• (j) Consists exclusively of signs or of indications that may serve in trade to designate the kind,

quality, quantity, intended purpose, value, geographical origin, time or production of the goods or
rendering of the services, or other characteristics of the goods or services;
• (k) Consists of shapes that may be necessitated by technical factors or by the nature of the goods
themselves or factors that affect their intrinsic value;
• (l) Consists of color alone, unless defined by a given form; or
• (m) Is contrary to public order or morality.
Tests to determine confusing similarity
between marks

• Dominancy Test.
• The dominancy test focuses on the similarity on the prevalent features of the
competing trademarks which might cause confusion or deception, and thus
infringement. If the competing trademark contains the main, essential or
dominant features of another, and confusion or deception is likely to result,
infringement takes place. Duplication or imitation is not necessary; nor is it
necessary that the infringing label should suggest an effort to imitate. The
question is whether the use of the marks involved is likely to cause confusion or
mistake in the mind of the public or deceive purchasers.
Tests to determine confusing similarity
between marks

• Holistic test
In contrast to the Dominancy Test, the 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.
The discerning eye of the observer must focus not only on the
predominant words but also on the other features appearing on both
labels in order that the observer may draw his conclusion whether one is
confusingly similar to the other.
Well-Known Marks

• SECTION 123. Registrability. - 123.1. A mark cannot be registered if it:

• (e) Is identical with, or confusingly similar to, or constitutes a translation of a mark which is
considered by the competent authority of the Philippines to be well-known internationally and in the
Philippines, whether or not it is registered here, as being already the mark of a person other than
the applicant for registration, and used for identical or similar goods or services: Provided, That in
determining whether a mark is well-known, account shall be taken of the knowledge of the relevant
sector of the public, rather than of the public at large, including knowledge in the Philippines which
has been obtained as a result of the promotion of the mark;
• (f) Is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-
known in accordance with the preceding paragraph, which is registered in the Philippines with
respect to goods or services which are not similar to those with respect to which registration is
applied for: Provided, That use of the mark in relation to those goods or services would indicate a
connection between those goods or services, and the owner of the registered mark: Provided,
further, That the interests of the owner of the registered mark are likely to be damaged by such use;
Criteria in Determining when a Mark is well-
known

• A mark is well-known according to Section 123.1(e) if it is considered by

competent authority of the Philippines to be well known internationally
and in the Philippines and that in determining whether a mark is well-
known, account shall be taken of the knowledge of the relevant sector
of the public, rather than the public at large, including knowledge in the
Philippines which has been obtained as a result of the promotion of the
mark. Competent authority as used in this section includes the
Intellectual Property office, Department of Trade and Industry and the
Supreme Court as the Final Arbiter. ( Ernesto Salao (2017), Essentials of
Intellectual Property Laws, page 220)
Rights conferred by Registration

• SECTION 147. Rights Conferred. - 147.1. Except in cases of importation

of drugs and medicines allowed under Section 72.1 of this Act and of
off-patent drugs and medicines, the owner of a registered mark shall
have the exclusive right to prevent all third parties not having the
owner’s consent from using in the course of trade identical or similar
signs or containers for goods or services which are identical or similar to
those in respect of which the trademark is registered where such use
would result in a likelihood of confusion. In case of the use of an
identical sign for identical goods or services, a likelihood of confusion
shall be presumed.
Rights conferred by Registration

• The exclusive right of the owner of a well-known mark defined in

Subsection 123.1(e) which is registered in Philippines, shall extend to
goods and services which are not similar to those in respect of which
the mark is registered, provided that use of that mark in relation to
those goods or services would indicate a connection between those
goods or services and the owner of the registered mark and provided
further that the interest of the owner of the registered mark are likely to
be damaged by such use. (Sec 147.2)
Infringement and remedies

• The elements of infringement under R.A. No. 8293 are as follows:

• (1) The trademark being infringed is registered in the Intellectual Property Office; however,
in infringement of trade name, the same need not be registered;
• (2) The trademark or trade name is reproduced, counterfeited, copied, or colorably imitated
by the infringer;
• (3) The infringing mark or trade name is used in connection with the sale, offering for sale,
or advertising of any goods, business or services; or the infringing mark or trade name 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;
• (4) The use or application of the infringing mark or trade name is likely to cause confusion or
mistake or to deceive purchasers or others as to the goods or services themselves or as to
the source or origin of such goods or services or the identity of such business;
andcralawlibrary
• (5) It is without the consent of the trademark or trade name owner or the assignee thereof.
(Prosource International, Inc. vs Horphag Research Management, G.R. No. 180073, 2009)
Infringement and remedies

• In Republic Gas Corporation vs Petron Corporation the Supreme Court

made it categorically clear that the mere unauthorized use of a
container bearing a registered trademark in connection with the sale
distribution or advertising of goods or services which is likely to cause
confusion, mistake or deception among the buyers or consumers can be
considered as trademark infringement. ( Ernesto Salao (2017), Essentials
of Intellectual Property Laws, page 273)
Trademark Dilution

• Trademark dilution is the lessening of the capacity of a famous

mark to identify and distinguish goods or services, regardless of
the presence or absence of: (1) competition between the owner of
the famous mark and other parties; or (2) likelihood of confusion,
mistake or deception. Subject to the principles of equity, the owner
of a famous mark is entitled to an injunction "against another
person’s commercial use in commerce of a mark or trade name, if
such use begins after the mark has become famous and causes
dilution of the distinctive quality of the mark." This is intended to
protect famous marks from subsequent uses that blur
distinctiveness of the mark or tarnish or disparage it. ( Levi
Strauss v. Clinton Aparelle, G.R. No. 138900, 2005)