1. Fundamental Principles of Trademark Protection A. History and evolution B. Policy Rationales C. Functions of a Trademark C1. Indicator of Source C2.

Guarantor of Quality C3. Means of Consumer Protection C4. Advertising and Promotion Tool C5. Symbol of Goodwill C6. Property Right 2. What is a Trademark? A. Subject Matter Granted Trademark Protection A1. Word Marks A2. Letters as Marks A3. Numbers as Marks A4. Slogans as Marks A5. Personal Names as Marks A6. Geographic Term Marks B. Spectrum of Distinctiveness B1. Fanciful Marks B2. Arbitrary Marks B3. Suggestive Marks B4. Descriptive Marks B5. Generic C. Subject Matter Not Granted Trademark Protection C1. Generic Marks C2. Immoral or Scandalous Marks C3. Deceptive and Deceptively Misdescriptive C4. Geographic Terms: Primarily Geographically Descriptive or Deceptively Misdescriptive Marks C5. Marks that are Merely a Surname C6. Functionality 3. Acquisition of Trademark Rights 4. Registration of Trademarks A. Selection and Clearance of a Mark B. Bars to registration C. Nature of Use necessary to support a registration D. Preparing the Application D1. Basic Requirements of the Application D2. Examination D3. Allowance and Issuance D4. Publication D5. Opposition Proceedings D6. Registration 5. Maintenance of Trademark Rights A. Term of protection and renewal

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B. Proper Trademark Usage B1. Identification and Marking B2. General Guidelines B3. Proper Use Manuals B4. Graphics Standards Manual B5. Proper Use Advertising C. Trademark Policing C1. Internal Policing C2. External Policing D. Termination and abandonment Inter Partes Proceedings A. Opposition A1. Standing A2. Grounds B. Cancellation of Registration B1. Standing B2. Grounds Protection of Trademarks A. Infringement A1. Confusing Similarity The essential element of infringement is colorable imitation. This term has been defined as "such a close or ingenious imitation as to be calculated to deceive ordinary purchasers, or such resemblance of the infringing mark to the original as to deceive an ordinary purchaser giving such attention as a purchaser usually gives, and to cause him to purchase the one supposing it to be the other." A2. Likelihood of Confusion A3. Contributory Infringement B. Famous and well-known marks Lawful Unauthorized Use A. Collateral Use B. Comparative Advertising C. Parody D. Trademarks as Speech International Aspects of Trademark Law A. Paris Convention for the Protection of Industrial Property B. Nice Agreement on the international classification of goods and services C. Trademark Law Treaty D. The TRIPS Agreement E. The Madrid Agreement Concerning the International Registration of Marks. F. Vienna Agreement G. Lisbon Agreement

1. Fundamental Principles of Trademark Protection
A. History and evolution
1. Law of Queen Ma. Cristina of Spain 2. Philippine Commission passed Act No. 666 Enacted, March 6, 1903 Trademark and Trade Name Law of the Philippine Islands 3. Republic Act 166 repealed Act 666 after the Philippines gained its independence. Philippines adhered to the Lisbon Act of the Paris Convention for the Protection of Industrial Property of March 20, 1883 4. Philippines ratified the Agreement Establishing the World Trade Organization on December 16, 1994 5. Republic Act No. 8293, IP Code

B. Policy Rationales
The purpose underlying any trademark statute is twofold. 1. One is to protect the public so that it may be confident that, in purchasing a product bearing a particular trademark which it favorably knows, it will get the product which it asks for and wants to get. 2. Secondly, where the owner of a trademark has spent energy, time and money in presenting to the public the product, he is protected in his investment from its misappropriation by pirates and cheats. This is the well-established rule of law protecting both the public and the trademark owner. S. Rep. No. 1333, 79th Cong., 2d Sess. (1946), U.S.C.C.A.N. 1274. Interests weighed by the courts:1 1. Public’s interest in protection against deceit as to the source of its purchases. 2. Businessman’s right to enjoy business earned through investment in the goodwill and reputation attached to a trade name. 3. Interest of others in not being restrained from free use of trade names because of mere token use on the part of one.

C. Functions of a Trademark
C1. Indicator of Source

Symbols have been used to identify the ownership or origin of articles for several centuries. As early as 5,000 B.C., markings on pottery have been found by archaeologists. Cave drawings in southwestern Europe show bison with symbols on their flanks. Archaeological discoveries of
1

National Color Laboratories, Inc. v. Philip’s Foto Co., 273 F. Supp. 1002 (S.D.N.Y. 1967).

glass works. bricks.ancient Greek and Roman inscriptions on sculptural works. G. etc. 278) To point out distinctly the origin or ownership of the goods to which it is affixed. smith's marks. 189 (1985). and its sole function is to designate distinctively the origin of the products to which it is attached. and to prevent fraud and imposition. Merchants dealt in goods acquired from many sources and the marks enabled them to identify and reclaim their goods upon recovery after shipwreck or piracy. For a similar reason. 2 5 Park ‘N Fly. In the Middle Ages. It was in the late 18th century when the industrial revolution gave rise to mass production and distribution of consumer goods that the mark became an important instrumentality of trade and commerce. Inc. the mark acquired popularity and became voluntarily adopted. There were the baker's mark on bread. 4 Ibid. between an entrepreneur and his workmen. The marks were not trademarks but police marks compulsorily imposed by the sovereign to let the public know that the goods were not "foreign" goods smuggled into an area where the guild had a monopoly. It was not intended to create or continue monopoly but to give the customer an index or guarantee of quality.4 Because trademarks desirably promote competition and the maintenance of product quality. . By this time." 5 2 3 Mirpuri.2 "A 'trade-mark' is a distinctive mark of authenticity through which the merchandise of a particular producer or manufacturer may be distinguished from that of others. These marks were affixed by the creator or marker of the article. Dollar Park & Fly. 114 F 2d.. L-24075. Fifteenth century England saw the compulsory use of identifying marks in certain trades. January 31. vases. Norick. Court of appeals Gabriel v. for disclosing state monopoly. trademarks did not merely identify the goods. et al. paintings. watermarks on paper. reveal some features which are thought to be marks or symbols. etc. Perez. bottle maker’s marks. Guarantor of Quality With constant use. the use of many kinds of marks on a variety of goods was commonplace. they also indicated the goods to be of satisfactory quality. 469 U. Every guild had its own mark and every master belonging to it had a special mark of his own. precious stones.3 C2. as well as to aid in tracing defective work or poor craftsmanship to the artisan. vs. No.. vs." (Reynolds & Reynolds Co. Congress determined that "a sound public policy requires that trademarks should receive nationally the greatest protection that can be given them. or by public authorities as indicators for the payment of tax. the fruit of his industry and skill.S. or devices for the settlement of accounts. 1974. Inc. who has been instrumental in bringing into market a superior article of merchandise. v. tanner's marks. merchants also used merchants' marks. to secure to him. and thereby stimulated further purchases by the consuming public.R.

a court must expand the more frequent. Pepsico. the trade-mark owner has something of value. 8 Mishawaka Rubber & Woolen Mfg. S.‘ To hold otherwise would be to condone public deceit. A third party.2d 285 (1969). Inc. in the minds of potential customers. Co. 316 U. Once this is attained. 203 (1942). approach. But it is one of the geniuses of what has been called the "free enterprise" system (but which. 7 C4. v. Ltd.. Grapette Co. one-on-one. Interested businessmen may sue for trademark infringement in the course of protecting their pocketbook. Sign of Beefeater. What is infringed is the right of the public to be free of confusion and the synonymous right of a trademark owner to control his product's reputation. or what he has been led to believe he wants.8 6 7 James Burrough. Kresge Co. The protection of trade-marks is the law's recognition of the psychological function of symbols. is present and its interests are paramount. it is no less true that we purchase goods by them.. Means of Consumer Protection In the consideration of evidence relating to trademark infringement. 6 Where a transferred trademark is to be used on a new and different product. Inc. The owner of a mark exploits this human propensity by making every effort to impregnate the atmosphere of the market with the drawing power of a congenial symbol.S. in its proper operation.C3. v. Whatever the means employed. v. The consumer might buy a product thinking it to be of one quality or having certain characteristics and could find it only too late to be another. might be better described as “consumer-choice" system) that the interests of the consuming public and of the entrepreneur are to the maximum extent paralleled. the desirability of the commodity upon which it appears. therefore. To say that this would be remedied by the public soon losing faith in the product fails to give the consumer the protection it initially deserves. any goodwill which the mark itself might represent cannot legally be assigned. the aim is the same—to convey through the mark. 416 F.S. 540 F.. . the consuming public. 'The trademark owner does not have the right to a particular word but to the use of the word as the symbol of particular goods. contest-between-two sides. Hence infringement is found when the evidence indicates a likelihood of confusion. Advertising and Promotion Tool The creation of a market through an established symbol implies that people float on a psychological current engendered by the various advertising devices which give a trade-mark its potency.2d 266 (1976). A trade-mark is a merchandising short-cut which induces a purchaser to select what he wants. If it is true that we live by symbols. deception or mistake on the part of the consuming public.

v. 240 U.11 Plaintiff’s trademark is in the nature of a property right and as such it need not yield to the exercise of First Amendment rights under circumstances where adequate alternative avenues of communication exist. the trademark served as a warning against the imitation or faking of products to prevent the imposition of fraud upon the public. 604 F. but only in the sense that a man's right to the continued enjoyment of his trade reputation and the good will that flows from it. and the right to their exclusive use are to be classed among property rights. free from unwarranted interference by others. Metcalf." Subsequently. Courts afford redress or relief upon the ground that a party has a valuable interest in the good will of his trade or business. 2d 200 (1979). Symbol of Goodwill Eventually.9 The redress that is accorded in trademark cases is based upon the party's right to be protected in the good will of a trade or business.12 2. The primary and proper function of a trademark is to identify the origin or ownership of the article to which it is affixed. others are debarred from applying the same mark to goods of the same description. for the protection of which a trademark is an instrumentality. It became the right of the trademark owner to exclude others from the use of his mark. Property Right Trademarks.C5. they came to symbolize the goodwill and business reputation of the owner of the product and became a property right protected by law.10 C6. from getting another's business or injuring his reputation by unfair means. Pussycat Cinema Ltd. because to do so would in effect represent their goods to be of his production and would tend to deprive him of the profit he might make through the sale of the goods which the purchaser intended to buy. Where a party has been in the habit of labeling his goods with a distinctive mark. is a property right. and. England and the United States enacted national legislation on trademarks as part of the law regulating unfair trade. 403 (1916) 11 Ibid. 10 . from defrauding the public. At the same time.S. 12 Dallas Cowboys Cheerleaders Inc v. and in the trademarks adopted to maintain and extend it. What is a Trademark? “Mark” means any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods (Section 9 Ibid. This is not a case of government censorship but a private plaintiff’s attempt to protect its property rights. or of a confusingly similar mark where confusion resulted in diversion of trade or financial injury. so that purchasers recognize goods thus marked as being of his production. 2 Hanover Star Milling Co. The essence of the wrong consists in the sale of the goods of one manufacturer or vendor for those of another. The common law developed the doctrine of trademarks and trade names "to prevent a person from palming off his goods as another's.

and N. the scope of a copyright is confined to literary and artistic works which are original intellectual creations in the literary and artistic domain protected from the moment of their creation. “Trade name” means the name or designation identifying or distinguishing an enterprise (Section 121. as including "any word.P. differ by only one letter.Q. Inc. including the quality of goods or services of different enterprises which use the sign under the control of the registered owner of the collective mark (Section 121. refer to any technical solution of a problem in any field of human activity which is new. Patentable inventions. G. Inc. Shoemart. the IP Code. emblem. 2003." This definition has been simplified in R.R.3 of the IP Code).B.B. sold or dealt in by others. Brutting E. Meanwhile. which defines a "trademark".14 A1.S. sign or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured."13 A.C. A trademark is any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods. But it is difficult to distinguish between new letter combinations that are not recognized abbreviations. v.A. the Trademark Law. 16 13 14 Ibid. 16 In re Standard Kollsman Industries. A Trademark is not a Trade Name.A.B. 1967). 156 U. . on the other hand.. as "any visible sign capable of distinguishing goods. over time the public has learned to differentiate the sources symbolized. 8293. 15 Edison Bros. Sport-International GmbH.C. name. a trade name means the name or designation identifying or distinguishing an enterprise.P.A. 166. symbol. 148222.S. 346 (T. 230 U. Letters as Marks   Initials of broadcasting networks ANC Confusion is more likely between arbitrarily arranged letters than between other types of marks. 15 While the initials of broadcasting networks A.Q. In relation thereto. Stores. No. August 15.2 of the IP Code). Word Marks A2. A "trademark" is defined under R. “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. 2 Pearl & Dean v.121. Subject Matter Granted Trademark Protection Trademark.1 of the IP Code). copyright and patents are different intellectual property rights that cannot be interchanged with one another. No. involves an inventive step and is industrially applicable.T.B.

306 F. as “3214. of America v.P. it has been because on the facts of each case. January 31. 372 U. built up at great expense. that no man is permitted to assign a personal and private meaning to that which has by long usage and universal acceptation acquired a public and generic meaning. denied.D. 1974. v.. and that it and its products are favorably known as a result of its use of this property right and that the defendant.R.S. he would be protected. or the letters A. 524 (5th Cir. 12 F. 134 U. 3.' referring to a food product. Personal Names as Marks Example of personal names as mark: “Dr. and proposes further to make use of. 137 U. 913 (1963). it was determined that the figures or letters were intended solely to indicate quality.A3.P. Pang Isports Pa!” …the plaintiff has a property interest in the slogan.Y.” to distinguish his own goods from those of others. 1962). . Fanciful Marks 17 18 Shaw Stocking Co. Spectrum of Distinctiveness B1.Q. and D.C. Geographic Term Marks B. a deceptively similar slogan In a manner that will bring direct financial loss to the plaintiff. Mack. No. It is very clear that no manufacturer would have the right exclusively to appropriate the figures 1.S. 2. Slogans as Marks   “Hindi Lang Pampamilya.S.18 A5. etc. cert. Inc. L-24075. and by reason of the peculiarly unwholesome association of ideas when the word 'bugs' was substituted in the slogan for the word 'Bud. and not because figures and letters in arbitrary combination are incapable of being used as trade-marks. Perez Wonder Medicated Beauty Soap”19 A6. and 4. 965.N. third and fourth quality of his goods. 19 Gabriel v.2d 433. B. Numbers as Marks    Levis 501 7-11 911-1111 … where the courts have refused protection to alleged trade-marks composed of letters or numerals. second. 1882). 707 (C. to distinguish the first. …if for a long period of time he had used the same figures in combination. with full knowledge of the right and with the purpose of appropriating some of the value engendered in the minds of the public by its use has used. Perez. Why? Because the general signification and common use of these letters and figures are such.. G. Anheuser-Busch. respectively. C. both by reason of confusing the source of the defendant's product.Q.17 A4. Chemical Corp. so that the public had come to know them by these numerals.

is usually applied to words invented solely for their use as trademarks. The phrase “ang tibay” is never used adjectively to define or describe an object.e. to the genus of which the particular product or service is a species. however." 20 Ang vs. 1999). December 14. 1143 (9th Cir. because a term may have one meaning to one group of users and a different one to others. Teodoro. i. Coined or Fanciful Marks In Footnote 12 of Abercrombie: ”the term "fanciful". i. Suggestive Marks From all of this we deduce that "Ang Tibay" is not a descriptive term within the meaning of the Trade-Mark Law but rather a fanciful or coined phrase which may properly and legally be appropriated as a trade-mark or trade-name. and (4) arbitrary or fanciful.20 B4. 48226. No. because a term may shift from one category to another in light of differences in usage through time. and because the same term may be put to different uses with respect to a single product." B2. (3) suggestive. the difficulties are compounded because a term that is in one category for a particular product may be in quite a different one for another. (2) descriptive. Issue: Whether the publisher of a telephone directory for the Filipino-American community can establish that the term "Filipino Yellow Pages" is protectable under trademark law. … to determine whether they are a descriptive term. G.. 1942. or has come to be understood as referring. The lines of demarcation. these classes are (1) generic. . whether they relate to the quality or description of the merchandise to which respondent has applied them as a trademark. When the same legal consequences attach to a common word. 198 F. Arbitrary Marks • • Mango for apparel Apple for computers B3. are not always bright. Moreover. Inc. "A `generic' term is one that refers. as a classifying concept. when it is applied in an unfamiliar way. Asian Journal Publications. Inc. Arrayed in an ascending order which roughly reflects their eligibility to trademark status and the degree of protection accorded.. v. It cannot become a trademark under any circumstances.R.• Kodak • Xerox • Escalator … four different categories of terms with respect to trademark protection. e. the use is called "arbitrary. Descriptive Marks Filipino Yellow Pages.3d.

139 (1953). 407 (D. B5. Director of Patents. 928. A descriptive term." "cheddar cheese. for no other reason than that he was the first to use them in his registered trademark.e. it has "become distinctive of the [trademark] applicant's goods in commerce. 718 F." "corn flakes" and "cooking oil" may be appropriated by any single manufacturer of these food products. any more than such descriptive words as "evaporated milk.C. G. Weeks. 94 Phil.P. Subject Matter Not Granted Trademark Protection C1. 129 F. unlike a generic term." Courts sometimes refer to descriptive terms as "merely descriptive" terms (as opposed to generic or "common descriptive" terms). if it does not. S. v. 1955) .21 In Masso Hermanos. for if the product does contain wax it is descriptive. Court of Appeals and San Miguel Corporation. Inc.Q.D. No.2d at 329." "tomato ketchup. Generic • • • • • • Escalator Aspirin Cellophane Thermos Yo-yo Google? The words "pale pilsen" may not be appropriated by SMC for its exclusive use even if they are part of its registered trademark: SAN MIGUEL PALE PILSEN. vs. can be a subject for trademark protection under appropriate circumstances.R. Generic Marks C2. Park `N Fly. They belong to the public domain (Ong Ai Gui vs. Immoral or Scandalous Marks C3. 103543. i. The Hon. Deceptive and Deceptively Misdescriptive Deceptive22 If it is not deceptive in this way. it was held that a dealer in shoes cannot register "Leather Shoes" as his trademark because that would be merely descriptive and it would be unjust to deprive other dealers in leather shoes of the right to use the same words with reference to their merchandise. Director of Patents. Supp. Although descriptive terms generally do not enjoy trademark protection. 96 Phil.. 136. 1993 Gold Seal Co. a descriptive term can be protected provided that it has acquired "secondary meaning" in the minds of consumers. the Patent Office asserts that the mark is merely descriptive or deceptively misdescriptive. 673.S. vs. 676 [1955]) C.A. the language used in the Lanham Act for terms incapable of becoming trademarks. 105 U. July 5. No one may appropriate generic or descriptive words.Courts sometimes refer to generic terms as "common descriptive" names. it is 21 22 Asia Brewery.

whether or not it was significant to them in purchasing the product. is the misdescription likely to affect the decision to purchase? C4.A. or at least contains wax.deceptively misdescriptive. or wax in insufficient quantity to justify use of the word. when applied to glass. the mark is not deceptive.T. Whether the misrepresentation will “materially affect the decision to purchase the goods. the way the seal is placed on the product indicates that Gold Seal represents the producer and Glass Wax describes the product. We therefore find ourselves in accord with the holding of the Patent Office that the mark. Geographic Terms: Primarily Geographically Descriptive or Deceptively Misdescriptive Marks • • BORACAY RUM for spirits and liquor PHILIPPINE AIRLINES for air transportation services Geographically Descriptive Marks 23 24 Ibid. When. as employed in commerce. Inc. that further.S. and is the very element upon which the customer reasonably relies in purchasing one product over another.P. In re Shapely. since Glass Wax would be generally understood as referring to a product which. as here.” SILKEASE for polyester women’s blouse = Deceptive because the advertising encouraged that the product was made from silk (i.”) The use of SILKEASE materially affected the buying decision. is distinctly false. the product contains an element which can only be known exactly by rigid scientific analysis. that it is sold in association with other wax products. Merely Descriptive or Deceptively Misdescriptive Marks 23 The evidence establishes: that the product contains either no wax. leaves a wax film. 72 (T. 231 U. deception is found when an essential and material element is misrepresented.B. In analyzing the relationship of the mark to the product and its impact upon the public. function.e hang tags stating “the look and feel of the finest silks with the easy care of polyester. and such element does not appear as determinative in leading customers to buy the product.24 3 part test of deceptiveness: (1) Is the term misdescriptive of the character. . For this reason it cannot be registered as a technical trade-mark. that customers might justifiably believe it does contain the element wax. are prospective purchasers likely to believe that the misdescription actually describes the goods? (3) If so. 1986). quality. that other glass and metal cleaners do contain wax and have an appearance not basically dissimilar to plaintiff's product.Q. composition or use of the goods? (2) If so. is deceptively misdescriptive.

Of course the word ‘Dutch’ is capable of being used as a geographical term. quality. if any. – 123. 448 (1953).P. C5. Geographically Deceptive Marks 123.1. either planned. A mark cannot be registered if it: ( c ) Consists of a name. portrait or signature identifying a particular living individual except by his written consent. it could be a descriptive term. 1969) . “Neither the words ‘Dutch’.A. This contemplates situations where a party applies a geographical designation to a particular product knowing that it will bestow upon the product an appearance of greater quality or salability not actually possessed by it with the intention thereby of inducing or misleading a particular class of consumers into purchasing this product.25 Arbitrary Usage of Geographic Terms DUTCH or DUTCH BOY for paint. quantity.S. or the name. A mark cannot be registered if it: (j) Consists exclusively of signs or of indications that may serve in trade to designate the kind. during the life of his widow.2d 195 (9th Cir.27 Materiality Test (1) Would the misdescription ‘move’ the purchaser to purchase the goods or services? If no. A mark cannot be registered if it: (g) Is likely to mislead the public.B.26 Intention Test to determine if a geographic term is Deceptive A mark consisting of or comprising a geographic term is not deceptive unless it involves a false assertion calculated. As the term cannot be appropriated as a trademark or a trade name. nor the words ‘Dutch Boy’ are used otherwise than in a fictitious.1. National Lead Co. Store. Here there is no likelihood that the use of the name ‘Dutch’ or ‘Dutch Boy’ in connection with the appellant’s goods would be understood by purchasers as representing that the goods or their constituent materials were produced or processed in Holland or that they are of the same distinctive kind or quality as those produced. (Section 123(1)(j) of the IP Code). 25 26 Ang Si Heng v. (Section 123(1)(g) of the IP Code). time or production of the goods or rendering of the services.Q. processed or used in that place. or portrait of a deceased President of the Philippines. characteristics or geographical origin of the goods or services. 92 Phil.1. v.T. If no. then misdescription can probably be classified as arbitrary or suggestive use of a mark. But mere geographical names are ordinarily regarded as common property.123. answer question 2. 160 U. and it is a general rule that the same cannot be appropriated as the subject of an exclusive trademark or trade name. or implied to deceive the public as to the geographical origin of the goods bearing the mark. Inc. except by written consent of the widow. If used to indicate a product made in Holland or by some Dutch process. quality. value. If yes. Marks that are Merely a Surname Section 123. no action for violation thereof can be maintained. Wellington Dept. 687 (T. geographical origin. The term Wellington is either a geographical name or the surname of a person. arbitrary and fanciful manner. (2) Whether the purchasers care that the products come from the geographic location named? If yes then deceptive. signature. particularly as to the nature. 1955). Registrability. 27 In Re Amerise. or other characteristics of the goods or services. intended purpose. descriptive. Wolfe. designed. 223 F.

so long as the name in question does. “identify” a particular living individual. shortened names. in fact.S. white shorts.T.In determining whether a particular living person bearing the ‘name’ would be associated with the mark as being used on the goods. 30 TrafFix Devices. If the design of an item is nonfunctional and has acquired secondary meaning. 604 F. Serial Nos. or (2) if the individual is publicly connected with the business in which the mark is being used.30 28 29 In re Richard M. A feature is also functional when it is essential to the use or purpose of the device or when it affects the cost of quality of the device. 77632406 (T. Hoefflin. “This statutory sub-section operates to bar the registration of marks containing not only full names. nicknames. 2d 200. the design may become a TM even if the item itself is functional. 10. A mark cannot be registered if it: (k) Consists of shapes that may be necessitated by technical factors or by the nature of the goods themselves or factors that affect their intrinsic value.B. particularly where the decorative aspects of the item are nonfunctional. 77632400.29 Existence of expired utility patents created strong evidentiary inference of design’s functionality. The fact that an item serves or performs a function does not mean that it may not at the same time be capable of indicating sponsorship or origin. Inc. Functionality Section 123. – 123. but also surnames.1. Registrability. . blue blouse and white starstudded vest and belt is an arbitrary design which makes the otherwise functional uniform trademarkable.. Dec..28 C6. but claims a trademark in the particular combination of colors and collocation of decorations that distinguish plaintiff’s uniform from those of other squads. A functional feature not entitled to trade dress protection is one the exclusive use of which would put competitors at a significant non-reputation-related disadvantage. v. 2010) Dallas Cowboys Cheerleaders Inc v.A. 1255 (U. Plaintiff does not claim a trademark in all clothing designed and fitted to allow free movement while performing cheerleading routines. Ct. Marketing Displays. 77632391. etc. 2001). we must consider (1) if the person is so well known that the public would reasonably assume the connection. In the instant case the combination of white boots. Inc. 121 S. Pussycat Cinema Ltd.

June 27.A. removal of non-used mark from the Register). The certificate of registration merely constitutes prima facie evidence that the registrant is the owner of the registered mark. Acquisition of Rights through Use Possible to acquire rights in trademarks without registration System of registration is provided which offers certain advantages in respect of trademark protection. Borrowing from Shangri-La case: Trademark is a creation of use. to make certain remedies available to the owner of the TM). 2. Based on the belief that an individual or enterprise may have an interest in obtaining the registration of a trademark without immediately starting to use it. G. 3. Registration does not confer upon the registrant an absolute right to the registered TM. It requires. R. . Permits the acquisition of an exclusive right to a TM without any use of the latter and without any declaration of intent to use. 2006. 158589. This system relies on the use of a TM. Actual use is a pre-requisite to exclusive ownership. v.e. as what happened here when petitioners admitted not doing business in Philippines. The advantages refer to legal security and evidentiary matters. Registration is only an administrative confirmation of the existence of the right of ownership of the mark but does not perfect such right. No.e. System typically provides for sanctions if the TM is not used after the expiration of certain time limits (i. Acquisition of Rights through Registration • • • • Majority of jurisdictions. Requires that application for registration be accompanied by a declaration from the TM owner certifying that he intends to use the TM. Acquisition of Trademark Rights A. The registration of a TM cannot be deemed conclusive as to the actual use of such TM. Petitioners cannot dispense with the element of actual use.31 B. Fortune Tobacco Company. to render the TM incontestable after the expiration of a certain period of time. Evidence of non-usage of the TM rebuts the presumption of TM ownership. No. 3 Different Systems based on Use Requirements 1. 31 Philip Morris. Inc. Most of the countries that provide acquisition of rights through registration nevertheless require that a registered TM be used after a certain period of time.R. Actual use is the perfecting ingredient. 166 mandates actual use. Approach is based on legal security and simplicity. that the TM be used within certain time limits. however. to facilitate proof. Their being nationals of member-countries of the Paris Union does not alter the legal situation.3. Registration only has a reinforcing effect (i. TM must be in actual use in order to qualify for registration.

more particularly Republic Act No. are hereby repealed. 49. and Articles 188 and 189 of the Revised Penal Code. including Presidential Decree No. All Acts and parts of Acts inconsistent herewith. – 239. (Sec. as amended. R A. 166. (Section 239. 165. . 285. Repeals. Presidential Decree No.1 of the Intellectual Property Code of the Philippines). as amended.1. 166a)(Section 122 of the Intellectual Property Code of the Philippines). Republic Act No. – The rights in a mark shall be acquired through registration made validly in accordance with the provisions of this law.How Marks are Acquired. No. as amended. 2-A.

(k). including knowledge in the Philippines which has been obtained as a result of the promotion of the mark. (j) Consists exclusively of signs or of indications that may serve in trade to designate the kind. . (c) Consists of a name.1. (i) Consists exclusively of signs or of indications that have become customary or usual to designate the goods or services in everyday language or in bona fide and established trade practice. deceptive or scandalous matter. or any simulation thereof. rather than of the public at large.2. or constitutes a translation of a mark considered well-known in accordance with the preceding paragraph. quality. which is registered in the Philippines with respect to goods or services which are not similar to those with respect to which registration is applied for: Provided. unless defined by a given form. if any. except by written consent of the widow. signature. portrait or signature identifying a particular living individual except by his written consent. (e) Is identical with. or constitutes a translation of a mark which is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines. whether or not it is registered here. Bars to registration Section 123. (h) Consists exclusively of signs that are generic for the goods or services that they seek to identify. The Office may accept as prima facie evidence that the mark has become distinctive. As regards signs or devices mentioned in paragraphs (j). in respect of: (i) The same goods or services. or national symbols. or (iii) If it nearly resembles such a mark as to be likely to deceive or cause confusion. or (ii) Closely related goods or services. as used in connection with the applicant’s goods or services in commerce. and the owner of the registered mark: Provided further. or confusingly similar to. Registrability. A mark cannot be registered if it: (a) Consists of immoral. Selection and Clearance of a Mark B. – 123. or portrait of a deceased President of the Philippines. value. or matter which may disparage or falsely suggest a connection with persons. quality. and used for identical or similar goods or services: Provided. (l) Consists of color alone. account shall be taken of the knowledge of the relevant sector of the public. (g) Is likely to mislead the public. or (m) Is contrary to public order or morality. That in determining whether a mark is well-known. or the name. or bring them into contempt or disrepute. (k) Consists of shapes that may be necessitated by technical factors or by the nature of the goods themselves or factors that affect their intrinsic value. intended purpose. 123. Registration of Trademarks A. during the life of his widow. nothing shall prevent the registration of any such sign or device which has become distinctive in relation to the goods for which registration is requested as a result of the use that have been made of it in commerce in the Philippines. particularly as to the nature. geographical origin. (b) Consists of the flag or coat of arms or other insignia of the Philippines or any of its political subdivisions. and (l). as being already the mark of a person other than the applicant for registration. characteristics or geographical origin of the goods or services. or other characteristics of the goods or services.4. institutions. beliefs. That the interests of the owner of the registered mark are likely to be damaged by such use. (f) Is identical with. or of any foreign nation. proof of substantially exclusive and continuous use thereof by the applicant in commerce in the Philippines for five (5) years before the date on which the claim of distinctiveness is made. That use of the mark in relation to those goods or services would indicate a connection between those goods or services. (d) Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date. time or production of the goods or rendering of the services. living or dead. or confusingly similar to. quantity.

1 SCRA 1.4. L-14086. words and devices. It also gives better understanding of the quality of products. Keeboc. If use of a mark by a person is controlled by the registrant or applicant with respect to the nature and quality of the goods or services. such use shall inure to the benefit of the registrant or applicant. Such actual sale of goods in the local market establishes trademark use… 33 152.. Modern trade and Commerce demands that depredations on legitimate trademarks of nonnationals should not be countenanced.It will differentiate and exclusively protect your goods from another product. Preparing the Application D1.The rights secured by TM registration is stronger than copyright and design patents because it may be renewed indefinitely. 1961. said trademarks are no longer available for use and registration. colors. The use of a mark by a company related with the registrant or applicant shall inure to the latter’s benefit. January 8. Universal Rubber Products. 3 dimensional marks A “3D Mark” is a three-dimensional sign. Inc. and such use shall not affect the validity of such mark or of its registration: Provided. indiscriminately sold by jobbers. Basic Requirements of the Application i. or its container or packaging. Converse Rubber Corporation v.32 Use in commerce.C. should entitle the owner of the trade mark to the right to use the same to the exclusion of the others. or a combination of three-dimensional signs. It is a matter of public knowledge that all brands of goods filter into the market. . ii. (n) Use should be in the Philippines D. dealers and merchants not necessarily with the knowledge or consent of the manufacturer. . Why register a 3D Mark? . L-27906.A unique shape is not only attractive to consumers. Nature of Use necessary to support a registration When it is satisfactorily established that the trade marks sought to be registered are registered in a foreign country and the same have been used on goods continuously imported into the Philippines long before the applicant filed his application therefor. 1987. It may be the shape of a product. January 20. The lawful entry into the Philippines of goods bearing the trade mark for a period of years. 147 SCRA 154. . v. Sending samples not enough to constitute use contemplated by law. That such mark is not used in such manner as to deceive the public. 3D marks are not registrable if they: 32 33 Asari Yoko Ltd. Contact Information of the Applicant Mark i.

or of its composition. Ong Ai Gui alias Tan Ai Gui v. 1955 MARK: "20th Century Nylon Shirts Factory" Disclaimer: The words “shirts factory" and “Nylon“  the trade-name may be registered.P. or characteristics. they also have the right to describe them properly and to use any appropriate to himself exclusively any word or expression. it may be legally recognized as an indication of source.6235 . I. nor such shall disclaimer prejudice or affect the applicant's or owner's right on another application of later date if the disclaimed matter became distinctive of the applicant's or owner's goods. 9 (C. Not distinctive enough from the common shape of the goods. G. . Colors as Marks A single color of a product is capable of being registered and protected as a TM where that color has attained ‘secondary meaning’. ingredients.R. The reason for this is that inasmuch as all persons have an equal right to produce and vend similar articles. ii. Translation of Marks v. Transliteration of Marks vi. L. De jure functionality would indicate the opposite – such design may not be protected as a trademark34 iii. result merely from the nature of the goods themselves. iii.C. characteristics.  A word or a combination of words which is merely descriptive of an article of trade. 1982). 213 U. No. or a feature of either is directed to performance of a function. March 28.2d 1332. iv. juris publici. its qualities. and thus limit other persons in the use of language appropriate to the description of their 34 In re Morton-Norwich Products.. business or services. of Philippines Patent Office.i.P. ii. Disclaimer The Office may allow or require the applicant to disclaim an unregistrable component of an otherwise registrable mark but such disclaimer shall not prejudice or affect the applicant's or owner's rights then existing or thereafter arising in the disclaimed matter. 671 F. Stamped or marked container of goods De facto functional is the use of “functional” in the lay sense. E. incapable of appropriation by any single individual to the exclusion of others. Inc. or qualities. Dir.S. consist of shapes necessary to obtain a technical result. cannot be appropriated and protected as a trademark to the exclusion of its use by others. a container. Rejected ‘shade confusion’ and ‘color depletion’ arguments of Jacobson. Du Pont De Nemours and Co. properly descriptive of the article.A. indicating that although the design of a product.Q. but applicant-appellant may not be entitled to the exclusive use of the terms "shirts factory" and "nylon" as against any other who may subsequently use the said terms.

" and "Melted" are disclaimed apart from the mark as shown." "Vacuum. it may properly become the subject of a trademark by combination with another word or term which is nondescriptive. Jur. they cannot be appropriated from general use and become the exclusive property of anyone. i. Jur.. That is all the disclaimer means and nothing else is to be inferred from it.2d 978 (1965) MARK: “Double oval border of a thick outer line and a thin inner line. There is no registrable "portion" or "element. ." only a registrable whole consisting of a distinctive arrangement of words and typography.manufactures. 553.“ “As to the disclaimer. the right to the use of such language being common to all." It disclaims only any exclusive right in those words per se. (52 Am. no claim to any exclusive right to use them is to be implied from the fact of registration. appellee's trademark rights and its right to register reside entirely in the particular design arrangement of these three descriptive words. although no exclusive right to then descriptive word or term id created . separately. This rule excluding descriptive terms has also been held to apply to trade-names. . (52 Am. As to whether words employed fall within this prohibition. as the board said. in legal effect. and as they are commonly used by those who understand their meaning.. xxx that "consumable vacuum melted" is the descriptive name of the process by which the steels named in the application are made.” Schwarzkopf v.2d 1009 (1968) MARK: “CVM" Disclaimer: The words "Consumable. to exclusive appropriation as such. Vasco Metals Corp. this does not have the effect of removing from the mark sought to be registered. e. Assuming. The use of a generic term in a trade-name is always conditional. the oval having its long axis verticle. the words "CHILDREN SHAMPOO. John H.’ . .) United States Steel Corp. 340 F. “The registered mark must be viewed as a whole. or from our consideration. v. they are reasonably indicative and descriptive of the thing intended. A combination of marks or words may constitute a valid trademark or (in the case of words) a tradename even though some of the constituent portions thereof would not be subject.) . underneath which and below the center of the oval are the words CHILDREN SHAMPOO” Disclaimer: "Applicant disclaims the words `Children Shampoo' separate and apart from the mark as shown. If they are thus descriptive. Inc. Thus. but whether in themselves. subject to the limitation that the registrant does not acquire the exclusive right to the descriptive or generic term or word. There is no ‘undisclaimed portion’ of the mark. There is simply a unitary mark made of words in a special arrangement or design and a disclaimer which says.. and not arbitrary. Inside the oval at the top is the silhouette of a girl's head facing to the left. . 394 F. Breck. that since the three words incorporated in the mark are descriptive.  The claim that a combination of words may be registered as a trade-name is no justification for not applying the rules or principles hereinabove mentioned. arguendo. Appellant seems to recognize this in the following passage in its brief: ‘It is of course well established that disclaimed material forming part of a trademark cannot be ignored in determining whether the marks are confusingly similar. although a word may be descriptive and not subject to exclusive use as a trademark. 542-543. . it is said that the true test is not whether they are exhaustively descriptive of the article designated.

(Rule 800[b]. Examination D3. Allowance and Issuance D4. (2) registrant’s ownership of the mark. (2) the use of the mark on those goods or services by another would indicate a connection between those goods or services and the owner of the registered mark. and (3) the interests of the owner of the registered mark are likely to be damaged by such use. Publication D5. a likelihood of confusion will be presumed. ii. Specification of goods and services Claim for Convention Priority D2. Opposition Proceedings D6. iv. i. (Rule 800[a]. Exclusive rights and exceptions Rights Conferred To prevent all third parties without the owner’s consent from using in the course of trade identical or similar signs or containers for goods or services which are identical or similar to those in respect of which the mark is registered. Term of Protection . Registration Certificate of Registration is prima facie evidence of: (1) validity of registration. Trademark Rules). In case of the use of an identical sign for identical goods or services. Trademark Rules) Exception: Exclusive right will extend to goods or services which are not similar to those specified in the certificate where: (1) the mark is well-known. where such use would result in a likelihood of confusion. (3) registrant’s exclusive right to use the mark in connection with the goods and services and those that are related thereto specified in the certificate.iii.

the applicant or registrant must file a declaration of actual use of the mark with evidence to that effect.N. General Guidelines B3. Proper Use Manuals B4. Within 1 year from the 5th anniversary of the date of registration of the mark. 272 F. United Drug Co.. Within 3 years from the filing of the application. RA 8293). v. 124. General consuming public did not understand by the word Aspirin anything more than a kind of drug. . Graphics Standards Manual B5. B. then it makes no difference whatever efforts the plaintiff has made to educate the consumer. using the word to denote a kind of product. TM Owner allowed manufacturing chemists to sell drug using the word Aspirin with some indication of the tablet maker but not of Bayer. (Rule 801. Trademark Rules). (Sec. Identification and Marking B2.2. Maintenance of Trademark Rights A.5. 505 (S.D. Proper Trademark Usage B1. Proper Use Advertising • • • • • Aspirin Zipper Brassiere Escalator Elevator What do the buyers understand by the word Aspirin? If they understand by it only the kind of goods sold.Y. the registrant shall file a declaration of actual use and evidence to that effect or show valid reasons based on the existence of obstacles to such use. Term of protection and renewal • • 10 years from the date of registration It can be renewed for another 10 years. Declaration of Actual Use 1. 2. TM Owner’s own use: “used the word ‘Aspirin’ as though it was a general term” The Label read ‘Bayer –Tablets of Aspirin.35 What does cellophane mean to the buying public? Did it mean transparent glycerinated cellulose hydrate regenerated from viscose and nothing more? Did it mean such an article of commerce manufactured by or originating from DuPont Cellophane? 35 Bayer Co. 1921).

Dictionary of Tariff Information of the United States Tariff Commission. 321 F. 230.2d 75 (2d Cir. 85 F. 1963). No other descriptive word was adopted.Supp. TM Application for DuPont Cellophane in an oval frame.” King-Seely Thermos argues that Aspirin and Cellophane cases were misapplied. Articles in Literary Digest. the equitable principles of laches. Strength of a mark D. 695 F. 1936). The Articles of Incorporation of DuPont Cellophane Company. and acquiescence where applicable. Termination and abandonment Equitable Principles to Govern Proceedings: In all inter partes proceedings in the Office under this Act. v.” The patent application of TM Owner’s predecessor in interest used the word cellophane in a generic sense. Waxed Products Co. Subsequent advertising materials and trade labels of DuPont. “The test is not what is available as an alternative to the public. (Sec. Advertising materials of TM Owner’s predecessor’s interest used the word as descriptive of the cellulose product repeatedly. used cellophane in a generic sense. 38 Quality Inns International v.2d 577 (2d Cir. Abandonment of a mark by the owner 3. External Policing Permitting the use by third parties of infringing marks can be relevant to 3 specific issues in a trademark case. 198 (D. The course of conduct of the complainant and its predecessors tended to make cellophane a generic term descriptive of the product rather than of its origin. may be considered and applied. Scientific American and other trade journals.. the fact is that the word ‘thermos’ had entered the public domain beyond recall.TM Owner’s predecessor in interest employed the word cellophane to describe the product itself.36 “Whether the appropriation of the public was due to highly successful educational and advertising campaigns or to lack of diligence in policing or not is of no consequence. DuPont President: “I considered that Cellophane was the name which he gave to the product he invented.Md. Trademark Policing C1. 1988). RA 8293)38 36 37 Dupont Cellophane Co. Estoppel by acquiescence 2. but what the public’s understanding is of the word that is uses.”37 C. Public Announcement of DuPont announcing that it has acquired the exclusive sales and manufacturing rights of the product known as Cellophane. King-Seely Thermos Co. King-Seely contends that in those cases there was no suitable generic name for use by the general public. estoppel. Trade journals. 1. Internal Policing C2. . v. Inc. McDonald’s Corp.. Aladdin Industries.

Inc. “There is a presumption of neglect already amounting to ‘abandonment’ of a right after a party had remained silent for quite a long time during which petitioner had been openly using the trademark in question. including a provision on equitable principle to protect only the vigilant.A.3 fewer words . RA 8293). L-54158. 41 Pro-Cuts v. shall not be a ground for cancellation or removal of the mark and shall not diminish the protection granted to the mark. not those guilty of laches.2..The Court held that waiting for more than 7 years before asserting a right to a trademark was an unreasonable length of time. courts generally will not find abandonment. which does not alter its distinctive character. Trademark: THIRST AID “First Aid for your Thirst” Dropping “First Aid for your Thirst” is a minor change that does not alter the basic overall commercial impression created on buyers. Court of Appeals. is exceedingly strict: The marks must create the same continuing commercial impression.” “The standard for “tacking”. Sands. November 19. however. the fact that two marks may be confusingly similar does not necessarily mean that they are legal equivalents. Schilz-Price Enters.” 41 Constructive use theory known as “tacking” “…ability of a trademark owner to claim priority in a mark based on the first use date of a similar. Such inaction on the part of respondent entitles petitioner to the equitable principle of laches.T.narrow commercial impression 39 40 Pagasa Industrial Corp. or are indistinguishable from one another. It is most unfair if at any time. 1992). 152. can ask for the cancellation of a similar or the same trademark. the registration of which was never opposed by the prior registrant. but technically distinct mark .”40 “A party seeking to ‘tack’ its use of an earlier mark onto its use of a later mark for the same goods or services may do so only if the earlier and later marks are legal equivalents.Q. 1993). It will not constitute abandonment. Quaker Oats Co..B.. 978 F. v.com” . 27 U.drops the possessive . Thus. and the later mark should not materially differ from or alter the character of the mark attempted to be tacked.com . No. v.” The standard is considerably higher than the standard for likelihood of confusion.2d 1224 (T. a previous registrant. 1982. (Sec.but only in the exceptionally narrow instance where the previously used mark is the ‘legal equivalent of the mark in question or indistinguishable therefrom’ such that consumers consider both as the same mark.S. .2d 947 (7th Cir. The Movie Buff’s Movie Store Moviebuff.omits the space . Taylor & Wood Co. 118 SCRA 526.”39 Changes in Usage of Mark The use of a mark in a form different from the form in which it is registered.P. even after a lapse of more than 5 years.” “It is precisely the intention of the law. “So long as the owner continues use of the ‘key element’ of the registered mark.adds “.

A.” (Sec. . non-extendible. 134. s.. No. 3.A. • public interest is involved. 4. Verification and Certification of Non-Forum Shopping 3. 79. and petitions for compulsory licensing of patents. Position Paper or Draft Decision within a non-extendible period of 10 days from termination of preliminary conference or receipt of the order * optional 42 Operators. authenticated and notarized 7. marked consecutively 6. Statement of Grounds and Facts 5. R. Verified Notice Opposition Filed within 30 days from publication of mark for opposition with extension but not to exceed 120 days from publication 2. . cancellation of patents. Director of Patents. • all questions as to whether or not the law is satisfied may be considered even though not specifically raised by either of the parties. . non-extendible. 8293 or the IP Code) Nature of Proceedings42 • not an ordinary litigious controversy between private parties.1. v. Standing “Any person who believes that he would be damaged by the registration of a mark may . English translation (if in foreign languages) (Regulations on Inter Partes Proceedings. R. If foreign document. Attachments of evidence in original or certified copies of the original. Rejoinder * Filing in 10 days from receipt of Reply. 5. 8293) Requisites: 1. A. file with the Office an opposition to the application. Reply * Filing in 10 days from receipt of Answer. In writing 2. Inc. Answer Filed within 30 days from receipt of Notice to Answer with extension but not to exceed 120 days. utility models. 15 SCRA 147 (1965). of 2005) Pleadings Filed: 1. as amended by Office Order No.The BLA shall have the following functions: Hear and decide opposition to the application for registration of marks. Inter Partes Proceedings The Bureau of Legal Affairs.6. Opposition A1. and industrial designs. (Sec. cancellation of trademarks. Board Resolution or Secretary’s Certificate 4. subject to the provisions of Section 64.10.

Richie: The disparagement of his alleged belief in a loving and nurturing relationship between husband and wife. If mediation is successful.Q.P.stems from a policy of preventing “mere intermeddlers” who do not raise a real controversy from bringing oppositions or cancellations proceedings. Opposer alleges that others also share the same belief of harm from the proposed mark. .legitimate personal interest . 608 (C. s. Real Interest Test .Rules of Procedure for IPO Mediation Proceedings: (Office Order No. must be an immutable characteristic or trait 2.must have a reasonable basis in fact Ways to show reasonableness of belief: 1. DITTB. and (2) reasonable basis for his belief of damage.A 1971).P. 440 F. technology transfer and terms of license disputes Nature : mandatory When : upon filing of Answer Effect : Failure of opposer or petitioner to appear is a ground for dismissal of the case. 169 U. 43 Tanner’s Council of America. IPV. v. Standing of a trade association43 Tanner’s Council collects dues from its members based on the semi-annual production of each member. parties are called to conference for the following purposes: (1) clarification of issues (2) comparison of documents (3) termination of the proceedings with requirement to submit position papers or draft decisions..more than a subjective belief . Opposer alleges that he possesses a trait or characteristic that is clearly and directly implicated in the proposed mark. case is submitted for decision. Gary Industries.S. waiver of right to submit position paper. Inc.2d 1404. submit Compromise Agreement for approval of BLA.direct and personal stake in the outcome of the opposition.C. Reasonable Belief of Damage . 154. of 2010) Coverage: All IPC. The potential injury to Mr. If failed. or in the case of respondent-applicant. US Jurisprudence created 2 requirements in order to have standing: (1) real interest in the proceedings. . Then. return case to BLA for further proceedings. Preliminary Conference: If Mediation fails. A member’s loss of sales decreases the dues received by appellant. Inc. if desired.

2d 1752 (Fed. but also surnames. 44 45 Institut Nat’l Des Appellations D’Origine v. 1992) Estate of Biro v.. 47 In re Richard M. 45 An Opposer or a Cancellation Petitioner must show:46 (1) Standing. it has standing to oppose…” 3 part test for associational standing:44 (1) its members would otherwise have standing to sue in their own right.. and (2) a statutory ground which negates the applicant or registered owner’s entitlement to registration.S. so long as the name in question does.2d 1190 (Fed.Tanner’s Council justifiable belief that it would be damaged by the registration of the mark ACCOHIDE is a real interest and more than the interest of a mere intermeddler. we must consider (1) if the person is so well known that the public would reasonably assume the connection. The allegation of economic damage. “This statutory sub-section operates to bar the registration of marks containing not only full names.1 IP Code Absolute Proscription 1. AGB Corp. scandalous. or (2) if the individual is publicly connected with the business in which the mark is being used. Vinters Int’l Co. the plaintiff's personality or "persona. “identify” a particular living individual. 77632391. 958 F.2d 1574. 2010) . and (3) neither the claim asserted nor the relief requested requires the participation of individual members in the lawsuit.Q.Q.P.3d 1377. shortened names. 18 U. a plaintiff has standing by virtue of who the plaintiff is. In determining whether a particular living person bearing the ‘name’ would be associated with the mark as being used on the goods. 1991).. Bic Corp. This function would reasonably include routine participation in trademark registration proceedings affecting appellations of origin. 10. 47 U. 77632406 (T. Grounds Sec. Hoefflin. does not constitute a ground to preclude registration. Cir. Thus. that is.B. does not rise or fall on the basis of a plaintiff's proprietary rights in a term.T.. Dec.Q. 46 Young v. etc. deceptive.P. national symbols [ § 123.T.S. nicknames. in the context of a claim. in fact. 77632400. 1998). “… where the association has established a pecuniary interest as here. 123.47 A2. INAO meets the second prong of the test for associational standing. 152 F. (2) the interests it seeks to protect are germane to the organization’s purpose. 1 (a)].B.2d 1382 ( T.A.P.A. Serial Nos.” Standing. “… one of INAO’s purposes is to oppose the registration of trademarks in the United States if it deems it necessary to protect an appellation of origin. Immoral. U. while relevant to Young’s standing.S. Cir. rather." We believe that the pleadings establish opposer's personal interest in this case because applicant is attempting to register the surname of Ladislao Jose Biro who is credited with inventions regarding the ball point pen.

No. coat of arms [ § 123. 1341 There is a presumption of neglect already amounting to “abandonment” of a right after a party had remained silent for quite a long time during which petitioner Pagasa Industrial Corporation had been openly using the trademark in question. Cancellation of Registration Sec. the disuse must be permanent and not ephemeral. (N. 2nd Ed. of the Phils. 236. 6. Contrary to public order or morality [ § 123. 151 IP Code A petition to cancel the registration of a mark may be filed with the Bureau of Legal Affairs by any person who believes that he will be damaged by the registration of the mark WHEN TO FILE PETITION TO CANCEL A MARK: 1.2. 5. There must be thorough discontinuance of any trademark use of the mark in question (Callman. Within 5 years from the date of registration of the mark 2.. Such inaction on the part of the respondent entitles the petitioner to the equitable principle of laches. 4. portrait or signature of a living individual except his written consent. 48 Sec. Shapes necessitated by technical factors or nature of goods [ § 123. 1 (k)]. At any time if:  Mark becomes the generic  Mark has been abandoned  Registration was obtained fraudulently or contrary to the provisions of the Code  Mark is being used by. it must be intentional and voluntary. Flag. L-54158. Unfair Competition and Trademark.2 The Court or administrative agency vested with the 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. and not involuntary or even compulsory. 4. Customary or usual signs or indications [ § 123. 19 November 1982 . 1 (m)]. 5. Sec.1 [d]) 3. 1 (g)]. 2. or the deceased Pres. G. B. prior registration [ § 123. Descriptive marks [ § 123.B. except with widow’s consent [ § 123. 3. name. Court of Appeals. 151. 1 (c)]. or with the permission of the the registrant to misrepresent the source of goods or services  Registered owner fails to use mark without legitimate reason for uninterrupted period of 3 years or more To work an abandonment. 7. 1 (b)]. Generic [ § 123. Well-known marks [ § 123. 48 Pagasa Industrial Corporation v.R. 1 (h)]. IP Code in relation to 123. 1 (e) & (f)]. 1 (i)]. Relative Proscriptions 1. 1 (d)]. Color marks [ § 123. Identical marks or confusingly similar marks. 1 (l)].

but nonetheless ordered the BPTTT to suspend further proceedings in said inter partes case to await the final outcome of the main case. Sec. 169504. title to trademark is indispensable to a valid cause of action and such title is shown by its certificate of registration. we are bound to examine how one case would affect the other.R.” ruled in the affirmative. No. Even prior to the cancellation of the registration of the disputed trademarks. “x x x the cancellation of registration of a trademark has the effect of depriving the registrant of protection from infringement from the moment judgment or order of cancellation has become final. With its certificate of registration over the disputed trademark effectively cancelled with finality. With its certificates of registration over the disputed trademarks effectively cancelled with finality.) 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. SUPERIOR’s case for trademark infringement lost its legal basis and no longer presented a valid cause of action. 3145 before the BPTTT. There can be no infringement committed by KUNNAN who was adjudged with finality to be the rightful owner of the disputed trademarks in the Registration Cancellation case.“whether.” “Because the Registration Cancellation Case and the present case involve the same parties. SUPERIOR’s case for trademark infringement lost its legal basis and no longer presented a valid cause of action. 151. 03 March 2010 SUPERIOR is left without any cause of action for trademark infringement since the cancellation of registration of a trademark deprived it of protection from infringement from the moment the judgment or order of cancellation became final . . Kunnan Enterprises Ltd.” Effect of Cancellation of Registration Case: Superior Commercial Enterprises v. title to the trademark is indispensable to a valid cause of action and such title is shown by its certificate of registration. litigating with respect to and disputing the same trademarks. in trademark infringement. To be sure. G. the final judgment in the Registration Cancellation Case is nevertheless conclusive on the particular facts and issues that are determinative of the present case.” “in a trademark infringement. despite the petitioner’s institution of Inter partes Case No. herein respondent DGCI “can file a subsequent action for infringement with the regular courts of justice in connection with the same registered mark.. SUPERIOR – as a mere distributor and not the owner cannot assert any protection from trademark infringement as it had no right in the first place to the registration of the mark. In the present case.2(cont. even if the causes of action of the Registration Cancellation Case (the cancellation of trademark registration) differs from that of the present case (the improper or unauthorized use of trademarks).

At any time . or with the permission of the the registrant to misrepresent the source of goods or services o Registered owner fails to use mark without legitimate reason for uninterrupted period of 3 years or more i. Within (5) years from date of registration ii. Grounds      Mark becomes the generic Mark has been abandoned Registration was obtained fraudulently or contrary to the provisions of the Code Mark is being used by. Standing B2.B1.

jurisprudence has developed two kinds of tests – the Dominancy Test applied in Asia Brewery. counterfeit. No. copy or colorable imitation to labels. The Hon. 22. Infringement Section 155.” “In determining whether colorable imitation exists. particularly in ascertaining whether one trademark is confusingly similar to or is a colorable imitation of another. v. or 155. Inc. counterfeit. and confusion and deception is likely to result. without the consent of the owner of the registered mark: 155. 8293 “the trademark being infringed is registered in the Intellectual Property Office.A. is not conclusive. infringement takes place.A. (Sec. Asia Brewery Dominant feature of ABI’s trademark is the name: BEER PALE PILSEN.2. 103543. packages.7. receptacles or advertisements intended to be used in commerce upon or in connection with the sale. x x x” 49 Asia Brewery. shall be liable in a civil action for infringement by the registrant for the remedies hereinafter set forth: Provided. prints.1. copy. – Any person who shall. Remedies. Court of Appeals and other cases and the Holistic Test developed in Del Monte Corporation v. G. offering for sale. or to deceive. Court of Appeals and San Miguel Corporation.” 49 San Miguel Dominant feature is the name of the product: SAN MIGUEL PALE PILSEN. or to cause mistake. 1993. copy or colorably imitate a registered mark or a dominant feature thereof and apply such reproduction. or to deceive. under R. Inc. distribution. R. larger than any of the letters found in the SMC label. .A. counterfeit.1 or this subsection are committed regardless of whether there is actual sale of goods or services using the infringing material. no set of rules can be deduced. with the word “Beer” written in large amber letters. form and color. advertising of any goods or services including other preparatory steps necessary to carry out the sale of any goods or services on or in connection with which such use is likely to cause confusion. Court of Appeals and its proponent cases. 166 trademark actually used in commerce in the Philippines and registered in the principal register of the Philippine Patent Office. vs. while relevant. or to cause mistake. Use in commerce any reproduction. or advertising of goods or services on or in connection with which such use is likely to cause confusion. July 5. offering for sale. wrappers. signs. Infringement.” trademark being infringed under R.R. “In the history of trademark cases in the Philippines. Protection of Trademarks A. Similarity in size. written in white Gothic letters with elaborate serifs at the beginning and end of the letters “S” and “M” on an amber background across the upper portion of the rectangular design. If the competing trademark contains the main or essential or dominant features of another. That the infringement takes place at the moment any of the acts stated in Subsection 155. distribution. Reproduce. or colorable imitation of a registered mark or the same container or a dominant feature thereof in connection with the sale. No 166a) “Infringement of a trademark is determined by the test of dominancy.

San Francisco Coffee & Roastery. Polaroid Corp. BPTTT and HD Lee Company GR 100098 53 McDonalds Corporation v. the quality of defendant’s product or service.S.“Clearly.). . The essential element of infringement is colorable imitation. against any unlawful act including any subsequent use of the trade name by a third party.R. the proximity of the products or services. 3. which took effect on 1 January 1998. Types of Confusion:53 (1) Confusion of goods “in which event the ordinarily prudent purchaser would be induced to purchase one product in the belief that he was purchasing the other. or such resemblance of the infringing mark to the original as to deceive an ordinary purchaser giving such attention as a purchaser usually gives. whether as a trade name or a trademark likely to mislead the public. No. the sophistication of the buyers. 2. 8. 287 F. 52 Emerald Garment Manufacturing Corp v. Section 165.. 6. 368 U. the defendant’s product is such as might reasonably be assumed to originate with the plaintiff. the likelihood that plaintiff will bridge the gap.R. v. 820 (1961). Big Mak Burger.2 of RA 8293 categorically states that trade names shall be protected. 143993 (2004). 2d 492 (2d Cir. a trade name need not be registered with the IPO before an infringement suit may be filed by its owner against the owner of an infringing trademark. in fact. No. 5. has dispensed with the registration requirement. cert. evidence of actual confusion. and to cause him to purchase the one supposing it to be the other. denied. does not exist. G. even prior to or without registration with the IPO.” “…RA 8293. defendant’s good faith in adopting the mark. 169504 (2010). Confusing Similarity 8 Factors for evaluating likelihood of confusion between non-identical goods or services:51 1. 50 51 Coffee Partners v. The degree of similarity between plaintiff’s and defendant’s marks. (2) Confusion of business: “Here though the goods of the parties are different. CA. 4. The strength of the plaintiff’s mark. Likelihood of Confusion Holistic Test the entirety of the marks in question must be considered in determining confusing similarity. This term has been defined as "such a close or ingenious imitation as to be calculated to deceive ordinary purchasers. G. A2. 7. and the public would then be deceived either into the belief that there is some connection between the plaintiff and defendant which." 52 Dominancy Test similarity of the prevalent features of the competing trademarks which might cause confusion or deception and thus constitutes infringement.”50 A1. All that is required is that the trade name is previously used in trade or commerce in the Philippines. Polarad Electronics Corp.

78325.” 56 “A trade name is any individual name or surname. If the buyer is deceived. Martin T. CA. Dy. the totality or holistic test is contrary to the elementary postulate of the law on trademarks and unfair competition that confusing similarity is to be determined on the basis of visual. and at different price levels depending on variations of the products for specific segments of the market. Del Monte Corp. in different segments of the market.” “The test of dominancy is now explicitly incorporated into law in Section 155. it is attributable to the marks as a totality. GR No. aural connotative comparisons and overall impressions engendered by the marks in controversy as they are encountered in the realities of the marketplace. 172276 (2010).R. industrialists. vocations or occupations.” “we must consider the mark as a whole and not as dissected. (3) whether the article is bought for immediate consumption. training and education of the usual purchaser. 25 January 1990. merchants and others to identify their businesses. The factors considered by the court were:55 (1) age. 56 Societe Des Produits Nestle v. aural. As the trade name refers to the business and its goodwill… the trademark refers to the goods. “Moreover.“The registered trademark owner may use his mark on the same or similar products. . The Court has recognized that the registered trademark owner enjoys protection in product and market areas that are the normal potential expansion of his business. G. (2) the nature and cost of the article.” “The totality or holistic test is contrary to the elementary postulate of the law on trademarks and unfair competition that confusing similarity is to be determined on the basis of visual. buying under the normally prevalent conditions in trade and giving the attention such purchasers usually give in buying that class of goods is the touchstone. The totality or holistic 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 connotative comparisons and overall impressions between two trademarks. firm name. not usually to any part of it.” 54 “The question is not whether the two articles are distinguishable by their label when set side by side but whether the general confusion made by the article upon the eye of the casual purchaser who is unsuspicious and off his guard is such as to likely result in his confounding it with the original.1 of the Intellectual Property Code which defines infringement as the ‘colorable imitation of a registered mark x x x or a dominant feature thereof. No. and (4) the conditions under which it is usually purchased. … the general impression of the ordinary purchaser. v.” 54 55 Ibid. connotative comparisons and overall impressions engendered by the marks in controversy as they are encountered in the realities of the marketplace. device or word used by manufacturers.

(e) the extent to which the mark has been registered in the world. to refuse or to cancel the registration. or a translation. (c) the degree of the inherent or acquired distinction of the mark. of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. (i) the commercial value attributed to the mark in the world. G. arguendo. Rules and Regulations on Trademarks. (k) the outcome of litigations dealing with the issue of whether the mark is a well-known mark. INC. GALLO WINERY and THE ANDRESONS GROUP. MIGHTY CORPORATION and LA CAMPANA FABRICA DE TABACO. (g) the extent to which the mark has been used in the world. vs. at fairs or exhibitions. E. the likelihood of confusion would still subsists.. No. Universal Rubber Products Industries. By appropriating the word “CONVERSE. of the goods and/or services to which the mark applies. and to prohibit the use. that the trademark sought to be registered by respondent is distinctively dissimilar from those of the petitioner. 154342 (2004). These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well–known mark or an imitation liable to create confusion therewith. Service Marks. 147 SCRA 154 (8 January 1987). extent and geographical area of any promotion of the mark. the duration. Criteria for Determining whether a Mark is Well-known In determining whether a mark is well-known. in the Philippines and in other countries. (d) the quality-image or reputation acquired by the mark. v. not on the purchaser’s perception of the goods but on the origins thereof.But even assuming. the following criteria or any combination thereof may be taken into account: (a) the duration. The risk of damage is not limited to a possible confusion of goods but also includes confusion of reputation if the public could reasonably assume that the goods of the parties originated from the same source. in particular.57 A3. (f) the exclusivity of registration attained by the mark in the world. ex officio if their legislation so permits. (Rule 102. of a trademark which constitutes a reproduction. (l) the presence or absence of identical or similar marks validly registered for or used on identical or similar goods or services and owned by persons other than the person claiming that his mark is a well-known mark. and. an imitation. . Contributory Infringement B. The GALLO wine trademark is not a well-known mark because:58 57 58 Converse Rubber Corp. liable to create confusion. or at the request of an interested party. Famous and well-known marks Paris Convention for the Protection of Industrial Property Article 6bis [Marks: Well–Known Marks] (1) The countries of the Union undertake. extent and geographical area of any use of the mark. of the goods and/or services to which the mark is applied. Tradenames and Marked or Stamped Containers). including advertising or publicity and the presentation. & J.R. (h) the exclusivity of use attained by the mark in the world. (b) the market share. (j) the record of successful protection of the rights in the mark. INC.” respondent’s products are likely to be mistaken as having been produced by petitioner.

Republic Act No. Most of its trademark registrations took place after defendant’s use of the GALLO cigarette trademark. Aside from Gallo Winery’s trademark registration there is another trademark registration under the name of a 3rd party and used for noodles. involving as it does the appreciation of evidence adduced before the BLA-IPO. but. licensed or doing business in the Philippines. “GALLO cannot be considered a well-known mark within the contemplation and protection of the Paris Convention in this case since wines and cigarettes are not identical or similar goods.” “The Paris Convention mandates that protection should be afforded to internationally known marks as signatory to the Paris Convention.”59 “The question of whether or not respondent’s trademarks are considered well-known is factual in nature. at fairs or exhibitions. 2007). is identical with or confusingly similar to or constitutes a translation of a mark that is sought to be registered or is actually registered. in particular. undoubtedly shows the firm resolve of the Philippines to observe and follow the Paris Convention by incorporating the relevant portions of the Convention such that persons who may question a mark (that is. 3. The scope of protection initially afforded by Article 6bis of the Paris Convention has been expanded in the 1999 Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks. (d) the quality-image or reputation acquired by the mark. including advertising or publicity and the presentation. wherein the World Intellectual Property Organization (WIPO) General Assembly and the Paris Union agreed to a nonbinding recommendation that a well-known mark should be protected in a country even if the mark is neither registered nor used in that country.R. G. “ (a) the duration. petition for the cancellation thereof. which requires the actual use in commerce in the Philippines of the subject mark or devise. like the IPO. which have acquired expertise because their jurisdiction is confined to specific matters. of the goods and/or services to which the mark applies. GALLO trademark cannot be considered a strong and distinct mark in the Philippines. No. 159931 (March 31. In-N-Out Burger. prepared food or canned noodles. . without regard as to whether the foreign corporation is registered.” 60 BLA-IPO Decision: 59 60 Shangri-La International v. G. 171053 (2007). v. oppose registration. Inc. 2006 and January 22.R. The settled rule is that the factual findings of quasi-judicial agencies. even finality if such findings are supported by substantial evidence. extent and geographical area of any use of the mark.” “The new Intellectual Property Code (IPC). etc. Inc. 2. “The fact that respondent’s marks are neither registered nor used in the Philippines is of no moment. whether or not registered. Developers Group. sue for unfair competition) include persons whose internationally well-known mark. are generally accorded not only respect.1. the duration.. (e) the extent to which the mark has been registered in the world. Sehwani. 8293. at times. It goes without saying that the same runs afoul to Republic Act No. 166. extent and geographical area of any promotion of the mark.

IPO reads: WHEREFORE. considering that the goods of Respondent-Registrant falling under Classes 16.1(e) does not require that the well-known mark be used in commerce in the Philippines but only that it be well-known in the Philippines.” Since "any combination" of the foregoing criteria is sufficient to determine that a mark is wellknown.61 61 Fredco Manufacturing Corporation v. and records purposes. 21 and 28 are not confusingly similar with the Petitioner's goods. premises considered. internationally well-known marks are the exceptions to this rule. the petition for review is DENIED. Section 123. President and Fellows of Harvard College (Harvard University).WHEREFORE. it is clearly not necessary that the mark be used in commerce in the Philippines.A. Information and Technology Transfer Bureau be furnished a copy of this Decision for information. The Decision dated April 21. Section 123. No. 18. “Indeed. the Respondent-Registrant has acquired vested right over the same and therefore. while under the territoriality principle a mark must be used in commerce in the Philippines to be entitled to protection. The dispositive portion of the decision of the Office of the Director General. premises considered.1(e) of R. 8293 now categorically states that "a mark which is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines. Let a copy of this Decision as well as the trademark application and records be furnished and returned to the Director of Bureau of Legal Affairs for appropriate action. Financial and Human Resources Development Services Bureau. The dispositive portion of the decision of the Court of Appeals reads: WHEREFORE.R. whether or not it is registered here. Trademark Registration Number 56561 for the trademark "HARVARD VE RI TAS `SHIELD' SYMBOL" issued on November 25. Consequently. let also the Directors of the Bureau of Trademarks and the Administrative." cannot be registered by another in the Philippines. the instant appeal is GRANTED. guidance. the Petition for Cancellation is hereby GRANTED. Thus. 1993 to PRESIDENT AND FELLOWS OF HARVARD COLLEGE (HARVARD UNIVERSITY) should be CANCELLED only with respect to goods falling under Class 25. 14-2005-00094 is hereby AFFIRMED. should not be cancelled. The appealed decision is hereby REVERSED and SET ASIDE. No. 185917 (2011). Further. and the library of the Documentation. G. 14-07-09 Inter Partes Case No. 2008 of the Director General of the IPO in Appeal No. premises considered. . On the other hand.

quality. particularly the refusal of the Circuit Court of Appeals to require respondents to remove the word 'Champion' from the repaired or reconditioned plugs which they resell. quantity.'62 “It is not disputed that Church may specialize in the repair of Volkswagen vehicles.” Mr. Comparative Advertising “… use of another’s trademark to identify the trademark owner’s product in comparative advertising is not prohibited… absent misrepresentation regarding the products or confusion as to their source or sponsorship…” 62 63 Champion Spark Plug Co. for him to avoid altogether the use of the word 'Volkswagen' or its abbreviation 'VW.8. destination. Volkswagenwerk Aktiengesellschaft v. or exact indications concerning the kind. that is wholly permissible so long as the manufacturer is not identified with the inferior qualities of the product resulting from wear and tear or the reconditioning by the dealer. * * * When the mark is used in a way that does not deceive the public we see no such sanctity in the word as to prevent its being used to tell the truth.. if not impossible. supra. That such use is confined to the purposes of mere identification or information and cannot mislead the public as to the source of the goods or services.” “Although he may advertise to the public that he repairs appellant's cars. Full disclosure gives the manufacturer all the protection to which he is entitled. Lawful Unauthorized Use Section 148. Inc. to the public at large. 331 U. place of origin.”63 B. The controversy here relates to the adequacy of the relief granted. – Registration of the mark shall not confer on the registered owner the right to preclude third parties from using bona fide their names. A.2d 350 (9th Cir.” Pertinent Factors: “The size. addresses. style and appearance of the advertising articles and displays were among these factors. It is not taboo. Justice Holmes stated. Coty. and in such advertising it would be difficult. nor to the conclusion that they have not only infringed petitioner's trade mark but have also engaged in unfair competition. Sanders. v. . He may also advertise to the effect that he does so.S. pseudonyms. 125 (1947). 'A trade-mark only gives the right to prohibit the use of it so far as to protect the owner's good will against the sale of another's product as his. Church. of their goods or services: Provided. Another was the fact that Church did not use Volkswagen's distinctive lettering style or color scheme. nor did he display the encircled 'VW' emblem.' which are the normal terms which. Use of Indications by Third Parties for Purposes Other than those for which the Mark is Used. 1969). Church must not do so in a manner which is likely to suggest to his prospective customers that he is part of Volkswagen's organization of franchised dealers and repairmen. a geographical name. 411 F.” “But under the rule of Prestonettes. v. value. Collateral Use “There is no challenge here to the findings as to the misleading character of the merchandising methods employed by respondents. or time of production or of supply. signify appellant's cars.

would constitute a serious curtailment of a protected form of expression.3d 252 (4th Cir. presumably a humorous difference. namely."66 "A parody must convey two simultaneous — and contradictory — messages: that it is the original. Trademark parodies. 483 U. As noted.”67 64 65 Smith v.” “…we conclude that MCA's use of Barbie is not an infringement of Mattel's trademark. denied.” “A title is designed to catch the eye and to promote the value of the underlying work.S.  it does not.L. Parody “… literary titles do not violate [trademark rights] unless the title has no artistic relevance to the underlying work whatsoever. The song title does not explicitly mislead as to the source of the work. v.). makes them a natural target of parodists. Chanel. that is no reason to afford it less protection under the first amendment.3d 894 (2002). but also that it is not the original and is instead a parody.2d 562 (9th Cir. 507 F. explicitly or otherwise. Mattel v. 2007).. Haute Diggity Dog. Inc. Thus. or amusement. Consumers expect a title to communicate a message about the book or movie. but they do not expect it to identify the publisher or producer. "[a] parody relies upon a difference from the original mark. joking. the song itself. ridicule. 1013 (1987). Inc. in order to produce its desired effect. Inc. Bean. a trademark parody reminds us that we are free to laugh at the images and associations linked with the mark. do convey a message. The message may be simply that business and product images need not always be taken too seriously. or. Under the first prong of Rogers.. .” “While such a message lacks explicit political content. unless the title explicitly misleads as to the source or content of the work.2d 26 (1st Cir. MCA. cert. if it has some artistic relevance. the use of Barbie in the song title clearly is relevant to the underlying work. ”65 For trademark purposes. x x x Denying parodists the opportunity to poke fun at symbols and names which have become woven into the fabric of our daily life. 1968). 296 F. 402 F.“The rule rests upon the traditionally accepted premise that the only legally relevant function of a trademark is to impart information as to the source or sponsorship of the product.” “The central role which trademarks occupy in public discourse (a role eagerly encouraged by trademark owners). 67 L. suggest that it was produced by Mattel." “Trademark rights do not entitle the owner to quash an unauthorized use of the mark by another who is communicating ideas or expressing points of view. "[a] ‘parody’ is defined as a simple form of entertainment conveyed by juxtaposing the irreverent representation of the trademark with the idealized image created by the mark’s owner. 811 F. This second message must not only differentiate the alleged parody from the original but must also communicate some articulable element of satire. 66 Louis Vuitton v.”64 C. Drake Publishers. the song is about Barbie and the values Aqua claims she represents. even when offensive.

” 68 D. 3. it does not constitute unfair competition.2d 302 (9th Cir. 537 F.2d 1302 (2008).Supp. 2. News America Publishing.69 68 69 Smith v. New Kids on the Block v. such use is fair because it does not imply sponsorship or endorsement by the trademark holder.identification function that is the purpose of trademark. 1992). 971 F. the use of words for descriptive purposes is called a ’fair use. a commercial user is entitled to a nominative fair use defense provided he meets the following three requirements: 1. the product or service in question must be one not readily identifiable without use of the trademark.” Where the defendant uses a trademark to describe the plaintiff's product. in conjunction with the mark. . rather than its own.” “Such nominative use of a mark--where the only word reasonably available to describe a particular thing is pressed into service--lies outside the strictures of trademark law: Because it does not implicate the source. suggest sponsorship or endorsement by the trademark holder. only so much of the mark or marks may be used as is reasonably necessary to identify the product or service.“… a parody depends on lack of confusion to make its point. the user must do nothing that would. Trademarks as Speech “In technical trademark jargon.’ and the law usually permits it even if the words themselves also constitute a trademark. the parodist relies on the viewer's familiarity with the distinct and idealized image created by the primary mark's owner as a foil for the parodist's own irreverent representation of the mark. Wal-Mart.

The TRIPS Agreement E. Paris Convention for the Protection of Industrial Property B. F. International Aspects of Trademark Law A. Vienna Agreement G. Lisbon Agreement . The Madrid Agreement Concerning the International Registration of Marks. Nice Agreement on the international classification of goods and services C.9. Trademark Law Treaty D.

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