Intellectual

Property
Atty. Mario Dennis A. Calvo
Professor
Law
Law on Trademarks
 Trade Mark vs. Service Mark

•  The term "trade mark" includes any word, name,
symbol, emblem, sign or device or any combina>on
thereof adopted and used by a manufacturer or
merchant to iden>fy his goods and dis>nguish them
from those manufactured, sold or dealt in by others.

•  The term "service mark" means a mark used in the
sale or adver>sing of services to iden>fy the services
of one person and dis3nguish them from the services
of others and includes without limita3on the marks,
names, symbols, 3tles, designa3ons, slogans,
character names, and dis3nc3ve features of radio or
other adver3sing.
Q: What is a collec3ve mark?

A "collec>ve mark" or collec>ve trade-
name" is a mark or trade-name used
by the members of a coopera>ve, an
associa>on or other collec>ve group
or organiza>on. (Sec. 40, R.A. 166)
Func3ons of Trademark
–  To point out dis>nctly the origin or ownership of
the ar>cles to which it is affixed.

–  To secure to him who has been instrumental in
bringing into market a superior ar>cle or
merchandise the fruit of his industry and skill

–  To prevent fraud and imposi>on. (Etepha v.

Director of Patents, G.R. No. L-20635, Mar. 31,
1966)

Q: Is the prior use of the mark s3ll a
requirement for registra3on?

A: No. Actual prior use in commerce in the
Philippines has been abolished as a
condi>on for the registra>on of a
trademark. (RA 8293)

ACQUISITION AND OWNERSHIP OF
MARKS
•  Q: How are marks acquired?

•  A: Marks are acquired solely through
registraKon. (Sec. 122, IPC)
•  Q: What marks may be registered?

•  A: Any word, name, symbol, emblem, device,
figure, sign, phrase, or any combina>on
thereof except those enumerated under
Sec>on 123, IPC.
•  Q: What are the requirements for a
mark to be registered?

•  A visible sign (not sounds or scents);
and
•  Capable of dis>nguishing one’s
goods and services from another.
 NON-REGISTRABLE MARKS
1.  Consists of immoral, decepKve or scandalous ma[er or
falsely suggest a connec>on with persons, ins>tu>ons,
beliefs, or na>onal symbols
2.  Consists of the flag or coat of arms or other insignia of the
Philippines or any of its poli>cal subdivisions, or of any
foreign naKon
3.  Consists of a name, portrait or signature iden>fying a
par>cular living individual except by his wriTen consent, or
the name, signature, or portrait of a deceased President of
the Philippines, during the life of his widow except by
wri[en consent of the widow
4.  Iden>cal with a registered mark belonging to a different
proprietor or a mark with an earlier filing or priority date, in
respect of:
a.  The same goods or services, or
b.  Closely related goods or services, or
c.  If it nearly resembles such a mark as to be likely to deceive or cause confusion;
5. Is iden>cal with an internaKonally well- known mark, whether or not
it is registered here, used for idenKcal or similar goods or services

6. Is iden>cal with an internaKonally well- known mark which is

registered in the Philippines with respect to non-similar goods or
services. Provided, that the interests of the owner of the registered
mark are likely to be damaged by such use

7. Is likely to mislead the public as to the nature, quality,

characteris>cs or geographical origin of the goods or services

8. Consists exclusively of signs that are generic for the goods or

services that they seek to iden>fy

9. Consists exclusively of signs that have become customary or usual

to designate the goods or services in everyday language and
established trade prac>ce designate the goods or services in everyday
language and established trade prac>ce

10. Consists exclusively that may serve in trade to
designate the kind, quality, quan>ty, intended purpose,
value, geographical origin, >me or produc>on of the
goods or rendering of the services, or other
characteris>cs of the goods or services

11. Consists of shapes that may be necessitated by
technical factors or by the nature of the goods
themselves or factors that affect their intrinsic value
12. Consists of color alone, unless defined by a given
form; or
13. Is contrary to public order or morality. (Sec. 123)
Q: Is the prior use of the mark s3ll a
requirement for registra3on?

A: No. Actual prior use in commerce in the
Philippines has been abolished as a
condi>on for the registra>on of a
trademark. (RA 8293)

Doctrine of Secondary Meaning?

This doctrine is to the effect that a word or phrase
originally incapable of exclusive appropria>on with
reference to an ar>cle on the market, because it is
geographical or otherwise descrip>ve, may
nevertheless be used exclusively by one producer
with reference to his ar>cle so long as in that trade
and to that branch of the purchasing public, the
word or phrase has come to mean that the ar>cle
was his product. (G. and C. Merriam Co. v. Saalfield,
198 F. 369, 373, cited in Ang v. Teodoro, G.R. No. L-
48226, Dec. 14, 1942)
Lyceum vs. Lyceum
Lyceum of the Philippines vs. Lyceum of Aparri, Lyceum
of Alabang et. al
GR No. 101897 March 5, 1993
Doctrine of Secondary Meaning:
-It is claimed, however, by pe>>oner that the word "Lyceum"
has acquired a secondary meaning in rela>on to pe>>oner with
the result that word, although originally a generic, has become
appropriable by pe>>oner to the exclusion of other ins>tu>ons
like private respondents herein.
-"Under the doctrine of secondary meaning, a word or phrase
originally incapable of exclusive appropria>on with reference to
an ar>cle in the market, because geographical or otherwise
descrip>ve might nevertheless have been used so long and so
exclusively by one producer with reference to this ar>cle that, in
that trade and to that group of the purchasing public, the word
or phrase has come to mean that the ar>cle was his produce.

Issue: Whether or not the word “Lyceum” acquired
secondary meaning in favor of the Pe>>oner.
Ruling: No
•  The doctrine of secondary meaning has been referred to as the
dis>nc>veness into which the name or phrase has evolved through the
substan>al and exclusive use of the same for a considerable period of
>me. . . .
•  No evidence was ever presented in the hearing before the Commission
which sufficiently proved that the word 'Lyceum' has indeed acquired
secondary meaning in favor of the appellant. If there was any of this
kind, the same tend to prove only that the appellant had been using
the disputed word for a long period of >me. . . .
•  In other words, while the appellant may have proved that it had been
using the word 'Lyceum' for a long period of 3me, this fact alone did
not amount to mean that the said word had acquired secondary
meaning in its favor because the appellant failed to prove that it had
been using the same word all by itself to the exclusion of others.
More so, there was no evidence presented to prove that confusion will
surely arise if the same word were to be used by other educa>onal
ins>tu>ons.
Pale Pilsen
•  Q: Is there an infringement of trademark when
two similar goods use the same words “PALE
PILSEN”?

•  A: No, because “pale pilsen” are generic words
descrip>ve of the color (pale) and of a type of
beer (pilsen), which is a light bohemian beer with
strong hops flavor that originated in the City of
Pilsen in Czechoslovakia. Pilsen is a primarily
geographically descripKve word, hence, non-
registrable and not appropriable by any beer
manufacturer (Asia Brewery, Inc. v. CA, G.R. No.
103543, July 5, 1993).
Q: Who may file an opposi3on to trademark
registra3on and on what ground?

A: Any person who believes that he would be
damaged by the registra>on of a mark may,
upon payment of the required fee and within
thirty (30) days aker the publica>on referred to
in Subsec>on 133.2, file with the Office an
opposi>on to the applica>on. (Sec. 134, IPC)
•  Q: Laberge, Inc., manufactures and markets
a W e r - s h a v e l o 3 o n , s h a v i n g c r e a m ,
deodorant, talcum powder and toilet soap,
using the trademark “PRUT”, which is
registered with the Phil. Patent Office.
Laberge does not manufacture briefs and
underwear and these items are not
specified in the cer3ficate of registra3on. JG
who manufactures briefs and underwear,
wants to know whether, under our laws, he
can use and register the trademark “PRUTE”
for his merchandise. What is your advice?
A: Yes, he can use and register the trademark
“PRUTE” for his merchandise. The trademark
registered in the name of Laberge Inc. covers only
aker-shave lo>on, shaving cream, deodorant,
talcum powder and toilet soap. It does not cover
briefs and underwear. The limit of the trademark is
stated in the cerKficate issued to Laberge Inc. It
does not include briefs and underwear which are
different products protected by Laberge’s
trademark. JG can register the trademark “PRUTE”
to cover its briefs and underwear (Faberge Inc. v.
IAC, G.R. No. 71189, Nov. 4, 1992) (1994 Bar
Ques3on)
Q: How are trade names acquired?

A: Trade names or business names are

acquired through adop>on and use.
Registra>on is not required. (Sec. 165,
IPC)
TEST TO DETERMINE CONFUSING
SIMILARITY BETWEEN MARKS

•  DOMINANCY TEST – Focuses on the similarity of the prevalent
features of the compe>ng marks. If the compe>ng trademark
contains the main or essen>al or dominant features of another, and
confusion is likely to result, infringement takes place. (Asia Brewery
v. CA, G.R. No. 103543, 5 July 1993)

•  TOTALITY OR HOLISTIC TEST – Confusing similarity is to be
determined on the basis of visual, aural, connota>ve comparisons
and overall impressions engendered by the marks in controversy as
they are encountered in the marketplace.

Note: . The totality or holis>c test only relies on visual comparison
between two trademarks whereas the dominancy test relies not only
on the visual but also on the aural and connota>ve comparisons and
overall impressions between the two trademarks.
(Societe Des Produits Nestl, S.A. v. CA, G.R. No. 112012, Apr. 4, 2001)
•  Q: N Corpora3on manufactures rubber shoes
under the trademark “Jordann” which hit the
Philippine market in 1985, and registered its
trademark with the Bureau of Patents,
Trademarks and Technology in 1990. PK
Company also manufactures rubber shoes with
the trademark “Javorski” which it registered
with BPTTT in 1978. In 1992, PK Co adopted and
copied the design of N Corpora3on’s “Jordann”
rubber shoes, both as to shape and color, but
retained the trademark “Javorski” on its
products. May PK Company be held liable to N
Co? Explain.
•  : PK Co may be liable for unfairly compe>ng against N
Co. By copying the design, shape and color of N
Corpora>on’s “Jordann” rubber shoes and using the
same in its rubber shoes trademarked “Javorski,” PK is
obviously trying to pass off its shoes for those of N. It is
of no moment that the trademark “Javorski” was
registered ahead of the trademark “Jordann.” Priority
in registra>on is not material in an ac>on for unfair
compe>>on as dis>nguished from an ac>on for
infringement of trademark. The basis of an ac>on for
unfair compe>>on is confusing and misleading
similarity in general appearance, not similarity of
trademarks. (Converse Rubber Co. v. Jacinto Rubber &
PlasKcs Co., G.R. Nos. 27425, 30505, Apr. 28, 1980)
(1996 Bar Ques3on)
 DOMINANCY TEST
•  The dominancy test focuses on 'the similarity of the
prevalent or dominant features of the compeKng
trademarks that might cause confusion, mistake, and
decepKon in the mind of the purchasing public.
•  DuplicaKon or imitaKon is not necessary; neither is it
required that the mark sought to be registered
suggests an effort to imitate. Given more consideraKon
are the aural and visual impressions created by the
marks on the buyers of goods, giving liTle weight to
factors like prices, quality, sales outlets, and market
segments
McDonalds vs LC Big Mak
LC Big Mak Burger, Inc v McDonald's
Corp, GR 233073, 14 February 2018

•  One case involved a trademark infringement lawsuit filed by McDonald's
Corpora>on against LC Big Mak Burger, Inc, a domes>c corpora>on that
operates fast-food outlets and snack vans that sell hamburgers and other
food items on which it uses the mark BIG MAK.

•  In this case, the Supreme Court applied the dominancy test and found a
likelihood of confusion between the BIG MAK and BIG MAC marks, thus
rendering the former infringing;

–  First, 'Big Mak' sounds exactly the same as 'Big Mac.' Second, the first word in
'Big Mak' is exactly the same as the first word in 'Big Mac.' Third, the first two
leTers in 'Mak' are the same as the first two leTers in 'Mac.' Fourth, the last
leTer in 'Mak' while a 'k' sounds the same as 'c' when the word 'Mak' is
pronounced. Fiah, in Filipino, the leTer 'k' replaces 'c' in spelling, thus
'Caloocan; is spelled 'Kalookan.'
–  In short, aurally the two marks are the same, with the first word of both marks
phoneKcally the same, and the second word of both marks also phoneKcally
the same. Visually, the two marks have both two words and six leTers, with
the first word of both marks having the same leTers and the second word
having the same first two leTers. In spelling, considering the Filipino language,
even the last leTers of both marks are the same

•  Further, according to the Supreme Court, the fact that Big Mak
hamburgers are targeted at low-income groups and Big Mac
hamburgers are targeted at middle and upper-income groups did
not remove the likelihood of confusion "since the low-income
group might be led to believe that the Big Mak hamburgers are the
low-end hamburgers marketed by pe>>oners”.
•  In addi>on, the fact that the BIG MAK mark was being used by the
defendant on food products other than hamburgers, which were
wrapped in plas>c (unlike McDonald's Styrofoam boxes) and sold in
food stalls and mobile vans (unlike McDonald's fast-food
restaurants) did not excuse the infringement. In this respect, the
court stated that:
-The registered trademark owner may use his mark on the same or
similar products, in different segments of the market, and at
different price levels depending on variaKons of the products for
specific segments of the market. The Court has recognized that the
registered trademark owner enjoys protecKon in product and
market areas that are the normal potenKal expansion of his
business.
McDonalds vs MyJoy (McJoy)
McDonald's Corp v MacJoy Fasfood
Corp, GR 166115, 2 February 2007

The second McDonald's dispute involved an inter partes case in which
McDonald's opposed MacJoy Faspood Corpora>on's registra>on of the mark
MACJOY & DEVICE for chicken, burgers, fries, spaghes, palabok (a noodle
dish), tacos, sandwiches, halo-halo (a cold dessert) and steaks. The Supreme
Court found confusing similarity "such that an ordinary purchaser can
conclude an associa>on or rela>on between the marks”, ruling as follows:

-To begin with, both marks use the corporate 'M' design logo and the prefixes
'Mc' and/or 'Mac' as dominant features. The first leTer 'M' in both marks puts
emphasis on the prefixes 'Mc' and/or 'Mac' by the similar way in which they
are depicted i.e. in an arch-like, capitalized and stylized manner.

-For sure, it is the prefix 'Mc,' an abbreviaKon of 'Mac,' which visually and
aurally catches the aTenKon of the consuming public. Verily, the word
'MACJOY' aTracts aTenKon the same way as did 'McDonalds,' 'MacFries,’]
'McSpaghel,' 'McDo,' 'Big Mac' and the rest of the MCDONALD'S marks
which all use the prefixes Mc and/or Mac.


•  Besides and most importantly, both trademarks
are used in the sale of fasfood products.
Indisputably, the respondent's trademark
applicaKon for the 'MACJOY & DEVICE' trademark
covers goods under Classes 29 and 30 of the
InternaKonal ClassificaKon of Goods, namely,
fried chicken, chicken barbeque, burgers, fries,
spaghel, etc. Likewise, the peKKoner's
trademark registraKon for the MCDONALD'S
marks in the Philippines covers goods which are
similar if not idenKcal to those covered by the
respondent's applicaKon.
 Holis>c Test
•  The holisKc or totality test necessitates a
'consideraKon of the enKrety of the marks as
applied to the products, including the labels
and packaging, in determining confusing
similarity. The discerning eye of the observer
must focus not only on the predominant
words, but also on the other features
appearing on both labels so that the observer
may draw conclusion on whether one is
confusingly similar to the other.
Kolin Electronics Co. Inc vs. Kolin Philippines
International Inc.
G.R. No. 228165
February 9, 2021
Released: June 15, 2021
 Ruling:
•  Sisng en banc, the court held that gran>ng the registra>on
of KPII’s applica>on for Kolin would cause the likelihood of
confusion and damage the rights of KECI. The court held:
•  (1) that the par>es’ goods were related;
•  (2) that there was evidence of actual confusion between
the two marks;
•  (3) that the goods covered by KPII’s applica>on fell within
the normal poten>al business expansion of KECI;
•  (4) that sophis>ca>on of buyers was not enough to
eliminate confusion;
•  (5) that likelihood of con-fusion increased because Kolin
was a coined word and therefore a strong mark; and
•  (6) that KPII filed its applica>on in bad faith.
 Abandonment of Holis>c Test
*Considering the adop>on of the Dominancy
Test and the abandonment of the Holis>c Test,
as confirmed by the provisions of the IP Code
and the legisla>ve delibera>ons, the Court
hereby makes it crystal clear that the use of the
Holis3c Test in determining the resemblance of
marks has been abandoned.

•  The court also categorically abandoned the
use of the Nice Classifica>on and prescribed
the use of the extensive criteria laid out in the
case of Mighty CorporaKon v E & J Gallo
Winery et al when deciding the relatedness of
goods.
 Relatedness of Goods/Services
•  Mighty Corpora>on’s case- In assessing
relatedness of goods/services to determine
likelihood of confusion, provides a list of
factors that should be considered,
 Use of NCL-Related Goods
•  SECTION 6. Likelihood of Confusion;
DeterminaKon of Related Goods or Services. -
Goods or services may not be considered as
being similar or dissimilar to each other on the
ground that, in any registra>on or publica>on
by the Office, they appear in the same or
different classes of the Nice Classifica>on.
•  As astutely explained by Chief Jus>ce Diosdado
M. Peralta,133 the NCL serves purely
administra>ve purposes - merely a way for
trademark offices worldwide to organize the
thousands of applica>ons that are filed - and the
classifica>on of products/services should not
have been included as one of the factors in
determining relatedness because there was no
legal basis for its inclusion.
•  The use of classifica>on of products/services in
determining relatedness also conflicts with a
provision of the 2020 Revised Rules of Procedure
for Intellectual Property Rights Cases
 Abandonment of the use NCL
•  Considering the foregoing discussion, the
Court hereby abandons the use of product or
service classifica3on as a factor in
determining relatedness or non-relatedness.
 Actual Confusion vs Likelihood of
Confusion
•  Indeed, the evidence of actual confusion oken considered the most
persuasive evidence of likelihood of confusion because past
confusion is frequently a strong indicator of future confusion.
•  It is the Court's considered view that evidence of actual confusion
should be considered as strong evidence of likelihood of confusion,
especially when there are concurrent findings of resemblance of
marks and/or relatedness of the goods/services. If "likelihood of
confusion" is already abhorred by the infringement provisions146
of the law and the evidence of likelihood of confusion already
creates basis to prevent another's use of its mark, it should
logically follow that actual confusion should be given more weight
because confusion among consumers is not only speculated but
has actually transpired.
 Sophis>ca>on of the buyers
•  As stated in Philip Morris, Inc. v. Fortune Tobacco
CorporaKon, 153 "the general impression of the ordinary
purchaser, buying under the normally prevalent
condi3ons in trade and giving the aien3on such
purchasers usually give in buying that class of goods, is the
touchstone.
•  Ul>mately, there is no need to speculate and imagine how
an average consumer would think and act in this
hypothe>cal situa>on because, as discussed, there is actual
proof of confusion among consumers between the KOLIN
and kolin goods.155 It is cleai: th~t consumers have
actually associated KPII's "KOLIN"-branded products with
KECl's business.
• 
 Strength of the Mark
•  The factor on "strength of plain>ffs mark" pertains to the degree of
dis>nc>veness of marks,156 which can be divided into five
categories157 enumerated in decreasing order of strength below:
1) Coined or fanciful marks - invented words or signs that have no real
meaning (e.g., Google, Kodak). These marks are the strongest and
have the greatest chance of being registered.
2) Arbitrary marks158 -words that have ameaning but have no logical
rela>on to a product (e.g., SUNNY as a mark covering mobile phones,
APPLE in rela>on to computers/phones).
3) Sugges>ve marks159 - marks that hint at the nature, quality or
a[ributes of the product, without describing these a[ributes (e.g.,
SUNNY for lamps, which would hint that the product will bring light to
homes). If not considered as bordering on descrip>ve, this may be
allowed.
4) Descrip>ve marks160 - describe the feature of the product
such as quality, type, efficacy, use, shape, etc. The registra>on
of descrip>ve marks is generally not allowed under the IP
Code. 161
5) Generic marks162 -words or signs that name the species or
object to which they apply (e.g., CHAIR in rela>on to chairs).
They are not eligible for protec>on as marks under the IP
Code. 163

KECI's /(OLIN mark is a fanciful or coined mark. Considering
that it is highly dis>nc>ve, confusion would be likely if
someone else were to be allowed to concurrently use such
mark in commerce.
 Bad Faith
The discussion of bad faith in the case of Zuneca PharmaceuKcal v.
Natrapharm, Inc. 164 is instruc>ve:

•  The concepts of bad faith and fraud were defined in Mustang-
Bekleidungswerke GmbH + Co. KG v. Hung Chiu Ming, a case decided by
the Office okhe Director General okhe IPO under the Trademark Law, as
amended, viz.:

•  What cons>tutes fraud or bad faith in trademark registra>on? Bad faith

means that the applicant or registrant has knowledge of prior crea>on,
use and/or registra>on by another of an iden>cal or similar trademark. In
other words, it is copying and using somebody else's trademark. Fraud, on
the other hand, may be commi[ed by making false claims in connec>on
with the trademark applica>on and registra>on, par>cularly on the issues
of origin, ownership, and use of the trademark in ques>on among other
things.
 Normal Poten>al Expansion of
Business

•  In the case of Dermaline, Inc. v. Myra
PharmaceuKcals, Inc., 149 the Court already
acknowledged "that the registered trademark
owner enjoys protec>on in product and market
areas that are the normal poten3al expansion of
his business."
•  As stated above, the goods covered by KOLIN and
kolin are related. Therefore, it is likely that the
goods covered by kolin falls within the normal
poten>al expansion of business of KECI.
 TAIWAN KOLIN VS. KOLIN
ELECTRONICS 2021
To summarize the above discussion:
•  (1) there is resemblance between KECI's KOLIN and KPII's kolin
marks;
•  (2) the goods covered by KECI's KOLIN are related to the goods
covered by KPII's kol n;
•  (3) there is evidence of actual confusion between the two marks;
(4) the goods covered by KPII's kolin fall within the normal
poten>al expansion of business of KECI;
•  (5) sophis>ca>on of buyers is not enough to eliminate confusion;
(6) KPII's adop>on ofKECI's coined and fanciful mark would greatly
contribute to likelihood of confusion; and
•  (7) KPII applied for koIrn in bad faith. Thus, KPII's applica>on for
kol{n should be denied because it would cause likelihood
ofconfusion and KECI's rights would be damaged.
•  As seen above, the existence of likelihood of confusion is already
considered as damage that would be sufficient to sustain the
opposi>on and rejec>on of KPII's trademark applica>on. More than
that, however, the Court is likewise cognizant that, by gran>ng this
registra>on, KPII would acquire exclusive rights over the stylized
version ofKOLIN ("kolin") for a range of goods/services,172 i.e.,
covered goods, related goods/services, goods/services falling
within the normal poten>al expansion of KPII's business. Owing to
the peculiar circumstances of this case, this will effec>vely amount
to a curtailment of KECI' s right to freely use and enforce the KOLIN
word mark, or any stylized version thereof, for its own range of
goods/services, especially against KPII, regardless of the existence
of actual confusion. Thus, based on Sec>on 122173 vis-a-vis
Sec>on 236174 of the IP Code, the Court cannot give due course to
KPII's trademark applica>on for "kolln".
•  Q: What is the so-called “related goods
principle”?
• 
•  A: Goods are related when they;
1)  belong to the same class or have the same
descripKve properKes;
2)  when they possess the same physical
aTributes or essenKal characterisKcs with
reference to their form, composi>on, texture
or quality.
Q: What is the rule of idem sonans?

A: Two names are said to be "idem sonantes" if the
aTenKve ear finds difficulty in disKnguishing them
when pronounced. (MarKn v. State, 541 S.W. 2d
605)

Note: Similarity of sound is sufficient to rule that
the two marks are confusingly similar when applied
to merchandise of the same descrip>ve proper>es.
(Marvex Commercial v. Director of Patent, G.R. No.
L-19297, Dec. 22, 1966)
Q: What are the types of confusion that arise from the
use of similar or colorable imita3on marks?

A:
•  Confusion of goods (product confusion); and
•  Confusion of business (source or origin confusion).
(McDonald’s CorporaKon v. L.C. Big Mak Burger, Inc.,
et al., G.R. No. 143993, Aug. 18, 2004)

Note: While there is confusion of goods when the
products are compe>ng, confusion of business exists
when the products are non-compe>ng but related
enough to produce confusion of affiliaKon.
Q: What is colorable imita3on?

A: Such a close or ingenious imita>on as to be
calculated to deceive ordinary persons, or such
a resemblance to the original as to deceive an
ordinary purchaser giving such a[en>on as a
purchaser usually gives, as to cause him to
purchase the one supposing it to be the other.
(Societe des Produits Nestlé, S.A. v. CA, G.R. No.
112012, Apr. 4, 2001)

•  (Societe des Produits Nestlé, S.A. v. CA, G.R. No.
112012, Apr. 4, 2001)

•  ISSUE: whether the trademark FLAVOR MASTER
is a colorable imita>on of the trademarks
MASTER ROAST and MASTER BLEND
 Ruling:
•  The term "MASTER", therefore, has acquired a
certain connota>on to mean the coffee
products MASTER ROAST and MASTER BLEND
produced by Nestle.
•  As such, the use by CFC of the term "MASTER"
in the trademark for its coffee product
FLAVOR MASTER is likely to cause confusion
or mistake or even to deceive the ordinary
purchasers.
Q: What cons3tutes an interna3onally well- known
mark?

A:
•  Considered by the competent authority of the
Philippines to be “well-known” interna>onal and in the
Philippines as the mark of a person other than the
applicant or registrant

•  Need not be used or registered in the Philippines

•  Need not be known by the public at large but only by
relevant sector of the public.
Q: What is the dura3on of a cer3ficate of
trademark registra3on?

A: 10 years, renewable for a period of
another 10 years. Each request for renewal
must be made within 6 months before or
aker the expira>on of the registra>on.
Q: What are the rights of a registered mark
owner?

A:
–  Protec>on against reproduc>on, or imita>on or
unauthorized use of the mark (infringement of
mark)
–  To stop entry of imported merchandise into the
country containing a mark iden>cal or similar to
the registered mark
–  To transfer or license out the mark.
Q: What is trademark infringement?

A: The use without consent of the trademark owner of any
a)  reproducKon,
b)  counterfeit,
c)  copy or
d)  colorable imitaKon
of any registered mark or tradename in connec>on with the sale,
offering for sale, or adverKsing of any goods, business or services on or
in connec>on with which such use is likely to cause confusion or
mistake or to deceive purchasers or others as to the source or origin of
such goods or services, or idenKty of such business; or reproduce,
counterfeit, copy or colorably imitate any such mark or tradename and
apply such reproduc>on, counterfeit, copy or colorable limita>on to
labels, signs, prints, packages, wrappers, receptacles or
adver>sements intended to be used upon or in connec>on with such
goods, business or services (Esso Standard Eastern v. CA, G.R. No. L-
29971, Aug. 31, 1982)
Elements to be established in trademark
infringement:

•  The validity of the mark
•  The plainKff’s ownership of the mark
•  The use of the mark or its colorable imita>on
by the alleged infringer results in “likelihood of
confusion.” (McDonald’s CorporaKon v. L.C.
Big Mak Burger, Inc., G.R. No. 143993, Aug 18,
2004)
Q: What is meant by non-compe3ng goods?

A: Those which, though they are not in actual compe>>on,
are so related to each other that it might reasonably be
assumed that they originate from one manufacturer.

Non-compe>ng goods may also be those which, being en>rely
unrelated, could not reasonably be assumed to have a
common source. In the case of related goods, confusion of
business could arise out of the use of similar marks; in the
la[er case of non-related goods, it could not. The vast
majority of courts today follow the modern theory or concept
of "related goods" which the court has likewise adopted and
uniformly recognized and applied. (Esso Standard Eastern, Inc.
v. CA, G.R. No. L-29971, Aug. 31, 1982)
Q: What are the remedies of the owner of the
trademark against infringers?

A:
•  Civil — both civil and criminal ac>ons may be filed with
the Regional Trial Courts. The owner of the registered
mark may ask the court to issue a preliminary
injuncKon to quickly prevent infringer from causing
damage to his business. Furthermore, the court will
require infringer to pay damages to the owner of the
mark provided defendant is shown to have had no>ce
of the registra>on of the mark (which is presumed if a
le[er R within a circle is appended) and stop him
permanently from using the mark.
•  Criminal — the owner of the trademark may ask the
court to issue a search warrant and in appropriate
cases, remedies available shall also include the seizure,
forfeiture and destruc>on of the infringing goods and
of any materials and implements the predominant use
of which has been in the commission of the offense.

•  AdministraKve — This remedy is the same as in patent
infringement cases. If the amount of damages claimed
is not less than P200,000.00, the registrant may choose
to seek redress against the infringer by filing an
administra>ve ac>on against the infringer with the
Bureau of Legal Affairs.
Q: Is the law on unfair compe33on broader than the law
on trademark?

A: Yes. For the la[er (trademark infringement) is more
limited but it recognizes a more exclusive right derived
from the trademark adop>on and registra>on by the
person whose goods or business is first associated with it.
Hence, even if one fails to establish his exclusive property
right to a trademark, he may s>ll obtain relief on the
ground of his compeKtor’s unfairness or fraud. Conduct
cons>tutes unfair compeKKon if the effect is to pass off
on the public the goods of one man as the goods of
another. (Mighty CorporaKon v. E. & J. Gallo Winery, G.R.
No. 154342, July 14, 2004)
Elements of an ac3on for unfair compe33on:

1. Confusing similarity in the general appearance of the
goods; and
Note: The confusing similarity may or may not result from
similarity in the marks, but may result from other external
factors in the packaging or presenta>on of the goods.

2. Intent to deceive the public and defraud a compe>tor.
Note: The intent to deceive and defraud may be inferred from
the similarity in appearance of the goods as offered for sale to
the public. Actual fraudulent intent need not be shown.
(McDonald’s CorporaKon v. L.C. Big Mak Burger, Inc., et al.,
G.R. No. 143993, Aug. 18, 2004)
•  Q: The NBI found that SG Inc. is engaged in
the reproduc3on and distribu3on of
counterfeit "playsta3on games" and thus
applied with the Manila RTC warrants to
search respondent's premises in Cavite. RTC
granted such warrants and thus, the NBI
served the search warrants on the subject
premises. SG Inc. ques3oned the validity of
the warrants due to wrong venue since the
RTC of Manila had no jurisdic3on to issue a
search warrant enforceable in Cavite. Is the
conten3on of SG Inc. correct?
•  A: No, unfair compe>>on is a transitory or
con>nuing offense under Sec>on 168 of
Republic Act No. 8293. As such, pe>>oner
may apply for a search warrant in any court
where any element of the alleged offense was
commi[ed, including any of the courts within
Metro Manila and may be validly enforced in
Cavite. (Sony Computer Entertainment Inc. v.
Supergreen Inc. G.R. No. 161823, Mar. 22,
2007)
END.

Thank You Everyone.