IRAC CASE ANALYSIS FORMAT

Issue-Rules-Analysis-Conclusion

WILTON DY and/or PHILITES ELECTRONIC & LIGHTING PRODUCTS, petitioner, vs.

KONINKLIJKE PHILIPS ELECTRONICS, N.V., respondent.

ISSUE Statement

1. Whether the mark used by the respondent (PHILIPS) is registered in the Philippines
2. Whether the mark requested by the petitioner is identical to or confusingly close to
the mark requested by the respondent

RULES, LAWS, REGULATIONS, POLICIES

Republic Act No. [RA] 8293 or the Intellectual Property Code of the Philippines (IP Code):
Sections 123.1 (d), (i) and (iii), 123.1, 147, and 168.

Section 122 of the Intellectual Property Code of the Philippines (IPC) provides that rights to
a mark shall be acquired through registration validity done in accordance with the
provisions of this law.

Section 123. Registrability.- 123.1 A mark cannot be registered if it:

1. Is identical with a registered mark belong 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

Rule 100 (a) of the Rules and Regulations on Trademarks, Service Marks, Tradenames and
Marked or Stamped Containers defines “competent authority” in the following manner:
(c) “Competent Authority” for the purposes of determining whether the mark is well
known, means the Court, the Director General, Director of the Bureau of Legal Affairs, or
any administrative agency or office vested with quasi-judicial or judicial jurisdiction to
hear and adjudicate any action to enforce the rights to a mark.
ANALYSIS OF FACTS

On March 17, 2006, On August 8, 2006,

On April 12, 2000, Koninklije Philips PHILITES filed a Verified
PHILITES filed a electronics (“PHILIPS”) Answer, it states that
trademark covering its filed a Verified Notice of PHILITES & LETTER P
fluorescent bulb, Opposition since it is DEVICE trademark are not
incandescent light, starter contrary to Intellectual similar in terms of spelling,
and ballast. Property Code of the sound and meaning.
Philippines.

On October 7, 2008, the On November 9, 2006, IPP-

Court of Appeals granted On April 16, 2008, the IPP-
DG affirmed the decision of BLA Director Estrellita
Petition to Review the Beltran-Abelardo denied the
Decision dated April 16, IPP-BLA. The appeal of
PHILIPS was dismissed. Opposition filed PHILIPS.
2008.

On December 18, 2008, the On October 25, 2008,

application for trademark PHILITES filed a motion for PHILIPS filed its comment
registration of Wilton Dy Reconsideration which was on June 23, 2009, opposing
and/or Philites Electronic denied in a Resolution the application for
and Lighting Products is issued by the CA on registration of PHILITES.
DISMISSED. December 18, 2008.

The Supreme Court agreed

with the findings of the
Court of Appeals that the
mark PHILITES bears an
uncanny resemblance or
confusing similarity with
PHILIPS.
The Supreme Court
affirmed the findings of CA PHILITES filed its Reply on
as the trademark of November 10, 2009.
PHILIPS is a registered and
well-known mark.
ANALYSIS OF ARGUMENTS AND COUNTER-ARGUMENTS

PETITIONER (PHILITES) RESPONDENT (PHILIPS)

PHILITES trademark application covering The approval of the application of

its fluorescent bulb incandescent light, PHILITES is contrary to provisions of the
starter and ballast. Intellectual Property Code of the
Philippines (IP Code): Sections 123.1 (d),
(i) and (iii), 123.1, 147, and 168
PHILITES & Letter P Device trademark and The trademark will mislead the public over
Respondent’s PHILIPS have a vast an identical or confusingly similar mark of
dissimilarities in terms of spelling, sound PHILIPS.
and meaning.

CONCLUSION:

PHILIPS’ mark is a registered and well-known mark in the Philippines. It is considered by

the competent authority to be well-known internationally and in the Philippines. Thus, it
cannot be registered by another in the Philippines.

Since PHILITES and PHILIPS are both engaged in the same line of business, it is not allowed
to register mark which are nearly of confusingly similar which may likely to deceive or
cause confusion among consumers.