Trademark Infringement vs. Unfair registration.

(Ecole de Cuisine Manille

Competition v. Contreau & Cie. et al., G.R. No.
Q: Distinguish Trademark Infringement 185830, June 5, 2013)
from Unfair Competition.
Well-Known Marks
(1 Question)
A: Trademark Infringement
• The unauthorized use of the Q: What is the protection extended to
registered trademark; prior registration well-known marks?
of the trademark is a pre-requisite to
file action. A: Generally, the protection is a
prohibition on subsequent
Unfair Competition registration that does not include
services and goods of different
• The passing off of one’s goods as
nature or kind.
those of another; trademark
registration is not necessary to be held For an internationally well-known
liable. mark not registered in the
Philippines, application for
registration of a subsequent or
Acquisition of Ownership of Trade Name
similar mark can be rejected only if
(1 Question)
the goods or services are similar to
those of the internationally well-
Q: How is ownership of trade name known mark. (Sec. 123.1(e), IPC, as
acquired? amended)

A: Ownership of trade name is acquired For those registered in the

through adoption and use.
Registration is not required. (Sec.
165, IPC, as amended)
Prior Use of Mark As A Requirement
(1 Question)
Q: Is the prior use of mark a
requirement before filing the
application?
A: No. RA 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
Philippines, application for
registration can be refused even if
the goods or services specified in the
application are not identical or
similar to those of the internationally
well-known. (Sec. 123.1 (f), IPC, as
amended)
Use By Third Parties Of Names Etc., Similar
To Registered Mark
(1 Question)
Q: Can third parties use names etc. similar
to registered mark?
A: Yes. Registration of the mark does not
 confer on the registered owner the right
to preclude third parties from using
bona fide their names, addresses,
pseudonyms, a geographical name,
or exact indications concerning the kind,
quality, quantity, destination, value,
place of origin, or time of production or
of supply, of their goods or services. (Sec.
148, IPC, as amended)
Trade Names or Business Names
(1 Question)
Definition of Trade Name
Q: What is trade name?
A: A trade name is the name or designation
identifying, or distinguishing an
enterprise. (Sec. 121.3, IPC, as amended)
NOTES:
 Proof of prior and continuous use is
necessary to establish ownership of
trademark.
 Such ownership of the trademark
confers the right to register the trademark.
PATENTS
(13 Questions)
Rights Conferred By A Patent
(5 Questions)
Q: What are the rights conferred by a
patent?
A: The rights conferred are:
 When the subject matter is a
product:
Right to restrain, prohibit and prevent
any unauthorized person or entity from
making, using, offering for sale, selling
or importing the product. (Sec. 71, IPC)
 When the subject matter is a
process:
Right to restrain, prohibit and prevent
any unauthorized person or entity from
manufacturing, dealing in, using,
offering for sale, selling or importing
any product obtained directly or
indirectly from such process.
(Sec. 71, IPC) Also, the right to assign
the patent, to transfer by succession,
and to conclude licensing contracts.
(Sec. 71.2, IPC)
Ownership Of A Patent
(2 Questions)
Q: Who has the right to a patent?
A: The right to a patent belongs to:
 Solo Invention:
The inventor, his heirs, or assigns.
(Sec. 28, IPC, as amended)
 Joint Invention:
Jointly owned by the inventors. (Ibid.)
 Two or more persons have made the
invention separately and
independently from each other:
The person who filed an application for
such invention, or where two or more
applications are filed for that same
invention, to the applicant who has the
earliest filing date or, earliest priority
date. (Sec. 29, IPC, as amended)
 Commissioned Work:
The person who commissioned the work,
except otherwise when provided in the
contract. (Sec. 30.1, IPC)
  During the course of an employment
contract:
The employee if the inventive activity
is not part of his regular duties; or the
employer if the invention is the result of
the performance of the employee’s
regularly assigned duties; except if there
is an agreement to the contrary.
(Sec. 30.2, IPC, as amended)

Patent Infringement
(2 Questions)

Q: What constitutes a patent infringement?

A: The making, using, offering for sale,

selling, or importing a patented product
or a product obtained directly or
indirectly from a patented process; or
the use of a patented process without
the authorization of the patentee.
(Sec. 76.1, IPC, as amended)

Doctrine of Equivalents
Q: When does an infringement of patent
occur under the Doctrine of Equivalents?

A: Infringement of patent occurs when a

device appropriates a prior invention, by
incorporating its innovative concept,
and albeit with some modifications and
changes which perform the same
functions, in substantially the same way,
to achieve the same result.