first amendment
Why cant be registered? Here: Trademark could have expressive compinent- not only
-there is no commonly used alternative to efectively the source but to say something more either about the
communicate the same function or information product or service or some broader issue.
-how will call a soap of soap is trademarked
9. Color by itself unless defined by a given form or has
*Genericide-when arbitrary or fanciful terms become become distinctive in relation to goods for which registration
generic, then its protection cannot be registered is requested - there should be secondary meaning
*151.1(b)- a mark may be cancelled if it becomes the generic
name for goods, services or a portion thereof, for which it is *Trademark is registrable if it can act as a symbol that
registered distnguishes a firms goods and identifies their source

To determine genericide: 151.1(b) WITHOUT SERVING ANY OTHER SIGNIFICANT FUNTION

-Primary Significance Test: Trademark no longer identifies *doctrine of aesthetic functionality:
the originator of the mark rather it identifies the class of -Can be registered: Involves a determintation is essential to
product the use or purpose of the article or if it affects the cost or
-Yamburger will now identify a class of product: genericide quality of the article
*Mark is valid if the relevant public primarily undestands a -function to the use of color//example NEON GREEN IN
mark as describing who a particular good or service is, or CLOTHING TO BE SEEN so may function no registration!! If
where it comes from. yung LV, walang function = registrable
*Mark has become generic: Relevant public primarily
inderstands a mark as describing “what”the particular good So when can color be registered as a trademark?
or service is irrespective of its source -because if is source-distinguishing
-color can be registered if it does not have any function
Marks that cannot be registered (123.1 h)
Remember: The nature if the goods to which the mark is 10. Shape because of technical factor or by the nature of the
applied will not constitute an obstacle to registration (123.3) goods themselves or factors that affects their intrinsic value
-For it to be registered, it must be compliant with
1. Consist exclusively of signs that are generic for the goods FUNCTIONABILITY TEST:
and services which they seek to identify
2. signs or indications that have become customary or usual *When shape cannot be registered:
(sari sari) -consists of a shape which results from the nature of the
3. descriptive terms unless it has acquired secondary goods
meaning -has a shape which gives substantial value to the goods
4. Flag, coat of arms and insignia (RA 8491) -has a shape which is necessary to obtain a technical result
5. Likely to mislead the public (calling beans as baguio beans)
6. Deception involved as to the characteristics of the mark When can shape be registered? *must concur
(medicine) -if does not have any function//aesthetic functionability
7. Name of a person (descriptive) -source distinguishing or acquired secondary meaning
8. Immoral and disparages (123)
*obscene- whether the material appeals to prurient interest Summary: Can be registered if may secondary meaning
*FUCT is a clothing brand and was refused registration, a -descriptive terms
phonetic twin of Fucked -shapes
*US Court of Appeals: Non-registration/bar on immoral if -consists of color alone
scandalous marks is unconstitutional under the first *probided aesthitic and no function for last two
amendment, so there must be a setting of a clear and
present danger rule to show that these words under these TRADE DRESS: total image and overall appearance; features
such as sign, shape, color or color combination, texture,
graphics or even oarticular sales techniques//serves no other Trademark:
functon dapat aesthetically lang -protection is ordinary trademark
-so theres a reason why coca cola bottle and pepsi bottle are -need to be reg to be protected in this jurisdiction
not the same. US: can be registered if distinguishable -TM infringement if closely related goods or services

-Two pesos v Taco Cabana Well-known mark:

US: Product packaging is TM if inherently distinctive -protection is stronger
in PH: Package is visible sign -no need for registration to be protected
-example is Yellow Cab decor. Walang functionality pero may -TM infringement: even for different goods and services
distinctive
RULE 103 of the IRR for Trademarks: criteria for determining
Cont. of What cannot be registered whether a mark is well known
-Identical with a registered mark-same goods, closely related SC: Mark is well known both internationally and in PH
or nearly resemble mark as to be likely to decieve or cause
confusion 123.1d FOR A SIMILAR PROFUCT THAT IS WELL KNOWN: 123.1e-
*there can be registration of a mark with confusion of a confusingly similar to a well-known mark internationally in
mark which is already registered/existing TM the PH for identical or similar goods or services
*Example: Foodpanda and atty’s mark
consequence: trademark infringement For a dissimilar product which is well-known: 123.f
Use of the mark to be confusingly similar:
Filing date or Priority Date -should indicate a connection between the goods and
*FD: 127- Filipino/The date the Bureau of Tm received the services and the owner of the reg mark
payment for the required fee and the complete application -the interests if the owner of the reg mark are likely to be
for registration of a TM damaged by such use
*PD: the date that a foreign application for TM was forst
filed for registration CONFUSION: Am 10 3 10 SC
**For a foreign mark to be protected in the PH: Should be -presumption of confusion if: likelihood of confusion shall be
registered in PH and USED in PH presumed in case an identical sign or mark is used for
identical goods or services
PRIORITY RIGHT: foreign/only for holders of TM which are
registered in FC. Factors to be used: Case to case basis HA.
As long as the reg of a mark in PH is filed by a person and 1. Strength of the mark: the higher the strength the higher
who previously filed an application for registration in a the confusion- strong mark has the ability to signify to the
foreign country, the filing day in FC is same in PH consumers the source if the goods
-person: that affords reciprocal rights to Filipinos 2. Degree of similarity: the higher the degree of similarity,
Example: Josh a foreigner reg in January 1 is US, Feb 1 in PH. the higher the confusion
Priority date is Janu,ary 1 *Colorable limitation: close or ingenious imitation as to be
calculated to deceive ordinary persons, or such a
HOW TO DETERMINE THE RELATEDNESS OF GOODS? resemblance to the original as to deceive an ordinary
-BDO: We find ways purchaser giving such attention as a purchaser usually gives,
-BPI: We scavenge paths (confusingly similar) as to cause him to purchase the one supposing it to be
*Why? Take a look at the nature if business. Are they closely another
related?
*Closely related if they BELONG TO THE SAME Two test for determining similarity:
CLASSIFICATION: Are they close competitors? Take a look at 1. Dominancy test: Takes a look to the similarity of the
NICE classification//NICE FRANCE AGREEMENT prevalent or dominant features of the competing trademark
-If belong to different NICE classifs, least likely na may that might cause confusion, mistake and deception in the
confusion mind of the purchasing public.
-Identical to, confusingly, constitutes a translation of a well- -Not necessarily to take a look at duplication or intent or
known mark suggestion an effort to imitate.
*exceptions afforded to well-known mark: **Considered more: the aural and visual impressions created
1. Reg in PH is not a requirement 131.3 by the marks on the buyer of the goods
2. No requirement that it should be used in the PH 123.1e *Dominant: is the first word or figure that catches the eyes
or that part which appears prominently to the eyes and
ears
 -impairs the distinctiveness of the famous mark
2. Holistic and totality: consideration of entirety of the marks *immaterial: to look at the presence or absence of confusion
as applied to the products including the labels, and basta may intent as well as actual economic damage
packaging in determining confusing similarity
Take note: there is no ultimate right to trademark as to
Which test to use? SOMETIMES BOTH | but: *155.1 focus prohibit the use of DM that the owner prefers to be
on dominant feature. | *AM no 10 3 10 - “overall
impressions” | *rash buyer: Dominancy test 2. Tarnishing harm: if the product sold by the junior user is of
shoddy or inferior quality, or in some other way is distasteful
3. Proximity of the Products or services or unsavory
-if highly related, high likelihood confusion -association of lack of quality or prestige in the defendant’s
-same classification//NICE CLASSIFICATION or competitors foods with the plaintiff’s unrelated goods

4. Likelihood that the plaintiff will bridge the gap How is registration done in PH:
-high likelihood of expansion is high likelihood of confusion *Effect: Rule 800 (IRR) in relation to 147
-strong possibility of expansion -exclusive right to prevent use by all third parties not having
Remember: Business will extend their business to survive the owner’s consent in a manner that might result to
likehood or confusion
5. Evidence of Actual confusion -those rights of an owner shall extend to those which are
-Problem: Evidence of actual confusion is difficult to obtain goods and services which are not similar to those in respect
and its absence is often given little weight as a result of the mark which is registered

Two types of confusion:
1. Confusion of goods: when a prudent purchaser thinks that
what he is purchasing belong to one’s source of product
when it actually belongs to another
2. Confussion of Business: believes that if it just extension of
business
148: does not give the owner of the mark to preclude:
1. Bona fide use of their names, addresses, pseudonyms, a
geographical name;
2. Exact indications concerning the kind, quality, quantity
destination, value, place of origin, or time of production or of
supply of their goods or services

6. Defendant’s good faith in adopting the mark (standard) Duration of protection

-higher intent to copy higher intent to cause confusion -10 yrs. renewable for 10yrs (perpetual filing every ten years)
-Proper focus: Intent to emulate and copy and use plaintiff’s -provided file a declaration of actual use
design -when to file? Within one year from the fifth anniversary of
the date of the registration of the mark
7. Quality of defendant’s product or service
-lower quality of products the higher the confusion Procedure:
-intends to take undue advantage to the superiority of the 1. Application is submitted to the B of Trademark
products of the plaintiff, relying on the goodwill and 2. Determination of the reqs to satisfy that attachment of a
reputation created by plaintiff’s product filing date
3. Examination which is executed ex parte
8. Sophistication of the Buyer 4. If it appears registrable, it shall be published for
-higher sophistication if buyers the less the confusion opposition in the IPO eGazette
-sophisticated buyers/classes are less likely to be 5. Wait 30 days for opposition
confused //example if super expensive more sophisticated 6. Deemed registered the day following the period of
*Human experience: more attention is given as the price of opposition
the commodity or service increase (*prosec 4months, publication 2 months)

Procedures of Registration If there is opposition:

*TM dilution 4. Hearing of opposition
1. Blurring Harm- a strong mark’s signaling power is 5. Issuance of cert of reg
weakened by the appearance of the same, or as similar, 6. same
mark on completely unrelated goods or services
Elements: Disclaimer: to make of record that a significant element of
-similarity bet the mark name and famous mark a composite mark is not exclusively appropriated apart
-association is created from the composite
 Void: if purpose is to mislead the public
Take note: Abandonment of filing and Amendment of
application LICENSE CONTRACT: Transfer possession over trademark
ex: franchising, merchandising, brand extension or
Renewal of reg: stretching, co-branding, component or ingredient branding,
-for another 10 years certifications/standards
-made at least 6 years prior to the expiration of registration
150: the contracts should contain provision for an effective
For marks n0t domiciled in PH quality control. Maintained or no tarnishing
-renewal in the country where it is filed Must be registered to bind third persons

Cancellation of Registration (2-5 may be field at any time)

INFRINGEMENT: Without consent of the Reg 1. within 5 yrs. from the date of reg
owner//likelihood of confusion 2. genericide
1. Used in commerce 3. reg was obtained fraudulently or contrary to the provision
2. Reproduction and application- reproduce, of IPC
counterfeit...regardless of actual sale 4. Reg mark is being used by or with the permission of, the
registrant to misrepresent the source of the goods or
Remedies: services
1. Injunction 5. if reg owner of the legitimate reason fails to use the mark
2. Damages within the PH by virtue of a license during an uninterrupted
*if cannot be determined, reasonable % *double damages if period of three yrs. or longer
with intention.
*presumption of knowledge: When is non-used is excused:
1. mark is reg if it is displayed with “registered” or “r” -152.1: Caused by circumstances independent of the will of
2. or other notice the trademark owner: example, fortuitous events, lack of
fund is not excuses
3. impound the materials during pendency of the -152.2: use in a form different from the form in which it was
proceedings reg which does not alter distinctive character
-152.3: use in connection with one or more goods or services
Limitation to actions for infringement: belonging to the class
1. Used in GF prior to registration or prior right by the
plaintiff Who files cancellation:
2. Innocent infringer: injunction for future infringement only -locus standi, COA: believes to be damaged by reg if the
-person in the business of printing marks of others mark
-publisher or distributor of magazines or newspapers, Where?
periodical or electronic communication -Bureau of Leg agfairs->dir general ipophil->CA RULE 43
For newspapers: cannot be restrained if it causes the delay
of the delivery of the issue Trade name: 165
3. Imported or sold drugs and medicine -all names may be reg except
-contrary to public order or morals and
*AM no rule: A cert of reg of a mark is a prima facie -if it is liable to deceive trade circles or the public as to the
evidence of: nature of the enterprise identified by that name
1. the validity if the reg
2. the registrant’s ownership of the mark Names and designations shall be protected: even prior to or
3. the registrant’s exclusive right to use the same in without registration against any unlawful act committed by
connection with the goods and services and those that are third parties
related thereto specified in the certificate
*how infringement committed: Use of a similar trade name
Assignment or transfer trademark: or mark likely to mislead the public
-trademark may be assigned separately from the ownership
of the business 165.4: any change in the ownership of a trade name shall be
-form: in writing signed by the contracting parties and made with the transfer of the enterprise or part tehreof
annotated in the COR identified by that name
Effect of reg: Bind third persons
FOREIGN CORPORATION -Cybersquatting- registration of domain name in bad faith as
-can a FC not business reg in PH? Can it sue in PH? he is not the owner of TM under which the domain name has
-GR: only those that are licenses in PH can sue except been reg
trademark for protection of IPR -geographical indications-product originates in a given geo
area and possess qualities ir reputation due to that place of
UNFAIR COMPETITION: origin
-Goodwill: intangible asset that cannot be directly measured -Idem Sonans-sounding the same
-right: a person who has identified in the mind of the public
the goods he manufactures or deals in, his business or
services from those of other has a right in ghe goodwill of MADRID PROTOCOL-one stop solution for reg and managing
said goods business or services so identified marks worldwide allowing the trademark owner to file one
-this may cover unregistered mark application in one language and to pay one set of fees
-violation: uses deception or any other means contrary to GF (IPOPHIL)
to pass off the goods or services for those of the one having -Reg if a person of a mark in the IB of the WIPO will mean
established goodwill protection of the mark in the territory of Contracting States
-Term of protection: Effected for 10 years and renewal
Particular acts: -reqs: registration has been filed with the office of the
1. selling goods and giving them appearance of contracting state, office of the contracting organization or
goods of another manufacturer or dealer filed with the International Bureau; and made by national of
2. Using oackaging devices or words thereon, a contracting state or domiciled or has a real and effective
or in any way likely to influence purchases to believe that the industrial or commercial establishment
goods offered are those of a manufacturer ir dealer -fill up for
-indicate goods and services
WHO ARE LIABLE: -Nice Class
1. those who induce the false belief that such -claim of color
person us offering the services of another who has identified -pay fees
such services in the mind of the public
2. Any person who shall make any false
statement contrary to good faith or a nature calculated to
discredit the goods, business or services of another

advantage of filing for UC: No reg is required

Penalty: imprisonment- 2-5 years; fine php 50k to 200k

Unfair competition: The universal test question is whether

the public is likely to be deceived
However: actual or probable deception and confusion on the
part of the customers by reason of defendant’s practice
must always appear

Some concepts: Origin of the goods

-producer of the goods offered of any idea, concept, or
communication embodied in those goods

*Initial Interest Confusion: When a competitor attracts the

attention of the consumer, even by the time of sale any
confusion that the consumer might have initially
experienced has dissipated
*Go-to phrase: Confusingly similar

Other matters:
-Domain Name: internet addresses, may be made,
sometimes of trademark