IPL | TRADEMARK

FINALS that there is a box that’s coming

closer and its something that you
TRADEMARK ordered?
-it feels that there’s a certain relief
Notes: but happiness that finally
▪ It is an intellectual property that is something that you want is here.
a visible sign capable of ▪ So, there is a psychological
distinguishing goods and services. association that is being created by
this symbols especially when they
WHY IS IT PROTECTED? become engrained so much in your
life.
Notes: Ex: Jollibee
▪ There are a lot of cases for
trademark as compared to patent WHAT IS THE PURPOSE OF
and copyright. TRADEMARK?
Why? ▪ Consumers
-trademarks are owned by • Minimizes search costs
business owners. Trademarks are Notes:
owned by those engaged in ▪ Because it serves as a shortcut.
business so they will exert every ▪ Ex: if you want to purchase goods
effort to make sure that their from the grocery and you are loyal
intellectual property is protected. to a certain brand, silver swan for
example, anything that is silver
According to Justice Frankfurter: swan you are going to purchase it.
▪ The protection of trademarks is the
law’s recognition of the psychological ▪ Producers
function of symbols. • Regulate business ethics
• Foster fair and honest
Notes: competition
▪ When you see a trademark, there is • Encourage the production of
already a signaling that happens. quality products and
▪ So there is a reason why every food
• Simultaneously discourages
restaurant has a color red because
those who hope to sell inferior
it talks about desire as well as
products
hunger.
• Serves as advertisement

TRADEMARK
▪ Merchandising shortcut which
induces a purchaser to select what
he wants, or what he has been led to
Notes: believe what he wants.
▪ What is your psychological
association especially when you TRADEMARK FUNCTIONS
order something and you would see ▪ Source-identifier

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▪ Differentiator
▪ Quality indicator
▪ Advertising device
Notes:
▪ The trademark alone would carry it
that you don’t actually need to
actually have influencers but that
would be sufficient.
TRADEMARK GIVES ITS OWNER
EXCLUSIVE RIGHTS TO:
▪ Use the trademark to identify goods
or services
Notes:
▪ It is a right by itself because it is
acquired from registration.
▪ 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
(WIP DL 001 Primer on Intellectual
Property)
DEFINITIONS:
▪ Mark (Sec. 121.1)- means any
visible sign capable of distinguishing
the goods (trademark) or services
(servicemark) of an enterprise and
shall include a stamped or marked
container of goods.
Notes:
▪ Ex: it is a coca-cola bottle, that is
in itself a mark.
▪ Collective mark- means any visible
sign designated as such in the
application for registration and
capable of distinguishing the origin
or any other common characteristic,
including the quality of goods or
services of different enterprises
which use the sign under the control
IPL | TRADEMARK
of the registered owner of the
collective mark.
Notes:
▪ If you see this, its not going to
identify the same source but more
or less it is going to identify the
quality of the goods or the services.
▪ It is an indicator of a membership
in a group.
Notes:
▪ From the example above, if you are
going to see this mark, it means
that the materials that were used
are 100% paperboard packaging.
▪ It is a collective mark because
anyone who is a member of the
recycled paperboard alliance can
make use of this symbol but it is
different from identifying the
source of the product. It’s just an
indicator of the quality of the
product.
▪ Trade Name- means the name or
designation, identifying an
enterprise.
Notes:
▪ This is the name under which a
business is conducted.
▪ Ex: the trademark is McDonald’s
but the trade name is under
Golden Arches Development Corp.
TRADEMARK PROTECTION
▪ Based on the use of a mark in
commerce; it is not based on
creation, as with copyright, or
invention as with patents.
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Notes:
▪ Trademark is based on the use of a
mark such that if there is no use,
then it stops being protected.
▪ What is being protected is the
distinctiveness of the mark. It’s the
ability to distinguish.
▪ There is a requirement that it
should be continually used but its
not a requirement that it should be
of some purpose other than to
distinguish goods and services.
▪ What is being protected by
trademark is its ability to
distinguish goods and services.
COPYRIGHT v. TRADEMARK
▪ Copyright: originality
▪ Patent: novelty
▪ Trademark: distinctiveness
Notes:
▪ “Can it distinguish goods?” That is
all you have to focus on trademark.
LIKELY TO CAUSE CONFUSION:
▪ Ground to reject registration
Notes:
▪ If there is a mark that would likely
cause confusion to another, that
means that this mark cannot be
protected.
▪ Ground to cancel registration
Notes:
▪ If it appears that a mark which was
initially granted registration will
likely cause confusion, then that is
also a ground to cancel the
registration.
▪ Ground for trademark infringement
Notes:
▪ It depends on what’s the situation.
If it is still subject of registration,
IPL | TRADEMARK
you don’t talk about infringement.
If there is already registration, then
you have to take a closer look in to
the problem whether it is to cancel
registration or is it arising from
infringement.
REMEMBER:
▪ The nature of the goods to which the
mark is applied will not constitute an
obstacle to registration. (Sec. 123.3)
Notes:
▪ The nature of the goods does not
matter.
▪ Ex: it does not matter if the
trademark is for a gun, which is
something we do not like. It is still
protected by trademark.
▪ Do not take a look at the object.
Just take a look at the trademark.
HOW MARKS ARE ACQUIRED?
▪ Sec. 122- marks are acquired
through registration made validly in
accordance with the provisions of the
law.
Notes:
▪ Who is the owner of a trademark?
-the owner of the goods and
services.
-the entity who will cause the
registration of the trademark.
▪ Trademark is territorial.
Notes:
▪ If a trademark is not registered in
the Philippines, it cannot be
protected in the Philippines.
▪ Ex: there is this mark that is
registered in Singapore. If it is not
registered in the Philippines and
someone makes use of the same
mark, the person who made use of
the mark in the Philippines cannot
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be held liable for trademark
infringement.
-Why?
-because the limitation of the
protection of the mark is only in
Singapore. If there is no
registration in the Philippines,
then it may be used by someone
else in another territory.
▪ that is the reason why it becomes
expensive to protect or enforce
trademark. Because if you have a
mark, then it should be protected
in every territory where you have a
business.
▪ Ex: even the name of burger in
Jollibee is protected by trademark.
Even the slogan for a particular
season is protected.
▪ The only time you could make use
of color is if you are claiming color
as part of your trademark.
Otherwise, the requirement is that
it should be in black and white.
Example:
1. BDO Unibank
Registration No. 11193 (151)
Date of registration: 2014-11-20
“We find ways”
Notes:
▪ You cannot also use “We scavenge
pathways” or any transliteration of
that will not be permitted because
its likely to cause confusion.
2. Saint Louis University
▪ The name Saint Louis University
▪ Logo of SLU
TRADEMARK INFRINGEMENT
▪ There is cause of action for
trademark infringement if and only
if:
IPL | TRADEMARK
• Mark is valid and legally
protectable
Notes:
▪ it means that it is a registered
trademark with the Intellectual
Property Office of the Philippines
(IPOPHIL), the Bureau of
trademarks of the IPOPHIL
• Plaintiff owns the mark
Notes:
▪ How is this proven?
-by the registration of the
trademark in the name of the
plaintiff.
• Defendant’s use of the mark is
likely to create confusion
concerning the origin of goods
or services.
Notes:
▪ When we say origin of goods or
services, we are talking about who
is the source of this product, who
is the maker of this product or who
renders this service if it is a service
mark.
WHO IS HARMED BY TRADEMARK
INFRINGEMENT?
▪ Producers
• May suffer a loss in sales
• Trademark owner may suffer a
reputational harm.
Notes:
▪ Because of the confusion, the bad
quality of a product may be
attributed to the producer when in
fact its not their product.
▪ There might be sufferings in loss of
sales because they might think
that by purchasing this product,
they’re purchasing from the
producer they intended.
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-Ex: There is Jollibee 1 and Jollibee
2, they might think that Jollibee 2
is a store of Jollibee 1. Instead they
are taking away profits from
Jollibee 1.
▪ What is the disadvantage then to
producers of trademark
infringement, remember the
primary purpose of trademark.
Because there is likelihood of
confusion, you can no longer rely
on the trademark to create a
psychological function and you can
no longer rely on trademark to
identify the source of a product.
WHAT MAY BE REGISTERED?
▪ It must be distinctive
Notes:
▪ Because the primary purpose of
trademark is to distinguish goods
and services.
▪ Not be deceptive
Notes:
▪ There should be no deceit that is
involved in either claiming it to do
something when its not actually
capable of doing those things.
▪ Not contrary to public or morality
▪ Not identical or confusingly similar to
an existing trademark
Notes:
▪ In general, these are the things
that may be registered but its not
the entire list. This is but a
summary.
HEIRARCHY OF TERMS ACCORDING TO
DISTINCTIVENESS
Notes:
IPL | TRADEMARK
▪ When we say “terms” it could be
referring to a word, or it could also
be a picture, or characteristics.
Generic > Descriptive > Suggestive >
Arbitrary and Fanciful
Notes:
▪ As you move from generic to
arbitrary and fanciful, it becomes
more inherently distinctive. And
the higher it is in this, the more
protection it is afforded because of
its ability to distinguish goods and
services.
▪ Arbitrary and fanciful marks are
those that are automatically
entitled to protection although
there should be registration first
because it has a natural ability to
identify a particular source of a
product.
▪ Generic
Notes:
▪ Functions as the common name of
a product or class.
▪ Ex: phone, laptop, notebooks-
these are generic terms. And
because they are generic terms,
they refer to a lot of things. They
will not be considered as
distinctive.
▪ Descriptive
Notes:
▪ They directly convey the
characteristics or ingredient of
article to which it refers.
▪ Suggestive
Notes:
▪ Rather than describing it, it’s a
step above descriptive. Rather than
describing the characteristics of
the goods, it requires the buyers to
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 IPL | TRADEMARK

use thought, imagination, or ▪ Functions as the common

perception to connect the mark descriptive name of a product
with the goods. class
▪ Ex: dropbox- which is a computer ▪ Common descriptive names
program is a suggestive term which identifies only the type
because essentially the purpose of of good of which the particular
that program is to act as a product or service is a specie.
repository of all materials. Notes:
▪ Generic terms cannot be registered
▪ Arbitrary as trademark because it is not
Notes: inherently descriptive.
▪ It is a familiar meaning but the
mark is unrelated to that familiar ▪ Why?
meaning. -there is no commonly used
▪ Ex: apple- a fruit, but can also alternative to effectively
pertain to trademark of MacIntosh communicate the same function or
computers. information.
▪ Ex: ivory- pertains to something Notes:
than can be generated by the tusk ▪ If we are going to protect a generic
of an elephant, but it is also a term it means it becomes an
trademark for a soup. = soap exclusive property of the owner of
the trademark. So how then will
▪ Fanciful communicate to someone about a
Notes: book when you can no longer use
▪ A newly invented word or symbol the term book without incurring
that is for the first time being used violation of the right of the
for that program. trademark owner.
▪ Ex: Reddit, escalator (used to be a ▪ You cannot deprive competing
fanciful; it is a trademark) manufacturers of the product of
Important! their right to call an article by its
Terms Registrable name.
Generic No, Never -Ex: How will you call a soap if the
Descriptive No, unless acquired term soap is trademarked?
secondary meaning ▪ It cannot be protected because the
Suggestive Yes, unless becomes exclusivity associated with it will
generic remove it from the realm of things
Arbitrary Yes, unless becomes that we can use.
generic
Fanciful Yes, unless becomes 2. Descriptive terms (Sec. 123 i)
generic ▪ Consists exclusively of signs of
indications that may serve in trade to
MARKS THAT CANNOT BE REGISTERED designate the kind, quality, quantity,
1. Generic terms (Sec. 123 h) intended purpose, value,
geographical origin, time, or
production of the goods or rendering

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 IPL | TRADEMARK

of the services, or other Notes:

characteristics of the goods or
services;
Notes:
▪ Ex: a nude lipstick can be
considered as a registrable
X trademark because it talks about
what kind of lipstick that is.
▪ Except when it acquires secondary
meaning.
- cannot be protected unless it acquires a secondary meaning
HOW TO DETERMINE IF IT IS
DESCRIPTIVE
▪ From perspective of the mind of the
relevant class of persons,
▪ The description of the characteristics
of the goods or services concerned or
whether it is reasonable to assume
that that might be the case in the
future.
Notes:
▪ So even if it is not a descriptive
term now, it might be in the future,
then it should not be registered as
a trademark.
3. Sec. 123.1
▪ If it consists exclusively of signs or
indications that have become
customary or usual.
Notes:
▪ Ex: sari-sari store, it pertains to
every little retail shop that you can
purchase goods and merchandise
from, it cannot be registered.
4. Flag, coat of arms and insignia
Notes:
▪ Ex: UNESCO, UN
5. Sec. 123.1
▪ Is likely to mislead the public
▪ Deception involved as to
characteristics of the mark
▪ Name of a person
▪ A name is considered as a
descriptive term and is
protected if there is only an
acquired a secondary meaning.
But if there is none, then it
cannot be protected.
6. Sec. 123.1 (a)
▪ Consist of immoral, deceptive, or
scandalous matter.
Notes:
▪ We are not talking about the
object here, we are only talking
about the registered term or the
mark that is being sought to be
registered.
▪ Supreme Court has decided
that when you talk about
obscene, the material only
appeals to prurient interest.
▪ Or matter which may disparage or
falsely suggest a connection with
persons, living or dead, institutions,
beliefs or national symbols, or bring
them to contempt or disrepute.
Notes:
▪ Ex: Enrile sinungaling. Any
trademark like that will not be
protected because it disparages
another person.
7. Sec. 123.1 (m)
▪ Is contrary to public order and moral
Notes:
▪ Again, it is not the object, it is just
the terms.
▪ Ex: ibagsak ang gobyerno. That
may not be granted any protection
by the Bureau of trademarks
because it is contrary to public
the order or to morals.
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8. Color (Sec. 123.1 l)
Notes:
▪ Color by itself cannot be protected
by trademark.
▪ Consists of color alone, unless
defined by a given form.
Notes:
▪ Why not?
-because it means that other
people could no longer use this
mark in any capacity whatsoever.
▪ If this is registered as a trademark
and in inclusion in a notebook,
clothing, it would already be
grounds for trademark
infringement.
Notes:
▪ Can the color of the vest of the UK
police and the sole of the
Louboutin be protected?
-they said that these colors is
capable of distinguishing other
uniformed men as well as other
cops in other countries. And this
case of the red sole, when you see
a red sole you know for a fact that
it is Louboutin. Louboutin sued
YSL because it claimed that this
was trademark infringement.
HOW DO YOU KNOW IF A COLOR IS NOT
REGISTRABLE
▪ The utilitarian test (or
functionability test) for functionality
inquires into whether the subject
color is essential to the use or
purpose of the product or affects the
cost or quality of the product.
IPL | TRADEMARK
Notes:
▪ The redness of Jollibee does not
serve any purpose. The only reason
its that is because of the
psychology of having a color like
that which is used by almost all
restaurants.
▪ Is there a purpose why the product
is colored this way?
▪ Ex: activated charcoal-the color of
activated charcoal is always black.
-is there a reason why it is color
black?
-can I registered that in my product
which is an activated ice cream?
-there is a function of the color. If I
now trademark that color, it means
that all my competitors wither
serving burger, ice cream or for any
product like toothpaste, it means
that they would now be liable for
trademark infringement because
they can no longer produce their
goods without making use of the
color black. If it serves any other
purpose, if its that color because of
its use or its function, then it
cannot be registered.
COLOR IS REGISTRABLE AS
TRADEMARK
▪ It can act as a symbol that
distinguishes a firm’s goods and
identifies their source, without
serving any other significant
function.
Notes:
▪ If there is no function to it, only to
identify who the maker of the
product is, that is the only time
trademark over color can be
granted.
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CASE OF LOUBOUTIN’S RED SOLE
▪ There was a suit filed by Louboutin
against YSL because YSL came up
with its own shoes that has a red
sole.
▪ The US Court ruled that this color
may be used as a trademark only if
the sole is a different color from the
shoes because then, it serves only
to identify the source of the
product.
▪ If the color of the shoe is red as
well, the US Court said that this
cannot be trademark. It most likely
follows that whatever is the color of
the shoes, that that would be the
color of the sole itself. And
therefore, it serves as a function.
Its color red other than to only
identify the source.
DOCTRINE OF FUNCTIONALITY
▪ Involves a determination if it is
essential to the use or purpose of the
article or if it affects the cost or
quality of the article.
Notes:
▪ If the color increases the value of
the product, then it also cannot be
a basis for its protection as a
trademark.
▪ The only purpose that it should
serve in order for it to be protected
Remember!
as a trademark is to identify the
source of the product, to identify
the maker of the product, or the
entity that provides the service.
▪ Because if it were to be trademark
as well, then it would inhibit
legitimate competition by allowing
a producer to control a useful
product feature.
IPL | TRADEMARK
9. Shape
Notes:
▪ Shape alone is insufficient to be
protected by trademark.
▪ Because of technical factor or by the
nature of the goods themselves or
factors that affects their intrinsic
value (Sec. 123.1 k)
WHEN SHAPE CANNOT BE
REGISTERED:
▪ Consists of a shape which results
from the nature of the goods.
Notes:
▪ Ex: a pencil is that way because of
the nature of the goods.
▪ Has a shape which gives substantial
value to the goods.
Notes:
▪ If there is a reason why people
purchase a thing or a good because
of its shape because how distinct it
is from other goods of that same
product.
▪ Ex: curved television.
-can the curved shape be
trademark?
-no. because the reason why we
purchase that is not only because
it is a television but rather because
of its shape.
▪ If the intrinsic value is so anchored
on the shape of the product itself it
cannot be protected by trademark.
▪ Has a shape which is necessary to
obtain a technical result.
Notes:
▪ Ex: light bulb. It is shaped that way
in order for electricity to be
conducted and to be able to diffuse
light in a setting over which it is
used.
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CASE OF BANG & OLUFSEN’S
▪ The court finds that in the present
case the shape for which registration
was sought has a very specific
design. In the Court’s view, that
design is an essential element of
Bang & Olufsen’s branding and
increases the value of the product
concerned. Furthermore, it is
apparent from extracts from
distributors’ websites and online
auction or second-hand websites
that the aesthetic characteristics of
that shape are emphasized first and
that the shape is perceived as a kind
of pure, slender, timeless sculpture
for music reproduction, which makes
it an important selling point.
Accordingly, the Court holds that
OHIM did not make any error in
finding that, independently of the
other characteristics of the product
at issue, the shape for which
registration was sought gives
substantial value to that product.
WHEN CAN SHAPE BE REGISTERED AS
A TRADEMARK?
▪ Shape can be registered if it does not
have any function.
▪ Because it is source-distinguishing
MARKS THAT CAN BE REGISTERED
BECAUSE OF SECONDARY MEANING
▪ Descriptive terms
▪ Shapes
▪ Consists of color alone
➢ Provided, there is no function served
by the color and the shape.
IPL | TRADEMARK
PROTECTION BECAUSE OF SECONDARY
MEANING
▪ Secondary meaning- distinctiveness
through secondary meaning
consumers have come to recognize
the mark as a source indicator.
Notes:
▪ Ex: nude lipstick- it is descriptive
because it talks about what it is.
But if you can associate in the
minds of the consumers that this
nude lipstick is the only product of
this particular cosmetic company,
then it already acquires a
secondary meaning. That its not
just talking about the
characteristic or ingredients or its
purpose but rather it is also
identifying who the maker is from
whom this product emanates from.
▪ If this is the case, it will be granted
trademark protection and would
mean that others can be prohibited
from using a similar mark that is
nude liptick.
DOCTRINE OF SECONDARY MEANING
▪ Trademark is interpreted by the
consuming public to be not only an
identification of the product, but also
a representation of the product’s
origin.
Notes:
▪ Because of its long use
intentionally created by its
originator, that there is not an
identification, a psychological link
that is created by the color, shape,
as well as the descriptive term not
only to identify what the product or
good is but rather to also identify
who is the originator of the
product.
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▪ “second in time, but first in mind”
Notes:
▪ That’s not how we know it at first
but essentially after long use it
becomes first in mind.
HOW SECONDARY MEANING IS
ACQUIRED?
▪ Secondary meaning must have
arisen as a result of substantial
commercial use of a mark in the
Philippines.
Notes:
▪ In all other kinds of trademark
registration, there is no
requirement for prior use in order
for it to be granted registration.
▪ Such use must result in the
distinctiveness of the mark insofar as
the goods or the products are
concerned.
▪ Sec. 123.2
▪ Proof of substantially exclusive
and continuous commercial
use in the Philippines for five
years before the date on which
the claim of distinctiveness is
made.
EVIDENCE TO SHOW SECONDARY
MEANING
▪ Advertising and sales growth
QUESTIONS
1. Trade dress
▪ Trade dress of a product is
essentially its total image and
overall appearance.
▪ It may include features such
as size, shape, color, or color
IPL | TRADEMARK
combination, texture,
graphics, or even particular
sales techniques.
Notes:
▪ Not just talking about packaging
which is part of it. but also the
design of a restaurant.
In the US
▪ Trade dress is registrable if
inherently distinctive.
PRODUCT PACKAGING
▪ if inherently distinctive, registrable.
TRADE DRESS REGISTRABILITY
▪ depends on its non-functionality.
Notes:
▪ trade dress serves a certain
function. It has an aesthetic
functionability. And because of
that, there is an intrinsic value that
is associated with it.
▪ does it serve any other function?
▪ Are we going too far when were
requiring that in order for a mark
to be considered as non-
functionable that there is no
utilitarian purpose to it? why don’t
we stop considering the intrinsic
value?
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2. Immorality and Obscenity
▪ In re Brunetti
USCA decided December 15,
2017
(we are fuct)
Notes:
▪ This is a free speech case. free
speech decision of law which
according to political law should be
based on something before it can
be restricted.
▪ In the US, they declared as
unconstitutional a prohibition in
the trademark law that prohibits
registration of marks just because
it is immoral o obscene.
▪ Fuct is a clothing brand and was
refused registration.
▪ Because fuct is the past tense of the
verb “fuck”, a vulgar word and is
therefore scandalous.
▪ Held: fuct is a phonetic twin of
fucked. But, there is a bar on
immoral or scandalous marks is
unconstitutional under the first
amendment.
Notes:
▪ There must be clear and present
danger that exists. That words are
used in such circumstances and
are of such nature as to create a
clear and present danger, that they
will bring about substantive evils
IPL | TRADEMARK
that the law maker has the right to
prevent.
▪ Why are you imposing or
restricting free speech which is
valued by the constitution, which
should be protected by the state
but in registering trademarks you
are in a way restricting free
speech?
▪ “speech may not be banned on the
ground that it expresses ideas that
offends.”
Notes:
▪ This provision of the trademark
law, which is similar to ours is
content- based and presumably,
presumptively valid.
▪ Matal v. Tam, US SC
June 2017
Notes:
▪ Here, they wanted to register as
trademark the name of their band
which is “the slants”
▪ The slants- “reclaim” the term and
drain its denigrating force as a
derogatory term for Asian persons.
▪ US Patent and Trademark office
refuse because to have it registered
because it may “disparage or bring
into contempt or disrepute any
persons, living or dead.
▪ Similar in the Philippines- may
disparage or falsely suggest a
connection with persons, living or
dead, institutions, beliefs or national
symbols, or bring them to contempt
or disrepute.
▪ Held: (Justice Alito)
▪ We now hold that this
provision violates the Free
Speech Clause of the First
Amendment.
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▪ Most, if not all, trademarks
have an expressive
component. In other words,
these trademarks do not
simply identify the source of a
product or service but go on to
say something more, wither
about the product or service or
some broader issue.
▪ The name “the Slants” not only
identifies the band but expresses a
view about social issues.
▪ Finally, the court said that speech
that demeans on the basis of race,
ethnicity, gender, religion, age,
disability, or any other similar
ground is hateful; but the proudest
boast of our free speech
jurisprudence is that we protect the
freedom to express “the thought that
we hate”
Notes:
▪ Why does this provisions that
violate our own freedom of speech
remain in our intellectual property
code?
CAN THIS BE TRADEMARKED?
▪ Fragrance
▪ Music (Netflix intro)
Notes:
• You know that that is a show from
Netflix already just by hearing the
introduction.
• But because of our definition of
trademark is only visible sign.
IDENTICAL WITH A REGISTERED MARK
Notes:
▪ A mark will not be registered if it is
identical to an already registered
mark.
IPL | TRADEMARK
▪ Sec. 123 (d) – is identical with a
registered mark belonging to a
different proprietor or a mark with an
earlier filing or priority date, in
respect of:
i. the same goods or services, or
ii. closely related goods or
services, or
iii. if it nearly resembles such a
mark as to be likely to deceive
or cause confusion;
FILING DATE OR PRIORITY DATE
▪ Filing date (Sec. 127)- the date the
Bureau of Trademark received the
payment for the required fee and the
complete application for registration
of a trademark.
▪ Priority date- the date that a foreign
application for trademark was first
filed for registration.
Notes:
▪ It is only relevant if it pertains to a
mark that was previously
registered in a foreign country but
is subsequently registered in the
Philippines.
▪ Ex: registration in that country was
January 2020. Filing date in the
Philippines would have been
January 2021.
-Does that mean that it is January
2021 that is considered as the
application date?
-No. the priority date which is
applicable in the Philippines is the
same date as that application was
filed in another country. So even if
it was only filed in the Philippines
January 2021, if the application
was made in a foreign country
January 2020, the date for
registration from the perspective of
the Philippines will also be January
2020.
J 13

▪ Why does this matter? Because the
Philippines applies the first who file
rule. It means that the application
that will be favored will be the first
one that is filed in this country.
A FOREIGN MARK TO BE PROTECTED
IN THE PHILIPPINES
▪ Should be registered in the
Philippines as well
▪ Used in the Philippines.
PRIORITY RIGHT
▪ Filed on the same day as filed in the
foreign country
▪ Application for registration of a mark
filed in the Philippines by a person*
and who previously filed an
application for registration. (Sec.
131)
Notes:
▪ Just a converse of the priority date.
▪ It is the privilege of having an
application that was filed later
have the same date as the
application made in a foreign
country.
▪ Person- belongs to a country which
affords the same rights to filipinos
as part of any treaty or convention.
▪ Ex: January 1- filed in US
February 1- filed in PH
(must be filed within 6 months
after the initial registration) Remember! Philippines. You mention about
Q: What is the date of filing?
A: Jan. 1
PROTECTION OF TRADEMARK IN THE
PHILIPPINES ONLY IF:
▪ Person* had it registered in the
country of origin of the applicant.
▪ Subsequent application in foreign
country.
IPL | TRADEMARK
CANNOT CLAIM RIGHT OF PRIORITY:
▪ If application abroad was
abandoned, withdrawn, or otherwise
disposed of.
▪ Ex: Some mark by X registered
December 2019 (there is a mark by X
which is identical to the mark of Y)
Registered by Y in March 2020
the Philippines
Registered by Y in March 2019
Australia
Notes:
▪ Ex: If a mark has a filing date
which is March 2019, will that be
given preference because it was
filed first because the mark of Y
was registered in the Philippines in
March 2020?
▪ Q: However, this is a mark that was
previously registered with a foreign
bureau of trademark office and it
was registered in australia March
2019. Is the mark of X considered
first to be filed?
A: No. because the registration of Y
on March 2019 shall be considered
as to be first filed even if the
application in the Philippines was
only a year after because March
2019 is considered as the priority
date for the application of Y.
▪ You only talk about the filing date
when it is a registration first in the
priority date if it pertains to a
foreign application made prior to
Philippine registration.
IDENTICAL TO, CONFUSINGLY,
CONSTITUTES A TRANSLATION OF A
WELL KNOWN MARK
Just do it. (well known mark)
J 14
 IPL | TRADEMARK

EXCEPTIONS AFFORDED TO WELL (d) the quality-image or reputation

KNOWN TRADEMARK acquired by the mark;
▪ Registration in the Philippines is not (e) the extent to which the mark has
a requirement for protection. (Sec. been registered in the world;
131.3) (f) the exclusivity of registration
▪ No requirement that it should be attained by the mark in the world;
used in the Philippines (Sec. 123.1 e) (g) the extent to which the mark has
been used in the world;
TRADEMARK WELL KNOWN (h) the exclusivity of use attained by the
MARK mark in the world;
Protection is Protection is (i) the commercial value attributed to the
ordinary trademark stronger mark in the world;
Need to be No need for (k) the outcome of litigations dealing
registered to be registration to be with the issue of whether the mark
protected in this protected is a well-known mark; and,
jurisdiction (1) the presence or absence of identical
To not be registered To not be registered or similar marks validly
or to constitute or to constitute registered for or used on identical or similar
trademark trademark goods or services and
infringement: must infringement: even owned by persons other than the person
be closely related for different goods claiming that the mark is a
goods or services and services well-known mark.

Rule 103 of the IRR for Trademarks Supreme Court Rules on Trademark
RULE 103. Criteria for Determining ▪ Mark is well-known both
Whether a Mark is Well-known. - internationally and in the
In determining whether a mark is well- Philippines.
known, the following criteria or any
combination thereof may be considered: FOR A SIMILAR PRODUCT WHICH IS
(a) the duration, extent and WELL-KNOWN
geographical area of any use of the mark, ▪ Sec. 123.1 e- confusingly similar to a
in well-known mark internationally and
particular, the duration, extent and in the Philippines for identical or
geographical area of any similar goods or services.
promotion of the mark, including
advertising or publicity and the FOR A DISSIMILAR PRODUCT WHICH IS
presentation, at fairs or exhibitions, of the WELL-KNOWN
goods and/ or services to ▪ Sec. 123.1 f- Confusingly similar to a
which the mark applies; well-known mark internationally and
(b) the market share, in the Philippines in the Philippines for dissimilar
and in other countries, of the goods or services.
goods and/ or services to which the mark
applies;
(c) the degree of the inherent or
acquired distinction of the mark;

J 15

CONFUSION
Use of a mark to be confusingly similar:
▪ Should indicate a connection
between the goods and services, and
the owner of a registered mark.
▪ That the interests of the owner of the
registered mark are likely to be
damaged by such use.
2020 Revised Rules of Procedure for
Intellectual Property Rights Cases (Sec.
6)
▪ Likelihood of confusion shall be
presumed in case an identical sign or
mark is used for identical goods or
services.
Two types of confusion:
▪ Confusion of goods
▪ Confusion of business
CONFUSION OF GOODS
▪ Induced to purchase one product in
the belief that he is purchasing
another, in which case defendants
goods are then bought as the
plaintiffs and its poor quality reflects
badly on the plaintiffs.
Notes:
▪ Ex: there is a dishwashing soap A
and dishwashing soap B which
uses similar mark. Because they
are similar, a buyer can be induced
into thinking, although he
intended to buy dishwashing soap
A, he purchased dishwashing soap
B thinking that it is a product of A.
CONFUSION OF BUSINESS
▪ Business wherein the goods of the
parties are different but the
defendants product can reasonably
(though mistaken) be assumed to
originate from the plaintiff, thus
deceiving the public into believing
IPL | TRADEMARK
that there is some connection
between the plaintiff and defendant
which, in fact, does not exist.
Remember!
FACTORS TO BE USED (Sec. 5)
Tests to determine likelihood of confusion
1. The strength of plaintiff’s mark;
Notes:
▪ ^ strength of mark, ^ confusion
▪ This is a case to case analysis. Not
so much governed by stare decisis.
▪ If the mark of the plaintiff is quite
strong, then there is greater
likelihood of confusion.
▪ The more likely the stronger the
mark, the more likely that there is
encroachment upon it which would
lead to confusion because a strong
mark has the ability to signify to
the consumer the source of the
good.
2. The degree of similarity between the
plaintiffs and the defendant’s marks;
Notes:
▪ ^ similarity of mark, ^ confusion
▪ Colorable Imitation- close or
ingenious imitation as to be
calculated to deceive ordinary
persons, or such a resemblance to
the ordinary as to deceive an
ordinary purchaser giving such
attention as a purchaser usually
gives, as to cause him to purchase
the one supposing it to be the other.
▪ Two tests for determining similarity
• Dominancy- similarity of the
prevalent or dominant features
of the competing trademark
that might cause confusion,
mistake, and deception in the
mind of the purchasing public.
• Holistic- but because of the
case of Colin v. Colin this is
now eliminated.
J 16

▪ It not necessary that there is
duplication it is enough that there is
intent or suggests an effort to imitate.
▪ More consideration are the aural and
visual impressions created by the
marks on the buyers of goods.
▪ Dominant- is the first word/ figure
that catches the eyes or that part
which appears prominently to the
eyes and ears.
▪ Holistic or Totality- consideration of
the entirety of the marks as applied
to the products, including the labels
and packaging, in determining
confusing similarity.
▪ Sec. 155.1- there is infringement if..
there is use in commerce in any
reproduction, counterfeit or
colorable imitation of a registered
mark or the same container of
dominant feature.
▪ 2020 Revised Rules of Procedure for
Intellectual Property Rights Cases
- Visual, aural, connotative
comparisons and overall
impressions engendered by the
marks in controversy as they
are encountered in the realities
of the marketplace must be
taken into account.
▪ Dominant if rash buyer- as such, if
the ordinary purchaser is
undiscerningly rash, then he would
not have the time nor the inclination
to make keen and perceptive
examination of the physical
discrepancies in the trademarks of
the products in order to exercise his
choice.
3. The proximity of the products or
services;
Notes:
▪ ^ related goods, ^ confusion
IPL | TRADEMARK
▪ It used to be the delimitation on
determining whether a mark is
related to each other was solely
based on nice classification.
▪ Nice classification is a
classification for the purpose of
registration of a mark. It is
necessary that when you register a
mark, you must identify what
category it was under.
▪ Supreme Court imposed these tests
of relatedness:
• The business (and its location)
to which the goods belong
• The class of product to which
the goods belong
• The product’s quality,
quantity, or size, including the
nature of the package,
wrapper, or container
• The nature and cost of the
articles
• The descriptive properties,
physical attributes or essential
characteristics with reference
to their form, composition,
texture, or quality
• The purpose of the goods
• Whether the article is bought
for immediate consumption,
that is, day-to-day household
items
• The fields of manufacture
• The conditions under which
the article is usually
purchased and
• The channels of trade through
which the goods flow, how they
are distributed, marketed,
displayed and sold.
J 17

4. The likelihood that the plaintiff will
bridge the gap;
Notes:
▪ ^ likelihood of expansion, ^
confusion
▪ If it seems possible that the
plaintiff would be investing in this
kind of business then its likely that
there is confusion because there
seems to be a connection between
the business
▪ Remember: business will extend
their business to survive.
5. Evidence of actual confusion;
Notes:
▪ ^ evidence of confusion, ^ ▪ Deli meats and beer (Frank
confusion
6. The defendant’s good faith in
adopting the mark;
Notes:
▪ ^intent to copy, ^ intent to cause
confusion
▪ The proper focus is whether the
defendant had the intent to derive
benefit from the reputation or
goodwill of the plaintiff.
▪ Intent to emulate and copy and use
plaintiff’s design.
7. The quality of defendant’s product or
service; and/or
Notes:
▪ v quality of products of defendant,
^ confusion
▪ because this shows that there is an
intent to take undue advantage of
the superiority of the products of
the plaintiff. This is again relying
on the good will of the plaintiffs.
IPL | TRADEMARK
8. The sophistication of the buyer.
Notes:
▪ ^ sophistication of buyers, v
confusion
▪ The relevant class of purchasers
will not be confused as to the
source of the service.
▪ Human experience dictates that
more attention is given as the price of
the commodity or service increases.
▪ Courts have determined that there is
no likelihood of confusion if the level
of sophistication was so high that the
relevant class of purchasers would
not be confused as to the source of
construction services.
Brunckhorst Co.)- “generally found
to… to leave their sophistication at
home”
▪ Kitchen staples- subject to less
scrutiny and lower care by the
purchaser.
▪ Common and less expensive
household products- less inclined to
closely examine specific details of
similarities and dissimilarities
between competing product
▪ Golf clubs- high sophistication of
buyer.
▪ The mere fact that there is initial
interest confusion that 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.
REGISTRATION
▪ Procedure in registration
(Memorandum Circular 17-010)
1. Application is submitted to the
Bureau of Trademark
Notes:
J 18

▪ There should be a complete
application form that is submitted
as well as payment of fees for the
attachment of the filing date.
▪ The transliteration of the mark or
some parts of the mark should be
prescribed in this regulation
▪ If a color or colors are being
claimed, then a statement to that
effect, as well as the identification
of the name/s of the color/s should
be included.
2. Determination of the
requirements to satisfy the
attachment of a filing date
Notes:
▪ This is a period that is given the
applicant or prosecution to be
given 2 months to complete or
correct the application which is
found to be deficient
3. Examination which is prosecuted
Ex Parte
Notes:
▪ The period to prosecute is 4
months, that’s the minimum given
to it.
4. If it appears registrable, it shall be
publication for opposition in the
IPO eGazette
5. Wait 30 days for opposition.
6. Deemed registered the day
following the period of opposition.
If there is opposition
1. Application is submitted to the
Bureau of Trademark
2. Determination of the
requirements to satisfy the
attachment of a filing date
3. Examination which is prosecuted
Ex Parte
IPL | TRADEMARK
4. Wait 30 days for opposition.
5. Hearing on the opposition
6. Issuance of certificate of
registration
7. Deemed registered the day
following the period of opposition
Disclaimers
▪ To make of record that the significant
element of a composite mark is not
being exclusively appropriated apart
form the composite
Take note:
▪ Abandonment of filing
Notes:
▪ This is failure to respond or
express any compliance but it can
still be revived within 3 months
from the date of abandonment
▪ Amendment of application
Notes:
▪ May be permitted provided that it
pertains to the formalities only or it
is an addition to goods or services
EFFECT OF REGISTRATION
▪ Rule 800 in relation to Sec. 147
• Exclusive right to prevent use
by all third parties not having
the owner’s consent in a
manner that might result to
likelihood of confusion.
• The right of an owner shall
extend to those which are
goods and services which are
not similar to those in respect
of the mark which is
registered.
▪ Sec. 148
• Registration of the mark shall
not confer on the registered
owner the right to preclude:
J 19
 IPL | TRADEMARK

1. Bona fide use of their ▪ Declaration of actual use is

names, addresses, important before a mark will be
pseudonyms, a continuously protected that it
geographical name; should be used after registration, if
2. Exact indications there is non-use then that’s a
concerning the kind, ground for cancellation.
quality, quantity
destination, value, place of • Payment of maintenance fees
origin, or time of production
or of supply, of their goods ▪ Declaration of Actual Use
or services. • Within 3 years from the filing
4TH YEAR date of the application;
DURATION OF PROTECTION • Within 1 year from the fifth
▪ A certificate of registration shall 6TH YEAR anniversary of the registration;
remain in force for 10 years, • Within 1 year from date of
renewable for another 10 years 11TH YEAR renewal;
provided file declaration of actual • Within 1 year from the fifth
use. anniversary of each renewal.
RENEWAL OF REGISTRATION
Notes:
▪ The reckoning period for the
protection of trademark shall be
from the date it was issued
▪ The purpose of date of application
is just to determine who is the first
person who filed first but
ultimately the length of protection
is dependent on when it was
issued.
▪ For another 10 years
▪ Made at least 6 months prior to
REMEMBER!
expiration of the registration or
▪ Made after 6 months from expiration
but with payment of additional fees

▪ For marks not domiciled in the

Philippines, follow the rule of that
country.

▪ Trademark maintenance
• Filing of declaration of actual
use
Notes:

J 20
KOLIN CASE This is a local Originally
company registered in
Kolin Electronics Co., Inc., v. Kolin Taiwan
Philippines International, Inc.
(Feb. 9, 2021)
N.B. Atty. would like to emphasize two things:

- This came AFTER the Zunica case
- Decided En Banc, meaning it has the
ability to modify or reverse the decision of
the Division.
1. We are the first-to-file country;
o This means we only give the
acquisition of registration to
entities that register their
mark first.
o If there is similarity of the
“mark” then the first to file will
be favored.

2. We are a territorial country.

o Not possessive but simply
saying, we only protect marks
that are registered in the PH.
o If not registered in the PH, then
it cannot be a basis for the
cancellation of registration,
denial of registration, finding
- What we have here is two marks that of a trademark infringement
are quite similar to each other. It's against the defendant.
just that for one, there is an italicized
version of the entire word “KOLIN”
while in the other it's not italicized,
there's no special character to IT.

Italicized “KOLIN” Bold “KOLIN”

The italicized “KOLIN” The other “KOLIN”
has been used as which is in the
marks for those goods name of Taiwan
that are classified company is for
under class 9 which color television,
includes automatic refrigerator,
1. The KOLIN mark owned by TKC was
voltage regulator, window-type air
first registered in Taiwan in 1986.
converter, recharger, conditioners, split-
stereo booster, type air conditioner 2. The KOLIN mark owned by KECI was
AC/DC regulated electric fan and first used in the PH and the entire
power, etc. water dispenser. world in 1989.
3. The KOLIN mark owned by KECI was
This mark is owned This mark is owned registered with IPOPHL on August
by Miguel Tan of Kolin by Taiwan Kolin 17, 1993.
Electronics Industrial Co., Ltd. (TKC) 4. The KOLIN mark owned by TKC was
Supply (KECI) only registered in the PH on February
29, 1996.
 5. TKC opposed the registration of KECI
but the Bureau of Legal Affairs
denied the opposition as the mark of
the latter was in 1989 which is ahead
of TKC which was only in 1996. The
Director General sustained the
decision of the Bureau. CA affirmed.
KECI was able to register its
trademark.
6. TKC, later on, filed for another
application and it was permitted to
register the trademark for its
television and DVD player.
NOW, the case decided by the SC in 2021.
REMEMBER!
- KPII, an affiliate of TKC, filed an
application for registration for its
goods.
- KECI opposed and this was
sustained by the Bureau of the
IPOPHL.
- SC:
1. Dominancy test only!
2. Abandoned the use of product or
service classification as a factor in
determining relatedness or non-
relatedness.
- All in all, there is likelihood of
confusion, that is why the 3rd “kolίn”
mark was not permitted registration
in the PH.
AS TO SIMILARITY
o “The [advertising] display of the
mark in a particular style is of
no material significance since
the display may be changed at
any time as may be dictated by
the fancy of the applicant or the
owner of the mark”
o The SC said that the mark of
KPII is closely similar to that of
KECI because the word
“KOLIN” is the prevalent
feature of both marks. Again,
using the dominancy test.
o What is protected is “WHAT” is
written and not “HOW” it was
written.
o The fact that there was an
italicized “i” would not matter
as the word “KOLIN” is the one
being protected.
AS TO RELATEDNESS OF GOODS
- In determining the use of the NCL or
the nice classification, SC said that
there is no legal basis as it is the only
way to organize the thousand
applications applied for.
 - This may also create problems due to AS TO STRENGTH OF MARK
stare decisis.
There is strength of mark because there is
- Both KOLIN are complementary
an inherent distinctiveness of the
goods, meaning goods that are used
wordmark “KOLIN” BY KECI. That
together for the same purpose, found
confusion will be likely if someone else were
in the same trade and may appeal to
to be allowed to concurrently use such
the same set of purchasers.
mark in commerce.
- If you purchase a television set, there
is great likelihood that you will be
purchasing an AC/DC regulator.
AS TO BAD FAITH
- Because they are related to each
other and not just because of nice There is bad faith because it appears that
classification, then there is great KPII and ownership of this trademark was
likelihood of confusion. only made as an instrumentality. That it
was TKC, in essence, who is the owner of
this mark and it filed for a trademark of
AS TO ACTUAL CONFUSION stylized “kolίn” barely two months after
KECI was declared as its owner.
- According to KECI, those customers
of KPII or even TKC would ask There is manifestation of malice already.
customer help or would call the Another reason of bad faith is because it is
customer line of KECI. in the same line of business, therefore,
improbable that they did not know the
existence of the mark.
AS TO SOPHISTICATION OF BUYERS
- Although not inexpensive goods and
consumers may pay more attention
in buying these goods but cannot TRADEMARK DILUTION
discount the fact that this is not a
frequent purchase. Not intimate 2 TYPES OF DILUTION:
knowledge. Confusion can still exists
1. Blurring Harm
because the degree of similarity of
o A strong mark’s signaling
the subject marks. Thus, these
power is weakened by the
consumers who prefer KECI’s
appearance of the same, or a
products will likely go into stores
similar, mark on completely
asking and looking for the “KOLIN”
unrelated goods or services.
brand, regardless of its stylization or
o What happens here is that
additional figurative features…. Any
consumers having a weaker
perceived visual differences between
connection in their minds
KECI’s and KPII’s “KOLIN” mark will
between the trademark and
likely be disregarded, especially
the mark after they encounter
considering that it is not unusual for
the similar mark.
companies to rebrand and overhaul
their “brand image”, including their
logos, every so often.
 ELEMENTS:
a. There is a similarity between
the mark or trade name of a
famous mark;
b. An association is created;
c. This impairs the
distinctiveness of the famous
mark.
N.B. For purposes of determining
blurring harm, it is IMMATERIAL that
there is a presence or absence of actual
confusion; that there is actual economic
injury; or that they are in competition
with each other or that there is an intent
to associate.
2. Tarnishing Harm
o If the product sold by the
junior user is of shoddy or
inferior quality, or in some
other way is distasteful or
unsavory.
o What distinguished it from
blurring harm is the use of the
mark is the one that dilutes
the relationship or the quality
of the trademark, or anything
that is associated with it. Such
as the good will of the mark is
diluted because of the actions
of the defendant which
tarnished the trademark of the
plaintiff.
INFRINGEMENT
Right of a trademark owner
- His consent must be obtained in the
following, otherwise, it will be a
ground for a suit.
a. Use in commerce
i. Reproduction,
counterfeit, copy or
colorable imitation of a
registered mark or same
container or dominant
feature.
ii. If it will likely cause
confusion, or to cause
mistake or to deceive.
EXAMPLE:
1. Offering for sale;
2. Distribution;
3. Advertising of any
goods or services;
4. Preparatory steps
to carry-out the
sale.
b. Reproduce and Apply
i. Reproduce, counterfeit,
copy or colorable
imitation of a registered
mark or same container
or dominant feature.
ii. If it will likely cause
confusion, or to cause
mistake or to deceive.

EXAMPLE:
EXAMPLE: 1. Labels;
Dallas Cowboy Cheerleaders Inc., v. 2. Signs;
Pussycat Cinema Ltd. 3. Prints;
4. Packages;
o Dallas Cowboy Cheerleaders in 5. Wrappers;
porn tarnished the 6. Receptacles;
professional mark of the Dallas 7. Advertisements
Cowboy Cheerleaders.
N.B. This is regardless of actual sale.
 ELEMENTS OF TRADEMARK
INFRINGEMENT
1. The trademark being infringed is
registered in the IPO;
2. The trademark is reproduced,
counterfeited, copied, or colorably
imitated by the infringer;
3. The infringing mark is used in
connection with the sale, offering for
sale, or advertising of any goods,
business, or services; or the infringing
mark 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 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; and
5. It is without the consent of the
trademark owner or the assignee
thereof.
If it cannot be determined
➢ Then a reasonable percentage of the
amount of gross sales of the
defendant.
➢ An informed inference can be made if
speculation is not possible.
Double damages
➢ If intent to deceive is proven.
REQUIREMENT UNDER THE LAW
Imitation is likely to cause confusion,
mistake or deceive should be done with
knowledge
PRESUMPTION OF KNOWLEDGE
1. Mark is registered if it is displayed
with “Registered Mark” or ®
2. Or other notice
Impound
➢ During the pendency of the
proceedings.

REMEDIES
N.B. Philipp Plein’s use of Ferrari
1. Injunction;
2. Damages;
3. Impound.

N.B.
Recover Damages
➢ Plaintiffs reasonable profit would
have made, or profit that the
defendant made from infringing.
➢ Speculation is made here because - Philipp Plein use a Ferrari in order to
the amount cannot be determined. influence other people about his
lifestyle. Ferrari was not happy with
the use of its car to be the place
where they place the shoes.
- Ferrari sued Philipp Plein and said
that there was, obviously, an intent
to use the mark of Ferrari for
promotional purpose of his brand
and products. Therefore, there is an
unlawful appropriation of the
goodwill that is attached to Ferrari.
- As such Ferrari’s counsel formally
asked the designer to remove the
images from his Instagram account,
which Plein did not do.
- In 2020, the case was decided in
favor of Ferrari.
- Under the PH, will this be considered
as a trademark infringement?
o No, there is no basis for it. It is
not reproduction, colorable
imitation but a legitimate use
of a purchase of a motor
vehicle as a place for the shoes.
o But there may be a separate
criminal offense that is
committed.
- Why do we punish infringement of
trademark in the PH?
o It is because there is an unjust
enrichment that happens.
That someone who did not
work hard to establish that
psychological effect and
causation of seeing that mark
and thinking that it is a good
quality. Someone will come in
and just take advantage of that
hard work.
o Imagine that this is your group
work, and what your group
mate only did was to attached
his name to it. He did not work
for it, did not spend lots of
money but simply claiming a
percentage of the work and the
credit. This is what is unlawful
about trademark infringement.
That is the inequity that is
sought to be corrected.
LIMITATION TO ACTIONS
FOR INFRINGEMENT
May not be considered as trademark
infringement:
1. Use in good faith prior to the
registration or priority right by the
plaintiff;
EXAMPLE:
The trademark of A - “Aling
Delia”- was used since 1993.
However, B also uses “ALING DeLIA”
and this was registered in 1994. Does
the existence of the first preclude the
registration of the second?
NO. WHY? Because in the PH,
we register only those that were first
to file. Since there was no filing of the
first in 1993, then the registration in
1994 will not be precluded. BUT it
does not mean that B can sue A for
infringement because it has been
using the mark prior to the
registration in 1994.
This will be expounded more in
the case of Zuneca.
2. Innocent infringer
o Injunction for future
infringement only.
▪ They can only be held
liable for future
infringement, and
cannot be held liable for
their previous acts.
 EXAMPLE:
➢ Person in the business of printing
marks of others.
- Carbamazepine “Zynaps” is owned
➢ Publisher or distributor of magazines
or newspapers, periodical or
electronic communication.
3. Imported or sold drugs and
medicines
➢ A.M. No. 10-03-10-SC: A certificate
of registration of a mark shall be
prima facie evidence of:
a. Validity of the registration;
b. The registrant’s ownership of
the mark; and
c. The registrant’s exclusive right
to use the same in connection
- PARTIES:
with the goods or services and
those that are related thereto
specified in the certificate.
N.B. Only prima facie, meaning it can
be rebutted by evidence.
ZUNECA CASE
Zuneca Pharmaceutical, Akram Arain
and/or Venus Arain in the style of
Zuneca Pharmaceutical v.
NATRAPHARM
G.R. No. 211850, September 8, 2020
- What is involved here is the use of the
term “Zynaps” which is similar to the
other that is spelled “Zynapse.”
by Zuneca; Citicoline “Zynapse” is
owned by NATRAPHARM.
o Why does this matter?
Because they belong to the
same class under the nice
classification.
o “Zynaps” are pharmaceutical
products for neuropathic pain
and seizures (ZUNECA);
o “Zynapse” are pharmaceutical
products for human use
(NATRAPHARM).
o Zuneca Pharmaceutical
▪ Engaged in the
importation, marketing
and sale of various kinds
of medicines and drugs
in the PH since 1999.
▪ Among its products is
Carbamazepine under
the brand name
“ZYNAPS.” It is an anti-
convulsant which is
used to control all types
of seizure disorders or
varied causes such as
epilepsy.

o NATRAPHARM
▪ Domestic corporation
engaged in the business
of manufacturing,
marketing and
distribution of
pharmaceutical
products for human
relief.
▪ Citicoline under the
trademark ZYNAPSE.
 ▪ ZYNAPSE – based on
synapse meaning the
junction between 2 rights over ZYNAPSE.
nerves thus appropriate
CA:
for medicine to avoid
stroke. Conducted
search and produced no
similar medicine, then it
had it registered with
IPOPHL and then BFAD.
RTC:
➢ NATRAPHARM filed an Injunction,
trademark infringement, damages
and destruction and ZYNAPS is
confusingly similar to ZYNAPSE.
➢ ZUNECA’s Answer: It was
NATRAPHARM that committed
infringement because it had been
selling ZYNAPS since 2004 after
securing Certificate of Product
Registration with FDA.
➢ According to ZUNECA,
NATRAPHARM could not argue that
it was not aware of its prior use since
it promoted its products in the same
publication where ZUNECA had
advertised ZYNAPS.
➢ RTC ruled in favor of NATRAPHARM.
o First filer in good faith defeats
a first user in good faith who
did not file any application for
registration.
o NATRAPHARM, as first
registration, has trademark
➢ Affirmed the decision of the RTC.
➢ It denied the appeal for lack of merit.
➢ Registration, not prior use, is the
mode of acquiring ownership of a
trademark.
➢ Moreover, those who intend to
register their mark need not look at
the other marks used by other
persons but must confine only their
search to the marks found in the
database of the IPO.
➢ If there are no similar or identical
marks, the mark should be
registered as a matter of course.
➢ Good faith is presumed. After all it
conducted a search before its
registration.
ISSUE:
What are the rights of PRIOR USER?
Point of the Dispute:
If ZUNECA’s contention turns out to be
true, NATRAPHARM would not be the
owner of “ZYNAPSE” and it would not
have the right under Section 147.1 of
the IP Code to prevent other entities,
including ZUNECA, from confusingly
similar marks for identical or similar
goods or services. Further,
NATRAPAHARM’s infringement case
would fail because its “ZYNAPSE”
registration would then be voided.
SC:
➢ No effect of Prior User
➢ IP Code provisions clearly conveys
the rule that ownership of a mark is
acquired through registration.
 ➢ The intention of the lawmakers was
to abandon the rule that ownership
of a mark is acquired through use in
compliance with 6bis of the Paris
Convention.
➢ The rule on ownership used in Berris
and EY Industrial Sales is
inconsistent with the IP Code regime
of acquiring ownership through
registration.
➢ Ownership is not based on an earlier
filing date. It can still be a basis to
oppose registration.
➢ The SC went to the History of
Trademark.
➢ HOW TO READ SECTION 147:
o The first-to-file rule prioritizes
FIRST-TO-FILE RULE the first filer of the trademark
application and operates to
prevent any subsequent
applicants from registering
marks if there is likelihood of
confusion.
o Prior use no longer determines
the acquisition of ownership, it
is only registration.
o The phrase in the Trademark
Law “previously used in the PH
by another and not
abandoned” as a ground to
deny registration is nowhere to
be found in the IP Code.
o Use of mark as stated in the
DAU is only to maintain the
ownership and not to acquire
it.
➢ BAD FAITH AND FRAUD IN
REGISTRATION.
o Bad faith means that the
applicant or registrant has
knowledge of prior creation,
use and/or registration by
another of an identical or
similar trademark. In other
words, it is copying and using
somebody else’s trademark.
(Prior knowledge)
o Fraud, on the other hand, may
be committed by making false
claims in connection with the
trademark application and
registration, particularly, on
the issues of origin, ownership,
and use of the trademark in
question, among other things.
o In this case, the SC said that
the evidence to show bad faith
and fraud in the registration
that NATRAPHARM knowingly
caused the registration of its
mark “ZYNAPSE” despite its
knowledge of the existence of
the mark “ZYNAPS” of
ZUNECA was NOT PROVEN
with sufficient evidence.
➢ WHEN IS PRIOR USER
INFRINGING?
- Section 159.1. Prior to the filing
and/or claim of priority as registered
mark are exempted from the finding
of infringement.
- Section 159.1 of the IP clearly
contemplates that a prior use in good
faith may continue to use its mark
even after the registration of the
mark by the first-to-file registrant in
good faith.
- It can be gleaned that while the law
recognizes the right of the prior user
in good faith to the continuous use of
its mark for its enterprise or
business, it also respects the rights
 of the registered owner of the mark the likelihood of confusion
by preventing any future use by the between the two.
transferee or assignee that is not in
conformity with Section 159. 1 of the
IP Code.
- ZUNECA is not liable for
infringement. They can co-exist.
o In the same vein, prior users in
good faith are also protected in
the sense that they will not be
made liable for trademark
infringement even if they are
using a mark that was
subsequently registered by
another person. (ZUNECA
CASE)
o SC also said that there is no
possibility of confusion
because generic names of
drugs should be written in the
prescription under R.A. 6775.
o Also, the subject meds in this
case are not “over the counter
medicines” as there is a need
for their prescription. There is
no possibility of confusion
because the sophistication of
the buyers is high.

➢ SC’s LAST WORDS

o To further reduce therefore, if
not totally eliminate, the
likelihood of switching in this
case, the Court hereby orders
the parties to prominently
state on the packaging of their
respective products, in plain
language understandable by
people with no medical
background or training, the
medical conditions that their
respective drugs are supposed
to treat or alleviate and a
warning indicating what
“ZYNAPS” is not supposed to
treat and what “ZYNAPSE” is
not supposed to treat, given
…continuation
RIGHTS OF A TRADEMARK OWNER
⚫ To restrain the use of trademark which is
likely to cause confusion by filing a suit for
infringement.
⚫ Assigning or transferring trademark.
ASSIGNMENT OR TRANSFER TRADEMARK
✓ Trademark may be assigned separately
from the ownership of the business
― Trademark is also an intellectual
property and being a property, it can be
transferred to another person.
― Trademark is an invaluable asset; this
is the reason why it is capable of being
used as an intangible asset to secure
any loan.
― Just like copyright that, if the business
is transferred, it does NOT follow that
the trademark is also transferred —
BUT most of the time it does as a part of
the agreement of purchasee, but it can
also be the ownership of the business is
on one person but the trademark is
assigned or licensed to another.
FORM (The requirement for assigning or
transferring trademark)
◼ In writing and signed by the contracting
parties.
◼ It must be annotated in the Certificate of
Registration.
Effect of registration: Binds third persons.
Without any registration, it can be
INEFFECTUAL as to third person.
VOID, If the transfer is to mislead the public —
it may mislead as to the nature, source,
manufacturing process, or any characteristics
or suitability for the purpose of goods or services
to which the mark is applied
Parties can also enter into a license contract.
LICENSE CONTRACT
In trademark, licensing a trademark owner
(licensor) grants permission to another (licensee)
to use that trademark on mutually agreed terms
and conditions.
Examples:
⚫ Franchising — the franchisee is allowed by
the franchisor in return for a fee to use a
particular business model and is licensed a
bundle of IP rights.
⚫ Merchandising — allowing manufacturers
of ordinary consumer goods, such as plates,
mugs, towels, caps, clothes and to apply the
trademark of another immediately adds
appeal to these commonly used object and
distinguishing themselves in market place.
A cap but it has Disney characters, and
putting logo of Disney.
⚫ Brand extension or brand stretching
⚫ Co-branding
⚫ Component or ingredient branding
⚫ Certifications / standards
Section 150. xxx the contracts should
contain provision for an effective quality
control.
The QUALITY CONTROL says that the used
must be consistent with the interest of licensor,
and the same quality of products and services
are maintained.
Must be registered: to bind third persons.
N.B.
Example of a provision that permits quality
control:
This is the standard content of a trademark
license agreement.
➢ PROTECTION OF MARKS.
The licensee shall NOT directly or
indirectly register or use any other trade
name, trademark, or service mark
incorporating or based in whole or in part of
any licensed marks, use any licensed mark
as part of any corporate or trade name, as
part of prominent signage displaying its
business name, or in connection with any
unauthorized goods or services, use the
licensed marks in combination with any
other trademarks, debrand, rebrand, or
private label any of the licensed marks,
hold itself out as having any ownership
interest in the licensed marks, engage in
any conduct that would constitute
infringement of or otherwise affect either
the licensor’s interest in the license marks
or the goodwill associated with them,
dispute of validity, ownership, or
enforceability of any of the licensed marks,
invalidate, dilute, or otherwise adversely
affect the value of the goodwill associated
with the licensed marks, or engage in any
conduct that would constitute infringement
of, or otherwise harm, the intellectual
property rights of any third parties.
CANCELLATION OF REGISTRATION OF
TRADEMARK
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:
(a) Within five (5) years from the date of the
registration of the mark under this Act.
(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.
If the registered mark becomes the
generic name for less than all of the goods
or services for which it is registered, a
petition to cancel the registration for only
those goods or services may be filed. A
registered mark shall not be deemed to be
the generic name of goods or services
solely because such mark is also used as
a name of or to identify a unique product
or service. The primary significance of the
registered mark to the relevant public
rather than purchaser motivation shall
be the test for determining whether the
registered mark has become the generic
name of goods or services on or in
connection with which it has been used.
(n)
(c) At any time, if the registered owner of the
mark without legitimate reason fails to
use the mark within the Philippines, or to
cause it to be used in the Philippines by
virtue of a license during an
uninterrupted period of three (3) years or
longer.
151.2. Notwithstanding the foregoing
provisions, the court or the administrative
agency vested with jurisdiction to hear and
adjudicate any action to enforce the rights to
a registered mark shall likewise exercise
jurisdiction to determine whether the
registration of said mark may be cancelled in
accordance with this Act. The filing of a suit
to enforce the registered mark with the proper
court or agency shall exclude any other court
or agency from assuming jurisdiction over a
subsequently filed petition to cancel the same
mark. On the other hand, the earlier filing of
petition to cancel the mark with the Bureau
of Legal Affairs shall not constitute a
prejudicial question that must be resolved
before an action to enforce the rights to same
registered mark may be decided.
GROUNDS FOR CANCELLATION
⚫ Within five years from the date of
registration;
⚫ Genericide;
⚫ Registration was obtained fraudulently or
contrary to the provision of the IPC;
⚫ Registered mark is being used by, or with
the permission of, the registrant so as to
misrepresent the source of the goods or
services;
⚫ If the registered owner of the mark without
legitimate reason fails to use the mark
within the Philippines by virtue of a license
during an uninterrupted period of 3 years
or longer.
N.B. For number 2 to 5, it may be filed at any
time, but a cancellation may be filed within 5
years from the date of registration.
GENERICIDE
― A process where an arbitrary of fanciful terms
becomes generic.
Section151.1 (b) A mark may be cancelled if
the mark becomes the generic name for the
goods or services, or a portion thereof, for
which it is registered.
✓ That arbitrary or fanciful name is now the
name of goods or services (genus) regardless
of who the source is.
To determine genericide, use PRIMARY
SIGNIFICANCE TEST (who or what test)
⚫ The mark should identify the source of the
product and NOT the product itself. Why?
Because the trademark is serving a purpose
which is the SOURCE IDENTIFIER, if it
cannot longer do that, then it has become
generic, therefore, cancellable.
⚫ Mark is valid, if the relevant public
primarily understands a mark as describing
“WHO” a particular good or service is
coming from.
Example:
Underarmour.
- Any dry-fit shirt with this logo is known
as coming from underarmour.
⚫ A mark has become GENERIC, if the
relevant public primarily understands a
mark as describing “WHAT” the particular
good or service is irrespective of its source.
Example: thermos, escalator, aspirin,
cellophane, xerox.
⚫ “GENERICIDE” is when a term involved in a
tradename has become ubiquitous; and
Example: A goes to a store to buy a
toothpaste and said “I want to buy colgate.”
Seller says “What brand?” A says “Closeup.”
⚫ The public appropriates a trademark and
uses it as a generic name for particular
types of goods or services irrespective of its
source.
NOT Genericide
The mere fact that the public sometimes uses a
trademark as the name for a unique product
does NOT immediately render the mark generic
— it’s not conclusive, it should be determined
by a competent court.
It only becomes generic IF:
By the use of the primary significance test, the
registered mark to a relevant public is using it
as a name for a particular type of good
irrespective of its source.
Genericide of Google? Zoom? – Case of Elliot
vs. Google
Facts:
Chris Gillespie – registered domain name
“googleobarackobama” and 762 other words.
Google objected on the ground of cybersquatting
(registering a domain name in bad faith for the
intent to profit, so that the goodwill will belong
to them, can be used as extortion method).
David Elliot – google trademark should be
cancelled because the act of internet searching
without regard for the search engine being used
has become genericide. Elliots allegations:
Using google a verb and verb use constitutes
generic use as a matter of law.
Ruling: No genericide. It emphasizes the
primary significant test and said that
Genericide must always refer to a particular
type of goods or service. It does not refer to the
meeting of an act. Just because it is a verb does
not necessarily mean that it has now suffered
genericide. The act of searching the internet
does not mean it has become ubiquitous. It was
wrong – equate google for becoming a generic
name. Use of “Google it” means use Google as a
search engine.
N.B.
▪ Genericide must always relate to a
particular type of goods or services.
- It should not be an act; it should be
about a particular service or goods.
▪ Trademarks may serve two functions:
1. Naming a product;
2. Indicating its source.
- It is wrong to say that trademark is
merely used as an adjective because it
can also be used as a noun or a verb.
TESTS
▪ PRIMARY SIGNIFICANCE TEST
“who-are-you/ what-are-you”
- If it answers who are you, then this still
is valid, there is no genericide. But if
what is being answered is what are you,
then there is already genericide.
SURVEY TEST
- It determines that google has not yet
suffered the fate of genericide.
1. Teflon test
o Is also a trademark.
o But now, everything that has a
plastic or non-stick surface is
referred to as Teflon.
o So, Teflon test says that terms may
either be common or generic. Then
they would identify a certain term as
either common or generic.
o Then they would categorize these
terms including the one being tested
as either brand or generic. So, they
would ask people to determine is
this generic?
2. Thermos test
o Simply asking, how will you ask for
this product at issue in a store.
Ex: it is under armour, how will you
ask for a dry fit shirt in a store. If the
answer is “may I have an under
armour “then it means that it has
already failed the primary
significance test because the
thermos test failed and therefore it
has become generic because it is
now what is the product being
identified not who the product
comes from.
WHEN NON-USE IS EXCUSED
▪ Sec. 152.1- when non-use is excused if
caused by circumstances independent of
the will of trademark owner.
- Lack of funds is not an excuse.
- It pertains to fortuitous events
beyond the control of the
trademark owner.
 ▪ Sec. 152.2- the use of a mark in a form Prosel Pharmaceuticals & Distributors, Inc.
different from the form in which it was v.
registered which does not alter its Tynor Drug House, Inc. G. R. No. 248021,
distinctive character. September 30, 2020
- An instance would be a ▪ Trademark infringement over similarity
modification that is permitted is if of the trade box.
the trademark becomes bigger or ▪ Logo and packaging are similar, if not
there is an added color to it. that identical, to respondent’s registered
does not mean that there is non- trademark and copyrighted packaging.
use because there is still use
essentially. Prosel Tynor Drugs
▪ Sec. 152.3- the use of a mark in
Pharmaceuticals
connection with one or more of the goods ▪ Ceegeefer ▪ 1993: Formulated
or services belonging to the class. ▪ Improved Cherifer
- If it was registered, for example version of its ▪ March 10, 1993:
for regulators, the fact that it is product incorporated mark to
also used for another under the
▪ December 3, its packages
class nine classification like an
inverter it could be said that the 1999: Granted ▪ July 3, 2002:
non-use is excused. BFAD Product deposited copy with
- Why? Because the use in one Registration National Library,
class shall prevent in the which resulted in the
cancellation of all other goods or
issuance of a
services in the same class.
Certificate of
Ex: if it is used for toyo, because Copyright
it belongs to the same class as Registration
patis or suka, then it is permitted ▪ July 8, 2004:
to be used even though it was Certificate of
initially registered for toyo.
Registration of
▪ Sec. 152.5 - use of a mark by a company Trademark
related with the registrant or applicant.
- It may be a sister company or the use RTC’s Ruling:
by a licensee or an affiliate or ▪ Not confusingly similar following idem
subsidiary, this is considered as non- sonans
use that is excused because someone ▪ Attentive enough to distinguish ceegeefer
else is using it. and cherifer
▪ No copyright infringement
Who files for cancellation of a mark?
▪ A person who believes that he is or will CA’s Decision
be damaged by the continued ▪ Reversed
registration of a mark. ▪ There was trademark infringement
- Must be real-party-in-interest capable ▪ No copyright infringement
of being benefitted or damaged by a
decision. Supreme Court’s Decision
Features of Ceegeefer Cherifer
Where should it be filed? Logo
Bureau of Legal Affairs > Director-General Boy’s built Fit Heavy
IPOHIL > Court of Appeals (Rule 43). Boy’s face Chiseled with a Round with a
genuine smile fake smile
IDEM SONANS Boy’s Strapback cap Fitted cap in
▪ Sounding the same baseball cap with hook and reverse
- This is another test that is being used loop fastener in
if there is identity of the name or the reverse
term. Boy’s action Reverse slam Ordinary slam
▪ The attentive ear finds difficulty in dunk dunk with feet
distinguishing two names when curled up
pronounced. together
- Applicable in election laws as well. Boy’s hair Long with Cannot be
bangs reaching discerned/
 the nose hidden in the
baseball cap
Boy’s socks Low-cut and Mid-cut and
loosely fitted fitted
Slogan “Healthy and “Height is
mighty” might”
- referring to - also referring
the effect of to the effect of
taking the taking the
product. product.
▪ There is colorable imitation.
▪ Cherifer and Ceegeefer are confusingly
similar in sound and spelling.
▪ Logos are strikingly similar.
▪ The fact that ceegeefer is idem sonans for
cherifer is enough to violate respondent’s
right to protect its trademark, cherifer.
▪ There is likelihood of confusion.
o Show the right profile or side of a
boy wearing a basketball jersey
and a baseball cap shooting a
basketball on a hoop with their
knees slightly bent and with the
words that start with the letters
“H” and “M” on top in an arc that
both have a different colored line
in the middle.
o Both use orange and yellow.
o Both products are over-the-
counter multivitamins that do not
require prescription.
o As such, ceegeefer and cherifer
may be easily obtained without
the advice of another person.
o Given the phonetic and visual
similarities between the two
products (i.e., how the product
names are spelled, the sound of
both product names, and the
colors and shapes combination of
the product’s respective
packaging), it is obvious that
petitioner attempted to pass
ceegeefer as a colorable imitation
of cherifer.
▪ “The reason for cherifer’s and ceegeefer’s
focus on a child’s growth is simple: it
addresses one of a parent’s main
concerns for their early childhood and
pre-adolescent children. With cherifer
and ceegeefer targeting the same
relevant market (i.e., over the counter
children’s growth vitamin supplement)
and given their glaring similarities,
cherifer and ceegeefer are reasonably
interchangeable and are almost perfect
substitutes of each other. Note, too, that
since cherifer and ceegeefer are over the
counter products (and were, in fact even
sold side by side in some
establishments), the propensity to
mistakenly purchase one for the other is
high.”
MADRID PROTOCOL PHILIPPINES’
ACCESSION: 2012
Registration of marks under the Madrid
protocol
▪ Coverage
▪ Rights conferred
▪ Requirements for registration
▪ Term of protection
How to register marks in another country
▪ National route
▪ Regional route
▪ International route
- Let’s say that you’re a lawyer or even
the owner of a business that it tends to
export goods outside of the country. In
order to protect your business, you
know for a fact that trademarks are
valuable assets and you are fearful
that if your products are sold in
another country, that you cannot
protect your trademark anymore. Why
is this? Because in our laws, we apply
the territorial doctrine. There is no
infringement for marks that are not
registered in the country and if it is not
registered in another country, our
Philippine laws has no means in
protecting it. that is why there are
three routes in order to protect
trademark abroad.
- If you intend to do business outside the
country, it is important the before you
do business there, that there must be
registration of trademark.
How to register marks in another country
1. National route;
- There is an independent filing in each
country.
- For example, you want to open a business
in Singapore then you must file a
registration of trademark in Singapore.
- This is the best way if you’re business is
just limited to one country. That you don’t
see yourself expanding anymore; OR if
you’re just beginning, still unfamiliar then
this is the way to go. BUT it’s going to be
more expensive.
2. Regional route;
- If the PH APEC or ASEAN would be
working already, it means that registration
in one country is no longer necessary
 because we will have our own ASEAN
intellectual property office.
- So, it means that by registering with the
ASEAN intellectual property office, for
example, we will have protection wherever
we are in the ASEAN, be it Singapore or
Malaysia or even Myanmar.
- Examples of Regional routes or Regional
intellectual property offices that are
already existing are the European Union
and Africa.
3. International route.
- It is through the Madrid Protocol.
- Let me be clear, this does not mean that
there is international protection.
- The Madrid Protocol only permits
international registration. This is just a
means of registering.
- The Madrid Protocol is seen as a protection
of a mark in the territory of the contracting
parties. So, you can only file an
application, designate a country that is
part of the Madrid Protocol.
o Registration of a person of a mark in
the International Bureau of the WIPO
(international Register) will mean
protection of the mark in the territory of
the contracting parties.
o The Madrid Protocol is a one-stop
solution for registering and managing
marks worldwide, allowing the
trademark owner to file one application
in one language, and to pay one set of
fees (IPOPHIL).
▪ Why is application in one
language included?
• Well, because if you’re going to
the national route then you
must be competent to speak the
legal language of that country.
• It’s not enough that you know
English, if you’re filing in
Singapore or Malaysia, for
example.
• So, with the Madrid Protocol, it
permits a multiple system, a
flexibility to add new markets
and it is very good for those
having limited budget but seeks
to file in every country or certain
designated countries.
• The more designated countries,
the higher the fees. That is why
you should only identify
designated countries that you
think that business will be
entering in.
- Article 4 of the Madrid Protocol
o “From the date of the registration or
recordal effected in accordance with
the provisions of Article 3 and 3ter, the
protection of the mark in each of
the Contracting Parties concerned
shall be the same as if the mark
had been deposited directly with
the Office of that Contracting
Party”
- Term of Protection
o Effected for ten years with the
possibility of renewal under the
conditions specified in Article 7.
- Requirements for Registration
o Registration has been filed with the
Office of the Contracting State (Office
of origin), Office of a Contracting
organization or filed with the
International Bureau.
o “Office of origin:”
▪ Made by national of a Contracting
State or domiciled or has a real &
effective industrial or commercial
establishment.
- General Rules
o Fill up form prescribed by regulations.
Include date and number of
application and the date of the
international application.
o Indicate the goods and service of
which protection of the mark is
claimed.
o The class or classes according to the
Nice Classification.
o If color is being claimed indicate the
color being claimed.
o Pay fees.
- Stages for registration: Being managed
by the World Intellectual Property Office
(WIPO)
STAGE 1
- Registration/Basic Application which
should be made with the Office of Origin.
o In the PH (a Filipino or a domicile), it
should be the IPOPHIL.
STAGE 2
- Formal examination by the WIPO
Intellectual Bureau.
o To check the formalities, records the
international registers, publishes in
the international gazette and notifies
contracting parties.
N.B. All that they will be limited to is to conduct
formal examination whether it complies with the
formal requirements of the designated country
which is identified in the application. This is
something if you are going to use it for local
application-done by the Bureau of Trademark
but because it is thru a deed registration that all
the office of the origin should do is to take a look
at the application forward it to the International
Bureau who will make a final determination.
After there is compliance with the formal
examination then it will be forwarded under
Stage 3 of the office to the designated
contracting party. The Bureau of Trademark in
whichever country which shows in our
application- they will be the one who will conduct
substantive examination using their standard
domestic laws.
It’s not a one size fits all. Our laws are not the
same with the laws of the designated contracting
party and the Madrid protocol still respects the
sovereignty to determine what provisions of
trademark law is to be implemented. You cannot
say that just because it is in the Philippines that
we don’t require prior use, we cannot insist that
indeed designated contracting party that prior
use should not be a factor in granting
registration. No. There is still should be a
substantive examination using as basis their
own trademark laws.
TRADE NAME
(Sec. 165)
-still registrable like trademarks
Name that may not be registered:
a. Contrary to public order or morals; and
b. If it is liable to deceive trade circles or the
public as to the nature of the enterprise
identified by that name.
Sec. 165.2 states that notwithstanding any
laws or regulations providing for any obligation
to register trade names such as the requirement
to register with the DTI, such names shall be
protected.
Names and Designations shall be protected:
-even prior to or without registration against
any unlawful act committed by third parties.
So, in order for a party to be held liable for trade
name infringement, it is not necessary and it will
not be a defense to show that plaintiff’s name
was registered. Even if it was not registered even
prior to registration there can still be trade name
infringement just by the fact that such was used
and it exist.
One difference between trade name and
trademark is that there can be infringement in
trade name even without registration. No such
infringement in trademarks because such
trademarks are acquired after registration.
Infringement in Trade Names
-Use by a third party, whether as a trade name
or a mark or collective mark, or any such use of
a similar trade name or mark, likely to mislead
the public.
Sec. 165.4
-Any change in the ownership of a trade name
shall be made with the transfer of the enterprise
or part thereof identified by that name.
This is another distinction between TN and TM
wherein TM may be transferred to another
person but here, if there is a transfer of business,
it naturally follows that TN will also be
transferred in that same transaction.
Asia Pacific Resources International
Holdings, LTD., Paperone, Inc.
GR Nos 213356-66; December 10, 2018
Asia Pacific Resources:
-production, marketing and sale of pulp and
premium wood free paper
-registered PAPER ONE as a well-known mark
issued on September 5, 2003
-enjoyed legal protection in different countries
worldwide and enjoyed goodwill and high
reputation because of aggressive marketing and
promotion.
PaperOne, Inc.:
-registered its name with the SEC and DTI in
2001
-paper conversion such as manufacture of table
napkins, notebooks and intermediate/collegiate
writing pads, it did not use its corporate name
PAPERONE on any of its products.
Decisions:
-BLA (Bureau of Legal Affairs): Paperone Inc.
committed unfair competition.
Because it permitted respondent to continue
using the same or identical PAPER ONE, in its
corporate name although not as a label in its
paper products but the same line of business that
of manufacturing of goods such as paper
products. Therefore, their coexistence will result
in confusion as to the source of goods and there
were sham sales knowing that purchasers are
getting products from the petitioner with the use
of the corporate name Paperone.
Taking advantage of the Goodwill of another
company is unfair according to the Bureau of
Legal Affairs.
- CA: reversed. No confusing similarity in the
general appearance of the goods of both parties.
Petitioner failed to establish through
substantial evidence that respondent intended
to deceive the public or defraud petitioner.
CA reversed, saying there is no confusing
similarity in the general appearance of the
goods of both parties.
There is confusion of business where, although
the goods of the parties are different, the
product, the mark of which registration is
applied for by one party, is such as might
reasonably be assumed to originate with the
registrant of an earlier product; and the public
would then be deceived either into that belief or
into the belief that there is some connection
between the two parties, though inexistent.
Thus, a consumer might conclude that Paper
One products are manufactured by or are
products of Paper one, Inc.
Intent to deceive need not be actual
Factual circumstances were established
showing that respondent adopted Paperone in
its trade name even with the prior knowledge of
the existence of paper one as a trademark of
petitioner.
As in all other cases of colorable imitations, the
unanswered riddle is why, of the millions of
terms and combinations of letters available,
respondent had to choose those so closely
similar to another’s trademark if there was no
intent to take advantage of the goodwill
generated by the other mark.
UNFAIR COMPETITION
- Goodwill what is vital in unfair
competition.
- It is an intangible asset that cannot be
directly measured.
Right
A person or an entity or a business that has
worked hard to create this goodwill should have
the right to be identified as the owner, creator or
manufacturer of goods that he has created the
goodwill in.
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 others
has a right in the goodwill of said goods,
business or services so identified.
This right exist even in respect of unregistered
mark. There may be suit even though the mark is
not registered.
The violation that is committed in unfair
competition is Use deception or any other
means contrary to good faith to pass off the
goods or services for those of the one having
established goodwill.
That they commit any acts calculated to produce
a result of getting or unfairly benefiting from a
goodwill created by someone else.
Some particular acts of what constitutes
goodwill:
1. Selling goods and giving them appearance
of goods of another manufacturer or dealer.
2. Using packaging, devices or words thereon,
or in any way likely to influence purchasers
to believe that the goods offered are those
of a manufacturer or dealer.
o This second one pertains to
discrediting the owner of the mark or
creator.
WHO ARE LIABLE FOR UNFAIR
COMPETITION?
1. Those who induce the false belief that
such person is offering the services of
another who has identified such services
in the mind of the public;
2. Any person who shall make any false
statement contrary to good faith of a
nature calculated to discredit the goods,
business or services of another;
PENALTY
Criminal offense 2 to 5 years of imprisonment;
or, PHP 50000.00 to PHP 200,000.00.
ADVANTAGE OF FILING FOR UNFAIR
COMPETITION:
No registration is required.
Much like the protection of trade names, there is
no requirement that there should be registration.
IN UNFAIR COMPETITION: The universal test
question is whether the public is likely to be
deceived.
Trademark infringement constitutes unfair
competition when there is not merely likelihood
of confusion, but also actual or probable
deception on the public because of the general
appearance of the goods.
It is not necessary that there should be one case
only. They can coexist.
Actual or probable deception and confusion on
the part of customers by reason of defendants’
practice must always appear.
It is not enough that they be speculated. There
must be proof beyond unreasonable doubt.
DOMAIN NAMES
- Are Internet addresses
- May be made up sometimes, of a
trademark. In such case, they should be
registered.
Cybersquatting
In Ph, also considered as cyber offense. Bunder
RA 10175 SEC 4 P 6
(6) Cyber-squatting. – The acquisition of a
domain name over the internet in bad faith to
profit, mislead, destroy reputation, and deprive
others from registering the same, if such a
domain name is:
(i) Similar, identical, or confusingly similar
to an existing trademark registered with
the appropriate government agency at the
time of the domain name registration:
(ii) Identical or in any way similar with the
name of a person other than the registrant,
in case of a personal name; and
(iii) Acquired without right or with
intellectual property interests in it.
Section 8. Penalties. — Any person found
guilty of any of the punishable acts enumerated
in Sections 4(a) and 4(b) of this Act shall be
punished with imprisonment of prision
mayor or a fine of at least Two hundred
thousand pesos (PhP200,000.00) up to a
maximum amount commensurate to the
damage incurred or both.
Registration of domain name in bad faith, as he
is not the owner of the trademark under which
the domain name has been registered.
GEOGRAPHICAL INDICATIONS
- Are Products that originates in a given
geographical area; and, possess qualities
or reputation due to the place of origin.
Highlights quality of specific of products due to
human factors that can be found in the place of
origin of products such as manufacturing skill
and traditions, and they are protected.
TRADEMARK v. GEOGRAPHICAL
INDICATION
Trademark is to distinguish (why it is different);
while, geographic indication is to say that it has
these characteristics due to the place of
production (it is different because of its location).
FOREIGN CORPORATION
GR:
- To have the right to sue, the foreign
corporation must be doing business in the
Ph and it must have license to do so.
- If it has no license, it has no right to sue.
ER:
- Foreign Corporation may sue in the Ph
even if not engaged in trade or business or
if engaged, it has no license here, for the
purpose of enforcing their right of
intellectual property rights. Pertains to all
SUITS. Such as Civil, administrative suits,
cancellation, infringement, unfair
competition and even false designation.
- Provided there is reciprocal rights.
From the PPT
- May sue if a person* and does not engage
in business in the PH whether or not
licensed to do business in the PH.
N.B.
There is an asterisk in “person*” this means
that it must be a person whose country also
provides the same reciprocal rights. That is
they can sue for the purpose of enforcing
their intellectual property rights.
CONCLUSION
For purpose of trademark, the origin of the
goods the owner of the trademark, the one that
can cause its registration is the Producer of the
goods offered of sale, and not the author of any
idea, concept or communication embodied in
those goods.
If they are the owner, they have the right to
cause registration.
HACKS FOR TRADEMARK
Confusingly similar- Go-to phrase, likelihood
of confusion.
Well-known marks - to a particular relevant
market sector and not the entire PH.
Use - important to maintain registration.