 Differentiate trademark, copyright and name in commerce, is the one

patent from each other. considered the owner thereof (EY

Industrial Sales v. Shen Dar (G.R. No.
As to definition 184850. October 20, 2010).
Trademark is any visible sign capable of  It is ownership of the trademark that
distinguishing goods. confers the right to register.
Registration does not confer
Copyright is an incorporeal right granted by
ownership.
statute to the author or creator of original
 As provided by Section 123 (E) of the
literary and artistic works whereby he is
Intellectual Property Code, a well-
invested for a limited period of time with the
known mark rule only applies to a
right carry out, authorize and prevent the
mark which is well-known
reproduction, distribution, transformation,
internationally and in the Philippines.
rental, public performance and other forms of
 Container of goods which has an
communication of his work to the public.
original ornamental design can be
Patent is any technical solution of any problem registered as a
in any field of human activity which is new, trademark, can be copyrighted, and
requires an inventive step and industrially can be registered as an industrial
applicable design.

As to object, Topic: Patentable Inventions (1989)

the object of trademark are goods; the object  method of improving the tenderness
of copyright are original literary and artistic of meat by injecting an enzyme
works; while the object of patent is invention. solution into the live animal shortly
before a slaughter is patentable
As to term, the term of invention.
trademark is ten years; the term of copyright is  The law prescribes the following
generally 50 years; while the term of patent is elements of patentability: (1) novelty;
20 years from application. (2) inventive step; and (3) industrial
applicability.
As to how acquired,  Section 21 of the R.A. 8293, a
patentable invention is “any technical
trademark is acquired through registration and
solution of a problem in any field of
use; Copyright is acquired from the moment of
human activity which is new,
creation; while Patent is acquired through
involves an inventive step and is
application with the IPO
industrially applicable shall be
patentable. It may be, or may relate
to, a product, or process, or an
Note: improvement of any of the
 The registration of a copyright is only foregoing.”
a proof of the recording of the  the gas-saving device will create an
copyright but not a condition innovation that will lessen the burden
precedent for the copyright to subsist of
and for copyright infringement suit to car owners in spending for large
prosper; whereas, quantity of gas daily.
registration of a trademark is an  First to file Rule: If two or more
indispensable requisite for any persons have made the invention
trademark infringement suit. separately and independently of each
 As ruled by the Supreme Court, the other, the right to patent shall
first one to use the brand or trade belong to the person who filed an
application for such an invention, or

Page 1 of 11
 where two or more applications are  Under Section 21 of the Intellectual
filed for the same invention, to the Property Code the requisites of
applicant who has the earliest filing patentability are:
date, or the earliest priority date. (1) it is any technical solution of a
 The patent shall belong to the problem in any field of human
employer, if the invention is the activity; (2) it is new, involves an
result of the performance of his inventive step and is industrially
regularly-assigned duties, unless applicable; and
there is an agreement, express or (3) it may be, or may relate to, a
implied, to the contrary. But this product, or process, or an
must be proven by the employer. improvement of any of the foregoing.
 Under Section 22.1 of the Intellectual
Topic: Patentable and Non-Patentable
Property Code, discoveries, scientific
Inventions (2010)
theories, and mathematical methods,
 Under Section 21 of the Intellectual and in case of drugs and medicines,
Property Code, any technical solution the mere discovery of a new form or
of a problem in any field of human new property of a known substance
activity which is new, involves an which does not result in the
inventive step and is industrially enhancement of the known efficacy
applicable shall be patentable. On of that substance, or the mere
the other hand Section 22 of the IPC discovery of any new property or new
enumerates non-patentable inventions, use for a known substance, or the mere
one of which is “methods for use of a known process unless such
treatment of the human or animal known process results in a new
body by surgery or therapy and product that employs at least one new
diagnostic methods practiced on the reactant is non-patentable.
human or animal body”.
OWNERSHIP OF A PATENT
Topic: Non-Patentable Inventions (1989)
Topic: Patent; Rights to a Patent (2012)
 Section 22.6 of R.A. No. 8293
 Under Section 30.2 of the Intellectual
provides that anything which is
Property Code, in case the employee
contrary to public order or morality
made the invention in the course of his
shall be excluded from patent
employment contract, the patent shall
protection. In this case, the gambling
belong to the employee, if the
device is prohibited and against
inventive activity is not a part of his
public order. However, if the
regular duties even if the employee
machine is used in legalized
uses the time, facilities and
gambling such as in cases of
materials of the employer.
exclusive use of casinos established
by the government, such device can Topic: Patent; Rights of Patentees;
be patented. Limitations; Prior User (2011)
 Section 22.1 of the Intellectual
 Section 73 of the Intellectual Property
Property Code of the Philippines (IPC)
Code provides that notwithstanding
provides that discoveries, scientific
Section 72 of the same code, any
theories and mathematical methods
prior user, who, in good faith was
are classified as non-patentable
using the invention or has
inventions. In this case, Albert
undertaken serious preparations to
Eintein’s theory of relativity falls
use the invention in his enterprise or
within the category of being non-
business, before the filing date or
patentable “scientific theory”.
priority date of the application on

Page 2 of 11
 which a patent is granted, shall have injunction to enjoin the infringer
the right to continue the use thereof from the use of such patented
as envisaged in such preparations invention. If after a final judgment
within the territory where the is rendered by the Court against
patent produces its effects. the infringer, he repeated the
 As provided by Section 25.1 of the infringement, I will again institute
Intellectual Property Code, any a civil action for damages with a
disclosure of the invention made prayer for the issuance of a writ of
within 12 months before the filing injunction, as well as criminal
date does not prejudice the action for repetition of
application if the disclosure is made infringement.
by the inventor. It is true that an  Under Section 71.1 of the
invention shall not be considered new Intellectual Property Law, the
if it forms part of a prior art and that patentee shall have the exclusive
prior art shall consist of everything right to restrain the
which has been made available to the unauthorized entity from
public anywhere in the world, before making, using offering for sale,
the filing date or the priority date of selling or importing the product
the application claiming the invention. and to prevent or prohibit the
 Section 72.1 of the Intellectual use of the process or from
Property Code, one of the limitations selling, offering for sale or
of patent rights is the use of the importing product obtained
patented product which has been from the process.
put on the market in the Philippines  Under Sections 76.3 and 76.4, of
by the owner of the product insofar the Intellectual Property Law, the
as such use is performed after the patentee has the right to recover
product has been so put on the said damages in a civil action for
market. Since the patent for the water infringement which can be
pump was already registered with the equivalent to royalty or an amount
IPO, Yosha can no longer prevent that does not exceed 3 times the
anyone, even those who were able to amount of actual damages.
get the product before its  Under Section, 76.5 of the
registration, from using it. Intellectual Property Law, the
patentee also has the right to ask
Topic: Patent Infringement (1977)
the court to order that the
 . As counsel for Basilio, I will infringing products or goods be
institute a civil action for destroyed.
infringement with prayer for  It is well-settled that under Section
injunction to enjoin the infringer 122 of the IPC, the rights in a
from the use of the patented trademark are acquired through
invention. Pursuant to Section 46 registration made validly in
of the Intellectual Property Code, accordance with the Intellectual
within 4 years from the Property Code.
commission of acts of  If the shoes are covered by a
infringement, a civil action for Philippine patent (registered)
infringement of patent before issued to the brand owner, the
the proper court to recover from importation of a patented
the infringer damages sustained product without the
by reason of the infringement authorization of the owner of
may be instituted. In the same the patent constitutes
civil action, I will secure an infringement of the patent.

Page 3 of 11
Topic: Infringement; Remedy of the true and infringement, the defendant, in
actual inventor (1993) addition to other defenses available to
him, may show the invalidity of the
 1) The remedies available to Ferdie
patent, or any claim thereof. Hence in
are as follows:
this case, the defendant cannot simply
(a) to restrain the unauthorized entity
allege that the invention was not
from making, using, offering for sale,
patentable but he must show and
selling or importing the product;
provide evidence to support his
(b) to prevent or prohibit the use of
claim.
the process or from selling, offering
 On his second defense, it is an
for sale or importing product obtained
established principle in law that
from the process (Section 71.1, IPL);
violations of special laws are malum
(c) to recover damages in a civil action
prohibitum as opposed to violations
for infringement which can be
of the Revised Penal Code which are
equivalent to royalty or an amount that
mala in se. Hence, a violation of R.A.
does not exceed three (3) times the
No. 8293 does not require intent
amount of actual damages (Sections
unless the law expressly provides. It
76.3 and 76.4, IPL);
is sufficient that there was
(d) to ask that the court to order that
infringement.
the infringing products or goods be
 On his third defense, there is no need
destroyed (Section 76.5, IPL) 2) As
of exact duplication of the patentee’s
lawyer for Johann in the infringement
existing patent such as when the
suit,
improvement made by another is
 I would raise the following defenses:
merely minor. In the case of Aguas v.
(a) that what is claimed as the
De Leon, G.R. No. L- 32160, January
invention is not new or patentable; (b)
30, 1982, the Supreme Court held
that the patent does not disclose the
that to be independently patentable,
invention in a manner sufficiently
an improvement of an existing
clear and complete for it to be carried
patented invention must be a major
out by any person skilled in the art; or
improvement. In this case, his
(c) that the patent is contrary to public
defense that there was only minor
order or morality (Section 61, IPL)
improvement is not sufficient to
Topic: Doctrine of equivalents (2015) exempt him from liability.

 The Court ruled that under the Topic: Compulsory Licensing (2012)
doctrine of equivalents,
 Compulsory Licensing of Inventions
infringement of patent occurs when
which are duly patented may be
a device appropriates a prior
dispensed with or will be allowed
invention by incorporating its
exploitation even without agreement
innovative concept and albeit with
of the patent owner under certain
some modifications and changes
circumstances, like national
which performs the same function
emergency, for reason of public
in substantially the same way to
interest, like national security, etc. The
achieve the same result.
person who can grant such authority is
Topic: Infringement of Patent; Defenses the Director General of the Intellectual
(1992) Property Office.
 Under Sections 93 and 93-A of the
 On his first defense, he alleged that the Intellectual Property Code, the
invention was not patentable. Section Intellectual Property Office may
81 of the Intellectual Property Code grant a compulsory license to
provides that in an action for exploit a patented invention under

Page 4 of 11
 certain circumstances, including the article or substance," or comprise
case where the public interest, in the "genus of which the particular
particular, national security, product is a species," or are
nutrition, health or the development "commonly used as the name or
of other vital sectors of the national description of a kind of goods," or
economy as determined by the "imply reference to every member
appropriate agency of the of a genus and the exclusion of
Government, so requires, provided, individuating characters," or "refer
that adequate remuneration shall be to the basic nature of the wares or
paid to the patent owner. services provided rather than to the
more idiosyncratic characteristics of
Topic: Patents; Assignment of Patents
a particular product," and are not
(1990)
legally protectable. In this case, the
 Section 28 of the Intellectual Property brand name “Axilon” cannot be
Code of the Philippines provides that considered as a generic term because it
the right to a patent belongs to the does not pertain to a genus of which
inventor, his heirs, or assigns. Based the particular product is a species as it
on the facts of the case, Che-che is different from the word “Accilonne”
already assigned her right over the which pertains to a class of antifungal
patent with the corporation in drugs. Furthermore, the possibility of
exchange of shares of stock. confusion among the consumers is
Therefore, the corporation as Che- slim as medical professionals are
che’s assignee has the right over the likely to be cautious in buying
patent application. products they needed in their
profession.
Topic: Trademarks; Objective, Territorial
TRADEMARKS Limits, Registration of a Foreign Trademark,
Topic: Trademarks; Test to Determine Rights of the Owner of a Trademark (1982)
Confusing Similarity Between Marks (1976)  a. The Supreme Court ruled in the case
 Under Section 123.1.a of the of UFC Philippines Inc. v. Barrio
Intellectual Property Code, a mark Fiesta Manufacturing Corporation
cannot be registered if it is identical (G.R. No. 198889, January 20, 2016)
with a registered mark belonging to that the protection of trademarks as
a different proprietor or a mark intellectual property is intended not
with an earlier filing or priority only to preserve the goodwill and
date, in respect of closely related reputation of the business
goods or services, among others. established on the goods bearing the
mark through actual use over a
Topic: Trademark; Generic Terms (1990) period of time, but also to safeguard
the public as consumers against
 Section 121.3 of the Intellectual
confusion on these goods.
Property Code of the Philippines
 b. Trademarks acknowledge no
defines trade name as the name or
territorial boundaries as the
designation identifying or
protection accorded to such
distinguishing an enterprise. As held
trademarks extends to countries
in the case of Societe Des Produits
which are signatories to the Paris
Nestlé v. Court of Appeals, (G.R No.
Convention and Nice Convention in
112012, April 4, 2001), generic terms
view of the reciprocity rule embodied
are those which constitute the
in Section 3 of the Intellectual
common descriptive name of an
Property Code of the Philippines.

Page 5 of 11
 c. No. Prior use in the Philippines is such trademark confers no exclusive
not required before registration but rights in the goods to which the marks
there must be actual use after have been applied. (Wala ak ka gets!)
registration as Section 124.2 of the
Topic: Registration; Prior Use (1985)
Intellectual Property Code of the
Philippines requires that the applicant  As held in Ecole De Cuisine
or the registrant shall file a Manille v. Renaud Cointreau
declaration of actual use of the (G.R. No. 185830, June 5, 2013),
mark with evidence to that effect RA 8293 has already dispensed
within three (3) years from the filing with the requirement of prior
date of the application. Otherwise, actual use at the time of
the application shall be refused or the registration. Further, foreign
mark shall be removed from the marks which are not registered
Register by the Director. in the Philippines are still
 d. No, the owner of a trademark has accorded protection under the
no right of property to prevent Paris Convention. Here, it is of
others from manufacturing, no moment that Rubberworld had
producing, or selling the same been using said trademark since
article to which it is attached. 1969 because prior use is not
Pursuant to Section 147 of the required before registration.
Intellectual Property Code of the The Belgian Corporation must be
Philippines, the owner of a registered given protection in our laws as its
mark shall have the exclusive right country of origin, Belgium, is a
to prevent all third parties not signatory to the Paris Convention,
having the owner's consent from notwithstanding that the Belgian
using in the course of trade identical Corporation has not registered the
or similar signs or containers for trademark “Juggler” in the
goods or services which are identical Philippines.
or similar to those in respect of
which the trademark is registered Topic: Doctrine of Prior use (2015)
where such use would result in a  In E.Y. Industrial Sales v. Shien
likelihood of confusion. In case of the Dar Electricity and Machinery
use of an identical sign for identical (GR No. 184850, October 20,
goods or services, a likelihood of 2010), the Court ruled that, while
confusion shall be presumed. The RA No. 8293 removed the
exclusive right of the owner of a well- previous requirement of proof
known mark which is registered in the of actual use prior to the filing
Philippines, shall extend to goods and of an application for registration
services which are not similar to those of a mark, proof of prior and
in respect of which the mark is continuous use is necessary to
registered: Provided, That use of that establish ownership of
mark in relation to those goods or trademark. Such ownership of
services would indicate a connection the trademark confers the right
between those goods or services and to register the trademark. In this
the owner of the registered mark: case, Chen owns the trademark as
Provided further, That the interests of evidenced by its actual and
the owner of the registered mark are continuous use prior to the Clark
likely to be damaged by such use. In Enterprises. The fact that Clark
other words, the owner of a trademark was the first one to use the mark
has the right to the exclusive use of the here in the Philippines, will not
mark for his own goods or service and

Page 6 of 11
 matter. Chen’s prior actual use the dominant feature of the
of the trademark even in competing trademarks. Big Mak
another country, bars Clark has been held to be confusingly
from applying for the similar with Big Mac and so with
registration of the same McDo and Mcjoy both under the
trademark. Furthermore, Clark as dominancy test (McDonald’s
a mere distributor does not own Corporation vs LC Big Mak
the trademark to the goods he Burger, Inc, GR no. 143993,
distributes, and his right over the August 18, 2004). In this case,
trademark cannot prevail over the applying the above-mentioned
owner. Hence, Chen is the one principle, the holistic test is not
entitled to the registration of the correctly applied. What should be
trademark because of its actual applied is the dominancy test,
and continuous use prior to the wherein the focus Is on the
Clark Enterprises. dominant feature of the competing
trademarks.
Topic: Determinative test that will cause
 In Sketchers, USA, Inc. vs. Inter
confusion (1978)
Pacific Industrial Trading Corp.
 In Acoje Mining Co., Inc. v. (GR No. 164321, 30 November
Director of Patents (G.R. No. L- 2006), a similar case with the
28744, April 29, 1971), the Court problem, used the dominancy test.
provides that the determinative Such test as opposed to Holistic
factor in a contest involving Test, is focused on the similarity
registration of trade mark is not of the prevalent or dominant
whether the challenging mark features of the competing
would actually cause confusion trademarks that might cause
or deception of the purchasers confusion, mistake and
but whether the use of such deception in the mind of the
mark would likely cause purchasing public. It gives more
confusion or mistake on the part consideration to aural and
of the buying public. For visual impressions and giving
purposes of the law, the similarity little weight to factors such as
between the two labels is such that prices, quality, sales outlets and
there is a possibility or likelihood market segments. As for Holistic
of the purchaser of the older brand Test, it necessitates the
mistaking the newer brand for it. consideration of the entirety of the
In the case at hand, there is quite marks. Thus, Dominancy Test is
a difference between soy sauce also used even to inexpensive and
and edible oil. If one is in the common items. In this case, while
market for the former, he is not it is undisputed that the “S”
likely to purchase the latter just mark of Sketchers is within an
because of the trademark LOTUS. oval design while that of IP does
not use the oval, there is still
Topic: Trademarks; Dominancy vs. Holistic infringement because the
Test (2014 dominant feature of the
 In cases involving burger trademark is the “S” as it is that
products, the Supreme Court which catches the eye of the
has consistently applied the purchaser.
dominancy test. Under the
dominancy test, the focus is on

Page 7 of 11
Topic: Dominancy Test (1979) similarity of trademarks. By
copying the design, shape and
 As held by the Court in the
color of N Corporation’s
case of Diaz v. People of the
“Jordann” rubber shoes and
Philippines and Levi Strauss
using the same in its rubber
[Phils.], Inc. (G.R. No.
shoes trademarked “Javorski”,
180677, February 18, 2013),
PK is obviously trying to pass
the dominancy test focuses
off its shoes for those of N.
on the similarity of the main,
 The "test of dominancy" in the
prevalent or essential
Law on Trademarks, is a way
features of the competing
to determine whether there
trademarks that might cause
exists an infringement of a
confusion Company X’s
trademark by focusing on
registered trademark “Rose” is
the similarity of the
on its brandy (wine), while
prevalent features of the
Company Y’s on its bicycle.
competing marks which
It is highly unlikely that the
might create confusion. The
trademarks will cause
dominancy test focuses on the
confusion in the mind of the
similarity of the main,
public.
prevalent or essential features
 The test of dominancy
of the competing trademarks
requires that if the
that might cause confusion.
competing trademark
contains the main or Topic: Trademarks; Well Known Marks;
essential features of another Inter Partes Cases (1981)
and confusion and deception
 Sec. 123.1(e) of R.A. No. 8293 now
is likely to result,
categorically states that "a mark
infringement takes place.
which is considered by the
Duplication or imitation is not
competent authority of the
necessary; nor is it necessary
Philippines to be well- known
that the infringing label should
internationally and in the
suggest an effort to imitate.
Philippines, whether or not it is
Similarly, in size, form and
registered here," cannot be
color, while relevant, is not
registered by another in the
conclusive. (Asia Brewery v.
Philippines.” Therefore, persons who
CA, G.R. 103543, July 5,
may question the mark include
1993)
persons whose internationally well-
 In the case of Converse
known mark, whether or not
Rubber Co. v. Jacinto Rubber
registered, is identical with or
and Plastics Co. (G.R. 27425
confusingly similar to or constitutes a
and 30505, April 28, 1980),
translation of a mark that is sought to
priority in registration is not
be registered or is actually registered.
material in an action for
unfair competition as Topic: Trademarks; Rights Conferred by
distinguished from an action Registration (2016)
for infringement of
trademark. The basis of an  As held in the case of Birkenstock
action for unfair Orthopaedia GMBH vs. Philippine
competition is confusing and Shoe Expo Marketing Corporation
misleading similarity in (GR No. 194307, November 20,
general appearance, not 2013), it is not the application or

Page 8 of 11
 registration of a trademark that exclusive right to use its own
vests ownership thereof, but it is the symbol only to those goods
ownership of a trademark that specified by the first user in the
confers the right to register the certificate, subject to any
same. A trademark is an industrial conditions or limitations stated
property over which its owner is therein. Moreover, the two
entitled to property rights which products are so dissimilar that a
cannot be appropriated by purchaser of one would not be
unscrupulous entities that, in one way misled or mistaken into buying
or another, happen to register such the other.
trademark ahead of its true and lawful
owner. Since YYY is not the owner of
the trademark, it has no right to apply Infringement and remedies Topic: Remedies,
for registration. Registration of Administrative Cancellation of Trademark
trademark, by itself, is not a mode (1984)
of acquiring ownership. It is the
ownership of a trademark that  In Citygroup Inc. v. Citystate
confers the right to register the Savings Bank Inc. (G.R. No.
same. 205409, June 13, 2018), the court
 As held in the case of Birkenstock ruled that modern trade and
Orthopaedia GMBH vs. Philippine commerce demands that
Shoe Expo Marketing Corporation depredations on legitimate
(GR No. 194307, November 20, trademarks of non-nationals
2013), a certificate of registration of including those who have not
a mark, once issued, constitutes shown prior registration thereof
prima facie evidence of the validity should not be countenanced. The
of the registration, of the law against such depredations is
registrant’s ownership of the mark, not only for the protection of the
and of the registrant’s exclusive owner of the trademark but
right to use the same in connection also, and more importantly, for
with the goods or services and those the protection of purchasers
that are related thereto specified in from confusion, mistake, or
the certificate. In the case at hand, deception as to the goods they
applying the above-mentioned are buying. In the case at hand,
principle, prior registration does not the client is a non-national who
create a conclusive assumption that has not shown prior registration of
YYY Engineers is in fact the owner of the mark, nonetheless the law still
the trademark “”TTubes”. It merely protects the rights of such non-
constitutes a prima facie evidence of nationals despite the lack of
the validity of the registration, among prior registration as the modern
others. trade and commerce demands
such protection. Hence, the
Use by third parties of names, etc. foreign corporation may avail of
similar to registered mark the remedy of administrative
cancellation of the trademark even
Topic: Trademark Name; Usage (1994
if its trademark is not registered in
 In the case of Faberge Inc. vs. IAC the Philippines.
(G.R. No. 71189, November 4,
Topic: Trademark; Infringement (1991)
1992), the Supreme Court held
that, the certificate of  The Court in the case of Taiwan
registration issued confers the Kolin Co. v. Kolin Electronics

Page 9 of 11
 (G.R. No. 209843, March 25, 1. Infringement of trademark is
2015), ruled that the emphasis in the unauthorized use of a
determining violation of trademark, whereas unfair
intellectual property right competition is the passing off of
should be on the similarity of one’s goods as those of another;
the products involved and not 2. Fraudulent intent is unnecessary
on the arbitrary classification or in infringement of trademark,
general description of their whereas fraudulent intent is
properties or characteristics. essential in unfair competition;
The Court held that ordinarily and 3. The prior registration of the
intelligent buyer is not likely to trademark is a prerequisite to an
be confused as the products of the action for infringement of
contending parties are relatively trademark, whereas registration of
luxury items not easily considered the trademark is not necessary in
affordable. Accordingly, the unfair competition.
casual buyer is predisposed to be  According to the provisions of
more cautious and discriminating IPC on infringement and unfair
in and would prefer to mull over competition, the similarity
his purchase. between infringement of a
 Without the registration of a trademark and unfair completion
trademark, one who has is that they both disrupt fair
adopted and used a trademark competition among business
on his goods does not prevent enterprises and other
the adoption and use of the same businesses. Moreover, they both
trademark by others for create confusion, mistake, and
products which are of a deception as to the minds of the
different description. In the Pearl consumers with regard to the
& Dean case, it involved the mark source or identity of their
called “Poster Ads.” The SC ruled products or services due to its
that assuming arguendo that similarity in appearance or
"Poster Ads" could validly qualify packaging.
as a trademark, the failure of P &
D to secure a trademark
Topic: Infringement; Jurisdiction (2003)
registration for specific use on the
light boxes meant that there could  An action for infringement or
not have been any trademark unfair competition, as well as the
infringement since registration remedy of injunction and relief for
was an essential element thereof. damages, is within the competence
and jurisdiction of ordinary courts
Topic: Infringement vs. Unfair Competition
(RTC).
(1996)
Topic: Trademark; Trade Name; Infringement
 What is the distinction between
(2011
infringement and unfair
competition?  In trademark infringement, it is
The distinction between required that the following
infringement (presumably elements be present: (1) the mark
trademark) and unfair shall be registered, except in case
competition, as illustrated in the of trade name for it is not required
case of Del Monte Corp. v. CA to be registered for an
(G.R. 78325, January 25, 1990, infringement to arise; (2) the
are as follows:

Page 10 of 11
 mark/name is reproduced, copied,
counterfeited, colorable imitated;
(3) such is used in commerce or in
connection with the sale,
advertising or offer of sale; (4)
such creates a likelihood of
confusion; and (5) lack of consent
from the owner.
Topic: Infringement and Remedies;
trademark infringement (2014)
 In a similar decided case of Ecole
de Cuisine Manille (Cordon Bleu
of the Philippines), Inc. vs.
Renaud Cointreau & Cie (GR No.
185830, 5 June 2013), the high
court explained that foreign
marks that are not registered
are still accorded protection
against infringement and/or
unfair competition under the
Paris Convention for the
Protection of Industrial
Property (PCPIP), when the
state are both parties to the
convention. Also, another ground
for foreign marks to be protected
is to prove that the same is a
well-known mark and both
entities belong to the same class.
Lastly, it can be on the ground that
the trademark owner had use and
adopted the mark before the other.

Topic: Cancellation of Trademarks

(2019)


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