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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. Publics interest in protection against deceit as to the source of its purchases. 2. Businessmans 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. Philips Foto Co., 273 F. Supp. 1002 (S.D.N.Y. 1967).

ancient Greek and Roman inscriptions on sculptural works, paintings, vases, precious stones, glass works, bricks, etc. reveal some features which are thought to be marks or symbols. These marks were affixed by the creator or marker of the article, or by public authorities as indicators for the payment of tax, for disclosing state monopoly, or devices for the settlement of accounts, between an entrepreneur and his workmen. In the Middle Ages, the use of many kinds of marks on a variety of goods was commonplace. Fifteenth century England saw the compulsory use of identifying marks in certain trades. There were the baker's mark on bread, bottle makers marks, smith's marks, tanner's marks, watermarks on paper, etc. Every guild had its own mark and every master belonging to it had a special mark of his own. 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, as well as to aid in tracing defective work or poor craftsmanship to the artisan. For a similar reason, merchants also used merchants' marks. 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.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, and its sole function is to designate distinctively the origin of the products to which it is attached." (Reynolds & Reynolds Co. vs. Norick, et al., 114 F 2d, 278) To point out distinctly the origin or ownership of the goods to which it is affixed, to secure to him, who has been instrumental in bringing into market a superior article of merchandise, the fruit of his industry and skill, and to prevent fraud and imposition.3
C2. Guarantor of Quality

With constant use, the mark acquired popularity and became voluntarily adopted. It was not intended to create or continue monopoly but to give the customer an index or guarantee of quality. 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. By this time, trademarks did not merely identify the goods; they also indicated the goods to be of satisfactory quality, and thereby stimulated further purchases by the consuming public.4 Because trademarks desirably promote competition and the maintenance of product quality, Congress determined that "a sound public policy requires that trademarks should receive nationally the greatest protection that can be given them." 5

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Mirpuri, vs. Court of appeals Gabriel v. Perez, G.R. No. L-24075, January 31, 1974. 4 Ibid. 2 5 Park N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (1985).

C3. Means of Consumer Protection

In the consideration of evidence relating to trademark infringement, therefore, a court must expand the more frequent, one-on-one, contest-between-two sides, approach. A third party, the consuming public, is present and its interests are paramount. Hence infringement is found when the evidence indicates a likelihood of confusion, deception or mistake on the part of the consuming public. 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. Interested businessmen may sue for trademark infringement in the course of protecting their pocketbook. But it is one of the geniuses of what has been called the "free enterprise" system (but which, in its proper operation, 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. 6 Where a transferred trademark is to be used on a new and different product, any goodwill which the mark itself might represent cannot legally be assigned. '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. To hold otherwise would be to condone public deceit. 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. 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. 7
C4. 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. The protection of trade-marks is the law's recognition of the psychological function of symbols. If it is true that we live by symbols, it is no less true that we purchase goods by them. A trade-mark is a merchandising short-cut which induces a purchaser to select what he wants, or what he has been led to believe he wants. 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. Whatever the means employed, the aim is the sameto convey through the mark, in the minds of potential customers, the desirability of the commodity upon which it appears. Once this is attained, the trade-mark owner has something of value.8

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James Burrough, Ltd. v. Sign of Beefeater, Inc., 540 F.2d 266 (1976). Pepsico, Inc. v. Grapette Co., 416 F.2d 285 (1969). 8 Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co., 316 U.S. 203 (1942).

C5. Symbol of Goodwill

Eventually, they came to symbolize the goodwill and business reputation of the owner of the product and became a property right protected by law. The common law developed the doctrine of trademarks and trade names "to prevent a person from palming off his goods as another's, from getting another's business or injuring his reputation by unfair means, and, from defrauding the public." Subsequently, England and the United States enacted national legislation on trademarks as part of the law regulating unfair trade. It became the right of the trademark owner to exclude others from the use of his mark, or of a confusingly similar mark where confusion resulted in diversion of trade or financial injury. At the same time, the trademark served as a warning against the imitation or faking of products to prevent the imposition of fraud upon the public.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. The primary and proper function of a trademark is to identify the origin or ownership of the article to which it is affixed. Where a party has been in the habit of labeling his goods with a distinctive mark, so that purchasers recognize goods thus marked as being of his production, others are debarred from applying the same mark to goods of the same description, 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. Courts afford redress or relief upon the ground that a party has a valuable interest in the good will of his trade or business, and in the trademarks adopted to maintain and extend it. The essence of the wrong consists in the sale of the goods of one manufacturer or vendor for those of another.10
C6. Property Right

Trademarks, and the right to their exclusive use are to be classed among property rights; 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, free from unwarranted interference by others, is a property right, for the protection of which a trademark is an instrumentality.11 Plaintiffs 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. This is not a case of government censorship but a private plaintiffs attempt to protect its property rights.12

2. 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
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Ibid. 2 Hanover Star Milling Co. v. Metcalf, 240 U.S. 403 (1916) 11 Ibid. 12 Dallas Cowboys Cheerleaders Inc v. Pussycat Cinema Ltd, 604 F. 2d 200 (1979).
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121.1 of the IP Code). Collective mark means any visible sign designated as such in the application for registration and capable of distinguishing the origin or any other common characteristic, including the quality of goods or services of different enterprises which use the sign under the control of the registered owner of the collective mark (Section 121.2 of the IP Code). A Trademark is not a Trade Name. Trade name means the name or designation identifying or distinguishing an enterprise (Section 121.3 of the IP Code). A "trademark" is defined under R.A. 166, the Trademark Law, as including "any word, name, symbol, emblem, 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, sold or dealt in by others." This definition has been simplified in R.A. No. 8293, the IP Code, which defines a "trademark", as "any visible sign capable of distinguishing goods."13

A. Subject Matter Granted Trademark Protection


Trademark, copyright and patents are different intellectual property rights that cannot be interchanged with one another. 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. In relation thereto, a trade name means the name or designation identifying or distinguishing an enterprise. Meanwhile, 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. Patentable inventions, on the other hand, refer to any technical solution of a problem in any field of human activity which is new, involves an inventive step and is industrially applicable.14
A1. Word Marks A2. 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.B.C. and N.B.C. differ by only one letter, over time the public has learned to differentiate the sources symbolized. But it is difficult to distinguish between new letter combinations that are not recognized abbreviations. 16
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Ibid. 2 Pearl & Dean v. Shoemart, G.R. No. 148222, August 15, 2003. 15 Edison Bros. Stores, Inc. v. Brutting E.B. Sport-International GmbH, 230 U.S.P.Q. 16 In re Standard Kollsman Industries, Inc., 156 U.S.P.Q. 346 (T.T.A.B. 1967).

A3. Numbers as Marks

Levis 501 7-11 911-1111

where the courts have refused protection to alleged trade-marks composed of letters or numerals, it has been because on the facts of each case, it was determined that the figures or letters were intended solely to indicate quality, etc., and not because figures and letters in arbitrary combination are incapable of being used as trade-marks. It is very clear that no manufacturer would have the right exclusively to appropriate the figures 1, 2, 3, and 4, or the letters A, B, C, and D, to distinguish the first, second, third and fourth quality of his goods, respectively. Why? Because the general signification and common use of these letters and figures are such, 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. if for a long period of time he had used the same figures in combination, as 3214, to distinguish his own goods from those of others, so that the public had come to know them by these numerals, he would be protected.17
A4. Slogans as Marks

Hindi Lang Pampamilya, Pang Isports Pa!

the plaintiff has a property interest in the slogan, built up at great expense, and that it and its products are favorably known as a result of its use of this property right and that the defendant, 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, and proposes further to make use of, a deceptively similar slogan In a manner that will bring direct financial loss to the plaintiff, both by reason of confusing the source of the defendant's product, and by reason of the peculiarly unwholesome association of ideas when the word 'bugs' was substituted in the slogan for the word 'Bud,' referring to a food product.18
A5. Personal Names as Marks

Example of personal names as mark: Dr. Perez Wonder Medicated Beauty Soap19
A6. Geographic Term Marks

B. Spectrum of Distinctiveness
B1. Fanciful Marks
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Shaw Stocking Co. v. Mack, 12 F. 707 (C.C.D.N.Y. 1882). Chemical Corp. of America v. Anheuser-Busch, Inc., 306 F.2d 433, 134 U.S.P.Q. 524 (5th Cir. 1962), cert. denied, 372 U.S. 965, 137 U.S.P.Q. 913 (1963). 19 Gabriel v. Perez, G.R. No. L-24075, January 31, 1974.

Kodak Xerox Escalator four different categories of terms with respect to trademark protection. Arrayed in an ascending order which roughly reflects their eligibility to trademark status and the degree of protection accorded, these classes are (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful. The lines of demarcation, however, are not always bright. Moreover, 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, because a term may shift from one category to another in light of differences in usage through time, because a term may have one meaning to one group of users and a different one to others, and because the same term may be put to different uses with respect to a single product. Coined or Fanciful Marks In Footnote 12 of Abercrombie: the term "fanciful", as a classifying concept, is usually applied to words invented solely for their use as trademarks. When the same legal consequences attach to a common word, i. e., when it is applied in an unfamiliar way, the use is called "arbitrary."
B2. Arbitrary Marks

Mango for apparel Apple for computers

B3. 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. to determine whether they are a descriptive term, i.e. whether they relate to the quality or description of the merchandise to which respondent has applied them as a trademark. The phrase ang tibay is never used adjectively to define or describe an object.20
B4. Descriptive Marks

Filipino Yellow Pages, Inc. v. Asian Journal Publications, Inc., 198 F.3d. 1143 (9th Cir. 1999). 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. "A `generic' term is one that refers, or has come to be understood as referring, to the genus of which the particular product or service is a species. It cannot become a trademark under any circumstances."

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Ang vs. Teodoro, G.R. No. 48226, December 14, 1942.

Courts sometimes refer to generic terms as "common descriptive" names, the language used in the Lanham Act for terms incapable of becoming trademarks. A descriptive term, unlike a generic term, can be a subject for trademark protection under appropriate circumstances. Although descriptive terms generally do not enjoy trademark protection, a descriptive term can be protected provided that it has acquired "secondary meaning" in the minds of consumers, i.e., it has "become distinctive of the [trademark] applicant's goods in commerce." Courts sometimes refer to descriptive terms as "merely descriptive" terms (as opposed to generic or "common descriptive" terms). Park `N Fly, 718 F.2d at 329.
B5. 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, any more than such descriptive words as "evaporated milk," "tomato ketchup," "cheddar cheese," "corn flakes" and "cooking oil" may be appropriated by any single manufacturer of these food products, for no other reason than that he was the first to use them in his registered trademark.21 In Masso Hermanos, S.A. vs. Director of Patents, 94 Phil. 136, 139 (1953), 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. No one may appropriate generic or descriptive words. They belong to the public domain (Ong Ai Gui vs. Director of Patents, 96 Phil. 673, 676 [1955])

C. Subject Matter Not Granted Trademark Protection


C1. Generic Marks C2. Immoral or Scandalous Marks C3. Deceptive and Deceptively Misdescriptive

Deceptive22 If it is not deceptive in this way, the Patent Office asserts that the mark is merely descriptive or deceptively misdescriptive, for if the product does contain wax it is descriptive; if it does not, it is
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Asia Brewery, Inc. vs. The Hon. Court of Appeals and San Miguel Corporation, G.R. No. 103543, July 5, 1993 Gold Seal Co. v. Weeks, 129 F. Supp. 928, 105 U.S.P.Q. 407 (D.D.C. 1955)

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

C4. 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. In re Shapely, Inc. 231 U.S.P.Q. 72 (T.T.A.B. 1986).

123.1. A mark cannot be registered if it: (j) Consists exclusively of signs or of indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, time or production of the goods or rendering of the services, or other characteristics of the goods or services; (Section 123(1)(j) of the IP Code).

Geographically Deceptive Marks


123.1. A mark cannot be registered if it: (g) Is likely to mislead the public, particularly as to the nature, quality, characteristics or geographical origin of the goods or services; (Section 123(1)(g) of the IP Code).

The term Wellington is either a geographical name or the surname of a person. But mere geographical names are ordinarily regarded as common property, and it is a general rule that the same cannot be appropriated as the subject of an exclusive trademark or trade name. As the term cannot be appropriated as a trademark or a trade name, no action for violation thereof can be maintained.25 Arbitrary Usage of Geographic Terms DUTCH or DUTCH BOY for paint. Neither the words Dutch, nor the words Dutch Boy are used otherwise than in a fictitious, arbitrary and fanciful manner. Of course the word Dutch is capable of being used as a geographical term. If used to indicate a product made in Holland or by some Dutch process, it could be a descriptive term. Here there is no likelihood that the use of the name Dutch or Dutch Boy in connection with the appellants 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, processed or used in that place.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, either planned, designed, or implied to deceive the public as to the geographical origin of the goods bearing the mark. 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.27

Materiality Test

(1) Would the misdescription move the purchaser to purchase the goods or services? If no, descriptive. If yes, answer question 2. (2) Whether the purchasers care that the products come from the geographic location named? If yes then deceptive. If no, then misdescription can probably be classified as arbitrary or suggestive use of a mark.

C5. Marks that are Merely a Surname

Section 123. Registrability. 123.1. 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, or the name, signature, or portrait of a deceased President of the Philippines, during the life of his widow, if any, except by written consent of the widow;
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Ang Si Heng v. Wellington Dept. Store, Inc. 92 Phil. 448 (1953). National Lead Co. v. Wolfe, 223 F.2d 195 (9th Cir. 1955). 27 In Re Amerise, 160 U.S.P.Q. 687 (T.T.A.B. 1969)

In determining whether a particular living person bearing the name would be associated with the mark as being used on the goods, we must consider (1) if the person is so well known that the public would reasonably assume the connection, or (2) if the individual is publicly connected with the business in which the mark is being used. This statutory sub-section operates to bar the registration of marks containing not only full names, but also surnames, shortened names, nicknames, etc., so long as the name in question does, in fact, identify a particular living individual.28
C6. Functionality

Section 123. Registrability. 123.1. 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;

Plaintiff does not claim a trademark in all clothing designed and fitted to allow free movement while performing cheerleading routines, but claims a trademark in the particular combination of colors and collocation of decorations that distinguish plaintiffs uniform from those of other squads. If the design of an item is nonfunctional and has acquired secondary meaning, the design may become a TM even if the item itself is functional. 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, particularly where the decorative aspects of the item are nonfunctional. In the instant case the combination of white boots, white shorts, blue blouse and white starstudded vest and belt is an arbitrary design which makes the otherwise functional uniform trademarkable.29 Existence of expired utility patents created strong evidentiary inference of designs functionality. 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. 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.30

28 29

In re Richard M. Hoefflin, Serial Nos. 77632391, 77632400, 77632406 (T.T.A.B. Dec. 10, 2010) Dallas Cowboys Cheerleaders Inc v. Pussycat Cinema Ltd, 604 F. 2d 200. 30 TrafFix Devices, Inc. v. Marketing Displays, Inc., 121 S. Ct. 1255 (U.S. 2001).

3. Acquisition of Trademark Rights


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

31

Philip Morris, Inc. v. Fortune Tobacco Company, G.R. No. 158589, June 27, 2006.

How Marks are Acquired. The rights in a mark shall be acquired through registration made validly in accordance with the provisions of this law. (Sec. 2-A, R A. No. 166a)(Section 122 of the Intellectual Property Code of the Philippines). Repeals. 239.1. All Acts and parts of Acts inconsistent herewith, more particularly Republic Act No. 165, as amended; Republic Act No. 166, as amended; and Articles 188 and 189 of the Revised Penal Code; Presidential Decree No. 49, including Presidential Decree No. 285, as amended, are hereby repealed. (Section 239.1 of the Intellectual Property Code of the Philippines).

4. Registration of Trademarks
A. Selection and Clearance of a Mark B. Bars to registration
Section 123. Registrability. 123.1. A mark cannot be registered if it: (a) Consists of immoral, deceptive or scandalous matter, or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute; (b) Consists of the flag or coat of arms or other insignia of the Philippines or any of its political subdivisions, or of any foreign nation, or any simulation thereof; (c) Consists of a name, portrait or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the Philippines, during the life of his widow, if any, except by written consent of the widow; (d) Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of: (i) The same goods or services, or (ii) Closely related goods or services, or (iii) If it nearly resembles such a mark as to be likely to deceive or cause confusion; (e) Is identical with, or confusingly similar to, or constitutes a translation of a mark which is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines, whether or not it is registered here, as being already the mark of a person other than the applicant for registration, and used for identical or similar goods or services: Provided, That in determining whether a mark is well-known, account shall be taken of the knowledge of the relevant sector of the public, rather than of the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark; (f) Is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known in accordance with the preceding paragraph, which is registered in the Philippines with respect to goods or services which are not similar to those with respect to which registration is applied for: Provided, That use of the mark in relation to those goods or services would indicate a connection between those goods or services, and the owner of the registered mark: Provided further, That the interests of the owner of the registered mark are likely to be damaged by such use; (g) Is likely to mislead the public, particularly as to the nature, quality, characteristics or geographical origin of the goods or services; (h) Consists exclusively of signs that are generic for the goods or services that they seek to identify; (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; (j) Consists exclusively of signs or of indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, time or production of the goods or rendering of the services, or other characteristics of the goods or services; (k) Consists of shapes that may be necessitated by technical factors or by the nature of the goods themselves or factors that affect their intrinsic value; (l) Consists of color alone, unless defined by a given form; or (m) Is contrary to public order or morality. 123.2. As regards signs or devices mentioned in paragraphs (j), (k), and (l), 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. The Office may accept as prima facie evidence that the mark has become distinctive, as used in connection with the applicants goods or services in commerce, 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.

C. 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, said trademarks are no longer available for use and registration. The lawful entry into the Philippines of goods bearing the trade mark for a period of years, should entitle the owner of the trade mark to the right to use the same to the exclusion of the others. Modern trade and Commerce demands that depredations on legitimate trademarks of nonnationals should not be countenanced.32 Use in commerce. Sending samples not enough to constitute use contemplated by law. It is a matter of public knowledge that all brands of goods filter into the market, indiscriminately sold by jobbers, dealers and merchants not necessarily with the knowledge or consent of the manufacturer. Such actual sale of goods in the local market establishes trademark use 33
152.4. The use of a mark by a company related with the registrant or applicant shall inure to the latters benefit, and such use shall not affect the validity of such mark or of its registration: Provided, That such mark is not used in such manner as to deceive the public. 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. (n) Use should be in the Philippines

D. Preparing the Application


D1. Basic Requirements of the Application

i. ii.

Contact Information of the Applicant Mark i. 3 dimensional marks

A 3D Mark is a three-dimensional sign, or a combination of three-dimensional signs, colors, words and devices. It may be the shape of a product, or its container or packaging. Why register a 3D Mark? - A unique shape is not only attractive to consumers. It also gives better understanding of the quality of products. - It will differentiate and exclusively protect your goods from another product. - The rights secured by TM registration is stronger than copyright and design patents because it may be renewed indefinitely. 3D marks are not registrable if they:
32 33

Asari Yoko Ltd. v. Keeboc, L-14086, January 20, 1961; 1 SCRA 1. Converse Rubber Corporation v. Universal Rubber Products, Inc., L-27906, January 8, 1987; 147 SCRA 154.

i. ii. iii. ii.

result merely from the nature of the goods themselves; consist of shapes necessary to obtain a technical result; Not distinctive enough from the common shape of the goods. Stamped or marked container of goods

De facto functional is the use of functional in the lay sense, indicating that although the design of a product, a container, or a feature of either is directed to performance of a function, it may be legally recognized as an indication of source. De jure functionality would indicate the opposite such design may not be protected as a trademark34 iii. 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. Rejected shade confusion and color depletion arguments of Jacobson. iv. Translation of Marks v. Transliteration of Marks vi. 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, 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, business or services. Ong Ai Gui alias Tan Ai Gui v. Dir. of Philippines Patent Office, E. I. Du Pont De Nemours and Co., G.R. No. L- 6235 , March 28, 1955 MARK: "20th Century Nylon Shirts Factory" Disclaimer: The words shirts factory" and Nylon the trade-name may be registered, 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, juris publici, incapable of appropriation by any single individual to the exclusion of others. A word or a combination of words which is merely descriptive of an article of trade, or of its composition, characteristics, or qualities, cannot be appropriated and protected as a trademark to the exclusion of its use by others. The reason for this is that inasmuch as all persons have an equal right to produce and vend similar articles, they also have the right to describe them properly and to use any appropriate to himself exclusively any word or expression, properly descriptive of the article, its qualities, ingredients, or characteristics, and thus limit other persons in the use of language appropriate to the description of their
34

In re Morton-Norwich Products, Inc. 671 F.2d 1332, 213 U.S.P.Q. 9 (C.C.P.A. 1982).

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

iii. iv.

Specification of goods and services Claim for Convention Priority

D2. Examination D3. Allowance and Issuance D4. Publication D5. Opposition Proceedings D6. Registration
Certificate of Registration is prima facie evidence of: (1) validity of registration; (2) registrants ownership of the mark; (3) registrants exclusive right to use the mark in connection with the goods and services and those that are related thereto specified in the certificate.

i. Exclusive rights and exceptions


Rights Conferred To prevent all third parties without the owners 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, where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion will be presumed. (Rule 800[a], 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; (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. (Rule 800[b], Trademark Rules).

ii. Term of Protection

5. Maintenance of Trademark Rights


A. 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. Within 3 years from the filing of the application, the applicant or registrant must file a declaration of actual use of the mark with evidence to that effect. (Sec. 124.2, RA 8293). 2. Within 1 year from the 5th anniversary of the date of registration of the mark, 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. (Rule 801, Trademark Rules).

B. Proper Trademark Usage


B1. Identification and Marking B2. General Guidelines B3. Proper Use Manuals B4. Graphics Standards Manual B5. 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, then it makes no difference whatever efforts the plaintiff has made to educate the consumer. General consuming public did not understand by the word Aspirin anything more than a kind of drug. TM Owner allowed manufacturing chemists to sell drug using the word Aspirin with some indication of the tablet maker but not of Bayer. TM Owners own use: used the word Aspirin as though it was a general term The Label read Bayer Tablets of Aspirin, using the word to denote a kind of product.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. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921).

TM Owners predecessor in interest employed the word cellophane to describe the product itself. No other descriptive word was adopted. DuPont President: I considered that Cellophane was the name which he gave to the product he invented. The patent application of TM Owners predecessor in interest used the word cellophane in a generic sense. Advertising materials of TM Owners predecessors interest used the word as descriptive of the cellulose product repeatedly. Trade journals. The Articles of Incorporation of DuPont Cellophane Company, Inc. used cellophane in a generic sense. Public Announcement of DuPont announcing that it has acquired the exclusive sales and manufacturing rights of the product known as Cellophane. TM Application for DuPont Cellophane in an oval frame. Subsequent advertising materials and trade labels of DuPont. Articles in Literary Digest, Scientific American and other trade journals. Dictionary of Tariff Information of the United States Tariff Commission. 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.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; the fact is that the word thermos had entered the public domain beyond recall. King-Seely Thermos argues that Aspirin and Cellophane cases were misapplied. King-Seely contends that in those cases there was no suitable generic name for use by the general public. The test is not what is available as an alternative to the public, but what the publics understanding is of the word that is uses.37

C. Trademark Policing
C1. Internal Policing C2. External Policing

Permitting the use by third parties of infringing marks can be relevant to 3 specific issues in a trademark case. 1. Estoppel by acquiescence 2. Abandonment of a mark by the owner 3. Strength of a mark

D. Termination and abandonment


Equitable Principles to Govern Proceedings: In all inter partes proceedings in the Office under this Act, the equitable principles of laches, estoppel, and acquiescence where applicable, may be considered and applied. (Sec. 230, RA 8293)38

36 37

Dupont Cellophane Co. v. Waxed Products Co., 85 F.2d 75 (2d Cir. 1936). King-Seely Thermos Co. v. Aladdin Industries, 321 F.2d 577 (2d Cir. 1963). 38 Quality Inns International v. McDonalds Corp., 695 F.Supp. 198 (D.Md. 1988).

The Court held that waiting for more than 7 years before asserting a right to a trademark was an unreasonable length of time. 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. Such inaction on the part of respondent entitles petitioner to the equitable principle of laches. It is precisely the intention of the law, including a provision on equitable principle to protect only the vigilant, not those guilty of laches. It is most unfair if at any time, a previous registrant, even after a lapse of more than 5 years, can ask for the cancellation of a similar or the same trademark, the registration of which was never opposed by the prior registrant.39 Changes in Usage of Mark
The use of a mark in a form different from the form in which it is registered, which does not alter its distinctive character, shall not be a ground for cancellation or removal of the mark and shall not diminish the protection granted to the mark. (Sec. 152.2, RA 8293).

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. It will not constitute abandonment. So long as the owner continues use of the key element of the registered mark, courts generally will not find abandonment.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, or are indistinguishable from one another. Thus, the fact that two marks may be confusingly similar does not necessarily mean that they are legal equivalents. 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, but technically distinct mark - - 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. The standard for tacking, however, is exceedingly strict: The marks must create the same continuing commercial impression, and the later mark should not materially differ from or alter the character of the mark attempted to be tacked. The standard is considerably higher than the standard for likelihood of confusion.
The Movie Buffs Movie Store Moviebuff.com - 3 fewer words - drops the possessive - omits the space - adds .com - narrow commercial impression

39 40

Pagasa Industrial Corp. v. Court of Appeals, No. L-54158, November 19, 1982; 118 SCRA 526. Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947 (7th Cir. 1992). 41 Pro-Cuts v. Schilz-Price Enters., Inc. 27 U.S.P.Q.2d 1224 (T.T.A.B. 1993).

6. Inter Partes Proceedings


The Bureau of Legal Affairs. - The BLA shall have the following functions: Hear and decide opposition to the application for registration of marks, cancellation of trademarks, subject to the provisions of Section 64, cancellation of patents, utility models, and industrial designs; and petitions for compulsory licensing of patents; (Sec.10.1, R.A. No. 8293 or the IP Code)

Nature of Proceedings42 not an ordinary litigious controversy between private parties. public interest is involved. all questions as to whether or not the law is satisfied may be considered even though not specifically raised by either of the parties.

A. Opposition
A1. Standing

Any person who believes that he would be damaged by the registration of a mark may .. . file with the Office an opposition to the application. (Sec. 134, R.A. 8293) Requisites: 1. In writing 2. Verification and Certification of Non-Forum Shopping 3. Board Resolution or Secretarys Certificate 4. Statement of Grounds and Facts 5. Attachments of evidence in original or certified copies of the original, marked consecutively 6. If foreign document, authenticated and notarized 7. English translation (if in foreign languages) (Regulations on Inter Partes Proceedings, as amended by Office Order No. 79, s. of 2005) Pleadings Filed: 1. Verified Notice Opposition Filed within 30 days from publication of mark for opposition with extension but not to exceed 120 days from publication 2. Answer Filed within 30 days from receipt of Notice to Answer with extension but not to exceed 120 days. 3. Reply * Filing in 10 days from receipt of Answer, non-extendible. 4. Rejoinder * Filing in 10 days from receipt of Reply, non-extendible. 5. 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, Inc. v. Director of Patents, 15 SCRA 147 (1965).

Rules of Procedure for IPO Mediation Proceedings: (Office Order No. 154, s. of 2010) Coverage: All IPC, IPV, DITTB, 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; or in the case of respondent-applicant, waiver of right to submit position paper. If mediation is successful, submit Compromise Agreement for approval of BLA. If failed, return case to BLA for further proceedings. Preliminary Conference: If Mediation fails, 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, if desired. Then, case is submitted for decision. US Jurisprudence created 2 requirements in order to have standing: (1) real interest in the proceedings; and (2) reasonable basis for his belief of damage. Real Interest Test - stems from a policy of preventing mere intermeddlers who do not raise a real controversy from bringing oppositions or cancellations proceedings. - legitimate personal interest - direct and personal stake in the outcome of the opposition. The potential injury to Mr. Richie: The disparagement of his alleged belief in a loving and nurturing relationship between husband and wife. Reasonable Belief of Damage - more than a subjective belief - must have a reasonable basis in fact Ways to show reasonableness of belief: 1. Opposer alleges that he possesses a trait or characteristic that is clearly and directly implicated in the proposed mark. must be an immutable characteristic or trait 2. Opposer alleges that others also share the same belief of harm from the proposed mark. Standing of a trade association43 Tanners Council collects dues from its members based on the semi-annual production of each member. A members loss of sales decreases the dues received by appellant.

43

Tanners Council of America, Inc. v. Gary Industries, Inc., 440 F.2d 1404, 169 U.S.P.Q. 608 (C.C.P.A 1971).

Tanners 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. where the association has established a pecuniary interest as here, 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; (2) the interests it seeks to protect are germane to the organizations purpose; and (3) neither the claim asserted nor the relief requested requires the participation of individual members in the lawsuit. one of INAOs purposes is to oppose the registration of trademarks in the United States if it deems it necessary to protect an appellation of origin. This function would reasonably include routine participation in trademark registration proceedings affecting appellations of origin. Thus, INAO meets the second prong of the test for associational standing. Standing, in the context of a claim, does not rise or fall on the basis of a plaintiff's proprietary rights in a term; rather, a plaintiff has standing by virtue of who the plaintiff is, that is, the plaintiff's personality or "persona." 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. 45 An Opposer or a Cancellation Petitioner must show:46 (1) Standing; and (2) a statutory ground which negates the applicant or registered owners entitlement to registration. The allegation of economic damage, while relevant to Youngs standing, does not constitute a ground to preclude registration. In determining whether a particular living person bearing the name would be associated with the mark as being used on the goods, we must consider (1) if the person is so well known that the public would reasonably assume the connection, or (2) if the individual is publicly connected with the business in which the mark is being used. This statutory sub-section operates to bar the registration of marks containing not only full names, but also surnames, shortened names, nicknames, etc., so long as the name in question does, in fact, identify a particular living individual.47
A2. Grounds
Sec. 123.1 IP Code Absolute Proscription 1. Immoral, deceptive, scandalous, national symbols [ 123. 1 (a)].
44 45

Institut Natl Des Appellations DOrigine v. Vinters Intl Co., 958 F.2d 1574, U.S.P.Q.2d 1190 (Fed. Cir. 1992) Estate of Biro v. Bic Corp., 18 U.S.P.Q.2d 1382 ( T.T.A.B. 1991). 46 Young v. AGB Corp., 152 F.3d 1377, 47 U.S.P.Q.2d 1752 (Fed. Cir. 1998). 47 In re Richard M. Hoefflin, Serial Nos. 77632391, 77632400, 77632406 (T.T.A.B. Dec. 10, 2010)

2. Flag, coat of arms [ 123. 1 (b)]. 3. Generic [ 123. 1 (h)]. 4. Contrary to public order or morality [ 123. 1 (m)]. 5. Relative Proscriptions 1. name, portrait or signature of a living individual except his written consent, or the deceased Pres. of the Phils. except with widows consent [ 123. 1 (c)]. 2. Identical marks or confusingly similar marks; prior registration [ 123. 1 (d)]. (N.B. Sec. 236, IP Code in relation to 123.1 [d]) 3. Well-known marks [ 123. 1 (e) & (f)]. 4. Descriptive marks [ 123. 1 (g)]. 5. Customary or usual signs or indications [ 123. 1 (i)]. 6. Shapes necessitated by technical factors or nature of goods [ 123. 1 (k)]. 7. Color marks [ 123. 1 (l)].

B. Cancellation of Registration
Sec. 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. Within 5 years from the date of registration of the mark 2. 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, 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, the disuse must be permanent and not ephemeral; it must be intentional and voluntary, and not involuntary or even compulsory. There must be thorough discontinuance of any trademark use of the mark in question (Callman, Unfair Competition and Trademark, 2nd Ed., 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. Such inaction on the part of the respondent entitles the petitioner to the equitable principle of laches. 48
Sec. 151.2 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.

48

Pagasa Industrial Corporation v. Court of Appeals, G.R. No. L-54158, 19 November 1982

whether, despite the petitioners institution of Inter partes Case No. 3145 before the BPTTT, herein respondent DGCI can file a subsequent action for infringement with the regular courts of justice in connection with the same registered mark, ruled in the affirmative, but nonetheless ordered the BPTTT to suspend further proceedings in said inter partes case to await the final outcome of the main case.
Sec. 151.2(cont.) 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.

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. in a trademark infringement, title to the trademark is indispensable to a valid cause of action and such title is shown by its certificate of registration. With its certificates of registration over the disputed trademarks effectively cancelled with finality, SUPERIORs case for trademark infringement lost its legal basis and no longer presented a valid cause of action. Because the Registration Cancellation Case and the present case involve the same parties, litigating with respect to and disputing the same trademarks, we are bound to examine how one case would affect the other. In the present case, 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), the final judgment in the Registration Cancellation Case is nevertheless conclusive on the particular facts and issues that are determinative of the present case. Effect of Cancellation of Registration Case: Superior Commercial Enterprises v. Kunnan Enterprises Ltd., G.R. No. 169504, 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 . To be sure, in trademark infringement, title to trademark is indispensable to a valid cause of action and such title is shown by its certificate of registration. With its certificate of registration over the disputed trademark effectively cancelled with finality, SUPERIORs case for trademark infringement lost its legal basis and no longer presented a valid cause of action. 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. Even prior to the cancellation of the registration of the disputed trademarks, 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.

B1. Standing

B2. 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, 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. At any time

7. Protection of Trademarks
A. Infringement
Section 155. Remedies; Infringement. Any person who shall, without the consent of the owner of the registered mark: 155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark or the same container or a dominant feature thereof in connection with the sale, offering for sale, distribution, 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, or to cause mistake, or to deceive; or 155.2. Reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant feature thereof and apply such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive, shall be liable in a civil action for infringement by the registrant for the remedies hereinafter set forth: Provided, That the infringement takes place at the moment any of the acts stated in Subsection 155.1 or this subsection are committed regardless of whether there is actual sale of goods or services using the infringing material. (Sec. 22, R.A. No 166a)

Infringement of a trademark is determined by the test of dominancy. Similarity in size, form and color, while relevant, is not conclusive. If the competing trademark contains the main or essential or dominant features of another, and confusion and deception is likely to result, infringement takes place. 49 San Miguel Dominant feature is the name of the product: SAN MIGUEL PALE PILSEN, 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. Asia Brewery Dominant feature of ABIs trademark is the name: BEER PALE PILSEN, with the word Beer written in large amber letters, larger than any of the letters found in the SMC label.

In the history of trademark cases in the Philippines, particularly in ascertaining whether one trademark is confusingly similar to or is a colorable imitation of another, no set of rules can be deduced. In determining whether colorable imitation exists, jurisprudence has developed two kinds of tests the Dominancy Test applied in Asia Brewery, Inc. v. Court of Appeals and other cases and the Holistic Test developed in Del Monte Corporation v. Court of Appeals and its proponent cases. trademark being infringed under R.A. 166 trademark actually used in commerce in the Philippines and registered in the principal register of the Philippine Patent Office. under R.A. 8293 the trademark being infringed is registered in the Intellectual Property Office; x x x

49

Asia Brewery, Inc. vs. The Hon. Court of Appeals and San Miguel Corporation, G.R. No. 103543, July 5, 1993.

Clearly, 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. All that is required is that the trade name is previously used in trade or commerce in the Philippines. RA 8293, which took effect on 1 January 1998, has dispensed with the registration requirement. Section 165.2 of RA 8293 categorically states that trade names shall be protected, even prior to or without registration with the IPO, against any unlawful act including any subsequent use of the trade name by a third party, whether as a trade name or a trademark likely to mislead the public.50
A1. Confusing Similarity

8 Factors for evaluating likelihood of confusion between non-identical goods or services:51 1. The strength of the plaintiffs mark; 2. The degree of similarity between plaintiffs and defendants marks; 3. the proximity of the products or services; 4. the likelihood that plaintiff will bridge the gap; 5. evidence of actual confusion; 6. defendants good faith in adopting the mark; 7. the quality of defendants product or service; 8. the sophistication of the buyers.
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." 52

Dominancy Test similarity of the prevalent features of the competing trademarks which might cause confusion or deception and thus constitutes infringement.
A2. Likelihood of Confusion

Holistic Test the entirety of the marks in question must be considered in determining confusing similarity.

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. (2) Confusion of business: Here though the goods of the parties are different, the defendants product is such as might reasonably be assumed to originate with the plaintiff, and the public would then be deceived either into the belief that there is some connection between the plaintiff and defendant which, in fact, does not exist.

50 51

Coffee Partners v. San Francisco Coffee & Roastery, G.R. No. 169504 (2010). Polaroid Corp. v. Polarad Electronics Corp., 287 F. 2d 492 (2d Cir.), cert. denied, 368 U.S. 820 (1961). 52 Emerald Garment Manufacturing Corp v. CA, BPTTT and HD Lee Company GR 100098 53 McDonalds Corporation v. Big Mak Burger, G.R. No. 143993 (2004).

The registered trademark owner may use his mark on the same or similar products, in different segments of the market, and at different price levels depending on variations of the products for specific segments of the market. 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. 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, aural, connotative comparisons and overall impressions engendered by the marks in controversy as they are encountered in the realities of the marketplace. The test of dominancy is now explicitly incorporated into law in Section 155.1 of the Intellectual Property Code which defines infringement as the colorable imitation of a registered mark x x x or a dominant feature thereof. 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. the general impression of the ordinary purchaser, 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. we must consider the mark as a whole and not as dissected. If the buyer is deceived, it is attributable to the marks as a totality, not usually to any part of it. The factors considered by the court were:55 (1) age, training and education of the usual purchaser; (2) the nature and cost of the article; (3) whether the article is bought for immediate consumption; and (4) the conditions under which it is usually purchased. Moreover, 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, aural connotative comparisons and overall impressions engendered by the marks in controversy as they are encountered in the realities of the marketplace. 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. 56 A trade name is any individual name or surname, firm name, device or word used by manufacturers, industrialists, merchants and others to identify their businesses, vocations or occupations. As the trade name refers to the business and its goodwill the trademark refers to the goods.

54 55

Ibid. Del Monte Corp. v. CA, GR No. 78325, 25 January 1990. 56 Societe Des Produits Nestle v. Martin T. Dy, G.R. No. 172276 (2010).

But even assuming, arguendo, that the trademark sought to be registered by respondent is distinctively dissimilar from those of the petitioner, the likelihood of confusion would still subsists, not on the purchasers perception of the goods but on the origins thereof. By appropriating the word CONVERSE, respondents products are likely to be mistaken as having been produced by petitioner. 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.57
A3. Contributory Infringement

B. Famous and well-known marks


Paris Convention for the Protection of Industrial Property Article 6bis [Marks: WellKnown Marks] (1) The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, 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. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such wellknown mark or an imitation liable to create confusion therewith. Criteria for Determining whether a Mark is Well-known In determining whether a mark is well-known, the following criteria or any combination thereof may be taken into account: (a) the duration, extent and geographical area of any use of the mark, in particular, the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies; (b) the market share, in the Philippines and in other countries, of the goods and/or services to which the mark is applied; (c) the degree of the inherent or acquired distinction of the mark; (d) the quality-image or reputation acquired by the mark; (e) the extent to which the mark has been registered in the world; (f) the exclusivity of registration attained by the mark in the world; (g) the extent to which the mark has been used in the world; (h) the exclusivity of use attained by the mark in the world; (i) the commercial value attributed to the mark in the world; (j) the record of successful protection of the rights in the mark; (k) the outcome of litigations dealing with the issue of whether the mark is a well-known mark; and, (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. (Rule 102, Rules and Regulations on Trademarks, Service Marks, Tradenames and Marked or Stamped Containers).

The GALLO wine trademark is not a well-known mark because:58

57 58

Converse Rubber Corp. v. Universal Rubber Products Industries, 147 SCRA 154 (8 January 1987). MIGHTY CORPORATION and LA CAMPANA FABRICA DE TABACO, INC. vs. E. & J. GALLO WINERY and THE ANDRESONS GROUP, INC., G.R. No. 154342 (2004).

1. Most of its trademark registrations took place after defendants use of the GALLO cigarette trademark; 2. GALLO trademark cannot be considered a strong and distinct mark in the Philippines. Aside from Gallo Winerys trademark registration there is another trademark registration under the name of a 3rd party and used for noodles, prepared food or canned noodles, etc. 3. 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, without regard as to whether the foreign corporation is registered, licensed or doing business in the Philippines. It goes without saying that the same runs afoul to Republic Act No. 166, which requires the actual use in commerce in the Philippines of the subject mark or devise. The new Intellectual Property Code (IPC), Republic Act No. 8293, 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, oppose registration, petition for the cancellation thereof, sue for unfair competition) include persons whose internationally well-known mark, whether or not registered, is identical with or confusingly similar to or constitutes a translation of a mark that is sought to be registered or is actually registered.59 The question of whether or not respondents trademarks are considered well-known is factual in nature, involving as it does the appreciation of evidence adduced before the BLA-IPO. The settled rule is that the factual findings of quasi-judicial agencies, like the IPO, which have acquired expertise because their jurisdiction is confined to specific matters, are generally accorded not only respect, but, at times, even finality if such findings are supported by substantial evidence. (a) the duration, extent and geographical area of any use of the mark, in particular, the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies; (d) the quality-image or reputation acquired by the mark; (e) the extent to which the mark has been registered in the world; The fact that respondents marks are neither registered nor used in the Philippines is of no moment. 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, 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. 60 BLA-IPO Decision:

59 60

Shangri-La International v. Developers Group, G.R. 159931 (March 31, 2006 and January 22, 2007). Sehwani, Inc. v. In-N-Out Burger, Inc., G.R. No. 171053 (2007).

WHEREFORE, premises considered, the Petition for Cancellation is hereby GRANTED. Consequently, Trademark Registration Number 56561 for the trademark "HARVARD VE RI TAS `SHIELD' SYMBOL" issued on November 25, 1993 to PRESIDENT AND FELLOWS OF HARVARD COLLEGE (HARVARD UNIVERSITY) should be CANCELLED only with respect to goods falling under Class 25. On the other hand, considering that the goods of Respondent-Registrant falling under Classes 16, 18, 21 and 28 are not confusingly similar with the Petitioner's goods, the Respondent-Registrant has acquired vested right over the same and therefore, should not be cancelled.

The dispositive portion of the decision of the Office of the Director General, IPO reads:
WHEREFORE, premises considered, the instant appeal is GRANTED. The appealed decision is hereby REVERSED and SET ASIDE. 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. Further, let also the Directors of the Bureau of Trademarks and the Administrative, Financial and Human Resources Development Services Bureau, and the library of the Documentation, Information and Technology Transfer Bureau be furnished a copy of this Decision for information, guidance, and records purposes.

The dispositive portion of the decision of the Court of Appeals reads:


WHEREFORE, premises considered, the petition for review is DENIED. The Decision dated April 21, 2008 of the Director General of the IPO in Appeal No. 14-07-09 Inter Partes Case No. 14-2005-00094 is hereby AFFIRMED.

Indeed, Section 123.1(e) of R.A. No. 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, whether or not it is registered here," cannot be registered by another in the Philippines. Section 123.1(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, it is clearly not necessary that the mark be used in commerce in the Philippines. Thus, while under the territoriality principle a mark must be used in commerce in the Philippines to be entitled to protection, internationally well-known marks are the exceptions to this rule.61

61

Fredco Manufacturing Corporation v. President and Fellows of Harvard College (Harvard University), G.R. No. 185917 (2011).

8. Lawful Unauthorized Use


Section 148. Use of Indications by Third Parties for Purposes Other than those for which the Mark is Used. Registration of the mark shall not confer on the registered owner the right to preclude third parties from using bona fide their names, addresses, pseudonyms, a geographical name, or exact indications concerning the kind, quality, quantity, destination, value, place of origin, or time of production or of supply, of their goods or services: Provided, 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.

A. Collateral Use
There is no challenge here to the findings as to the misleading character of the merchandising methods employed by respondents, nor to the conclusion that they have not only infringed petitioner's trade mark but have also engaged in unfair competition. The controversy here relates to the adequacy of the relief granted, 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. But under the rule of Prestonettes, Inc., v. Coty, supra, 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. Full disclosure gives the manufacturer all the protection to which he is entitled. Mr. Justice Holmes stated, '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. * * * 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. It is not taboo.'62 It is not disputed that Church may specialize in the repair of Volkswagen vehicles. He may also advertise to the effect that he does so, and in such advertising it would be difficult, if not impossible, for him to avoid altogether the use of the word 'Volkswagen' or its abbreviation 'VW,' which are the normal terms which, to the public at large, signify appellant's cars. Although he may advertise to the public that he repairs appellant's cars, 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. Pertinent Factors: The size, style and appearance of the advertising articles and displays were among these factors. 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.63

B. Comparative Advertising
use of anothers trademark to identify the trademark owners 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. v. Sanders, 331 U.S. 125 (1947). Volkswagenwerk Aktiengesellschaft v. Church, 411 F.2d 350 (9th Cir. 1969).

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.64

C. Parody
literary titles do not violate [trademark rights] unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or content of the work. we conclude that MCA's use of Barbie is not an infringement of Mattel's trademark. Under the first prong of Rogers, the use of Barbie in the song title clearly is relevant to the underlying work, namely, the song itself. As noted, the song is about Barbie and the values Aqua claims she represents. The song title does not explicitly mislead as to the source of the work; it does not, explicitly or otherwise, suggest that it was produced by Mattel. A title is designed to catch the eye and to promote the value of the underlying work. 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. 65 For trademark purposes, "[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 marks owner."66 "A parody must convey two simultaneous and contradictory messages: that it is the original, but also that it is not the original and is instead a parody. This second message must not only differentiate the alleged parody from the original but must also communicate some articulable element of satire, ridicule, joking, or amusement. Thus, "[a] parody relies upon a difference from the original mark, presumably a humorous difference, in order to produce its desired effect." 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. The central role which trademarks occupy in public discourse (a role eagerly encouraged by trademark owners), makes them a natural target of parodists. Trademark parodies, even when offensive, do convey a message. The message may be simply that business and product images need not always be taken too seriously; a trademark parody reminds us that we are free to laugh at the images and associations linked with the mark. While such a message lacks explicit political content, that is no reason to afford it less protection under the first amendment. 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, would constitute a serious curtailment of a protected form of expression.67

64 65

Smith v. Chanel, Inc., 402 F.2d 562 (9th Cir. 1968). Mattel v. MCA, 296 F.3d 894 (2002). 66 Louis Vuitton v. Haute Diggity Dog, 507 F.3d 252 (4th Cir. 2007). 67 L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26 (1st Cir.), cert. denied, 483 U.S. 1013 (1987).

a parody depends on lack of confusion to make its point; 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. 68

D. Trademarks as Speech
In technical trademark jargon, the use of words for descriptive purposes is called a fair use, and the law usually permits it even if the words themselves also constitute a trademark. 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- identification function that is the purpose of trademark, it does not constitute unfair competition; such use is fair because it does not imply sponsorship or endorsement by the trademark holder. Where the defendant uses a trademark to describe the plaintiff's product, rather than its own, 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; 2. only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; 3. the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.69

68 69

Smith v. Wal-Mart, 537 F.Supp.2d 1302 (2008). New Kids on the Block v. News America Publishing, 971 F.2d 302 (9th Cir. 1992).

9. 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