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"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
[A]n intellectual creation that is susceptible to
ownership and ... gives rise to its own elements of jus
posidendi, jus utendi, jus fruendi, jus disponendi, and
jus abutendi, along with the applicable jus lex... The
incorporeal right... is distinct from the property in the
material object subject to it. Ownership in one does
not necessarily vest ownership in the other... [T]he
transfer or assignment of the intellectual property will
not necessarily constitute a conveyance of the thing it
covers, nor would a conveyance of the latter imply the
transfer or assignment of the intellectual right.
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.
"Mark" means any visible sign
capable of distinguishing
capable of distinguishing the goods (trademark) or
services (service mark) of an enterprise and shall
include a stamped or marked container of goods

distinctive
Common-law trademarks, and the right to their
exclusive use, are, of course, 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...
The right grows out of use, not mere adoption.
it is plain that in denying the right of
property in a trademark it was
intended only to deny such property
right except as appurtenant to an
established business or trade in
connection with which the mark is
used.
Trademark rights are
not property rights in
gross
He has no property in that mark per se, any more
than in any other fanciful denomination he may
assume for his own private use, otherwise than with
reference to his trade. If he does not carry on a
trade in iron, but carries on a trade in linen, and
stamps a lion on his linen, another person may
stamp a lion on iron; but when he has appropriated
a mark to a particular species of goods, and caused
his goods to circulate with this mark upon them, the
court has said that no one shall be at liberty to
defraud that man by using that mark, and passing
off goods of his manufacture as being the goods of
the owner of that mark
The spark plugs, though used, are nevertheless
Champion plugs and not those of another make

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.
Source
Identifier
Unknown Source
Brand names mean something, Nicky. Consumers
rely on them to know what they’re getting. They know
the company isn’t going to try to fool them with an
inferior product. They buy a Ford, they know they’re
gonna get a Ford. Not a fuckin' Datsun. Blue Magic
that's a brand name; Like Pepsi, that's a brand name.
I stand behind it, I guarantee it. They know that even if
they don’t know me any more than they know the
chairman of General Mills.- scene from American
Gangster
[W]ith the use of its trade name and trademark,
petitioner and the dealer inform and guarantee to the
public that the products and services are of a
particular standard or quality..... As far as the public
is concerned, it is enough that the establishment
carries exclusively the name and products of
petitioner to assume that the latter is liable for acts
done within the premises
Petron v. Spouses, G.R. 151038 (2012)

Even if the source is unknown - consumers do not care


specifically about the source, they care more about the
qualities and characteristics that they have come to
associate with goods or services emanating from that
source.
Purpose of Trademarks
Economizing function - Identifying origin and quality
will stimulate further purchases. It will lower search
costs and foster quality control

Captures goodwill - imprinting upon the public mind an


anonymous and impersonal guarantee of satisfaction,
creating a desire for further satisfaction

Quality Costs
Modern Trademark Functions

1) Indication or origin or ownership


2) Indication of Quality
3) Advertise
What truly is infringed is the public’s right to be
secure from confusion and the corresponding
right of each trademark’s owner to control its
own product’s reputation - David Berg & Co. v Gatto (884 F.2d
306)
Purpose
1. Protecting consumers from
confusion or deception

2. Encouraging merchants to stand


by their goods or services by
protecting the goodwill they have
developed
Trademark Unfair
Competition
Type of injury Tort (special) Tort (generic)

Development More developed; more


recognized and protected
under the law by the courts

Element False representation to the same


public

Remedies Damages, injunction, same


criminal penalties

Protected Against using a trademark Against any form of


as defined under the law deceptive practice
Against?
Violations Infringement also means UC does not mean
there was UC there was infringement
covered?
Fraudulent Intent Not required Required but may be
inferred
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.

SECTION 168. Unfair Competition, Rights, Regulation and Remedies. — 168.1. A person who has identified in the mind of the public the goods
he manufactures or deals in, his business or services from those of others, whether or not a registered mark is employed, has a property right in the
goodwill of the said goods, business or services so identified, which will be protected in the same manner as other property rights.
168.2. Any person who shall employ deception or any other means contrary to good faith by which he shall pass off the goods manufactured by him
or in which he deals, or his business, or services for those of the one having established such goodwill, or who shall commit any acts calculated to
produce said result, shall be guilty of unfair competition, and shall be subject to an action therefor.
168.3. In particular, and without in any way limiting the scope of protection against unfair competition, the following shall be deemed guilty of
unfair competition:
(a) Any person, who is selling his goods and gives them the general appearance of goods of another manufacturer or dealer, either as to the
goods themselves or in the wrapping of the packages in which they are contained, or the devices or words thereon, or in any other feature of their
appearance, which would be likely to influence purchasers to believe that the goods offered are those of a manufacturer or dealer, other than the actual
manufacturer or dealer, or who otherwise clothes the goods with such appearance as shall deceive the public and defraud another of his legitimate trade,
or any subsequent vendor of such goods or any agent of any vendor engaged in selling such goods with a like purpose;
(b) Any person who by any artifice, or device, or who employs any other means calculated to induce the false belief that such person is offering
the services of another who has identified such services in the mind of the public; or
(c) Any person who shall make any false statement in the course of trade or who shall commit any other act contrary to good faith of a nature
calculated to discredit the goods, business or services of another.
168.4. The remedies provided by Sections 156, 157 and 161 shall apply mutatis mutandis.

SECTION 169. False Designations of Origin; False Description or Representation. — 169.1. Any person who, on or in connection with any goods or
services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of
origin, false or misleading description of fact, or false or misleading representation of fact, which:
(a) Is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another
person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person; or
(b) In commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another
person's goods, services, or commercial activities, shall be liable to a civil action for damages and injunction provided in Sections 156 and 157 of this
Act by any person who believes that he or she is or is likely to be damaged by such act.
169.2. Any goods marked or labelled in contravention of the provisions of this Section shall not be imported into the Philippines or admitted entry
at any customhouse of the Philippines. The owner, importer, or consignee of goods refused entry at any customhouse under this section may have any
Trademark Unfair
Competition

Element misrepresentation same

Range covered limited range but has a broader and more


more recognized inclusive
exclusive right

Wrong invasion of property right fraud

committed

Coverage restricted to its technical all wrongful acts of


meaning competition not
(necessarily) involving TM
rights
(1) Infringement of trademark is the unauthorized use of a
trademark, whereas unfair competition is the passing off of
one's goods as those of another.

(2) In infringement of trademark fraudulent intent is


unnecessary, whereas in unfair competition fraudulent intent
is essential.

(3) In infringement of trademark the prior registration of the


trademark is a prerequisite to the action, whereas in unfair
competition registration is not necessary.
Trademark Infringement

is part of the broader law of

Unfair Competition
Should Trademark Law be associated with
Copyrights and Patents?

Pros 1. Copyrights and patents were used to develop TM doctrines.2. Similar subject matter – embodied the personality of the owner.Cons1. No creation of works2. Copyright and Patents are
concerned with the creation and its protection, whereas TM is concerned with forgery and fraud
Trademarks - 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. A Trade name means the name or
designation identifying or distinguishing an enterprise

Copyrights - confined to literary and artistic works


which are original intellectual creations in the literary
and artistic domain protected from the moment of
their creation

Patents - 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
Trademarks Copyrights Patents

Source identification of goods or Original literary and artistic


Nature Inventions and designs
services expressions

Protect against unauthorized Excludes others from making,


Scope Protect against likelihood of confusion
copying. using or selling the invention

Protects owners and public from Encourages and rewards Encourages and rewards
Purpose
unfair competition. creative expression. innovation.

How to
Registration. Creation Registration
Obtain Rights

Principal
Advantages Prima facie evidence of validity and Prima facie evidence of
Gives rise to Patent rights
of ownership; gives rise to TM rights ownership
Registration

Ownership and actual use Originality


Basis for Novelty, inventive step and
Registration usefulness
Trademarks Copyrights Patents

“®” or “Registered Mark” “Philippine Patent” or


Notice © or “Copyright”
or “Reg.IPOPHL” “Reg.IPOPHL”

20 years, but as long as


Author’s lifetime plus 50
Term of Rights used registrations may be 20 years from filing date
years
renewed

Infringement
Registration required Registration not required Registration required.
Prerequisites

Unauthorized
Infringement Standard Likelihood of confusion Unauthorized copying
manufacture, use or sale
WEAK
STRONG

Trademark Copyright
Patents
Sources of Trademark Law

Philippine Constitution Paris Convention

TRIPS Agreement Madrid Protocol

IP Code

Madrid Protocol
Trademark Regulations
Regulations
In an ascending order roughly reflecting their eligibility
to trademark status and the degree of protection
accorded, the categories of terms are:

Generic
(1) Generic
(2) Descriptive
(3) Suggestive
(4) Arbitrary or Fanciful
In the former case [generic] any claim to an
exclusive right must be denied since this in effect
would confer a monopoly not only of the mark but
of the product by rendering a competitor unable
effectively to name what it was endeavoring to
sell. In the latter case [descriptive] the law strikes
the balance, with respect to registration, between
the hardships to a competitor in hampering the use
of an appropriate word and those to the owner
who, having invested money and energy to endow
a word with the good will adhering to his
enterprise, would be deprived of the fruits of his
efforts.
i. Consumers’ testimony and surveys. ii.Usage as to
how long you have been using the name.iii.
Advertising and volume of sales.

Secondary meaning does not connote a subordinate or


rare meaning. It refers to a subsequent significance
added to the original meaning.. It exists when a
significant number of purchasers understand the term
not merely in its original sense, but also as an
indication of association with a particular entity.
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 applicant’s 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.
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
i. The dictionary definition
ii. The “imagination test" (does the term require
imagination, thought and perception?)iii.
Competitive need (would competitors find the term
useful to describe their similar products?)iv.
Third-party uses (how it has been used by others?)

i. Consumers’ testimony and surveys. ii. Usage as to


how long you have been using the name.iii. Advertising
and volume of sales.
TYPES OF MARKS
1. Composition: words,
slogans, names, symbols
(logos), pictures, combination,
dress.
2. Purpose: goods/services,
association, nature/quality/origin
identifier.
3. Distinctiveness:
(1) Generic
(2) Descriptive
(3) Suggestive
(4) Arbitrary or Fanciful

Filipino Yellow Pages -


Generic test: “What are you?”
Zantarain’s Inc. v. Old Grove Smokehouse, Inc
Examination of Descriptive v. Suggestive

i. The dictionary definition


ii. The “imagination test" (does the term require
imagination, thought and perception?)iii.
Competitive need (would competitors find the term
useful to describe their similar products?)iv.
Third-party uses (how it has been used by others?)
If Descriptive determine Secondary Meaning (Acquired
Distinctiveness)
Philippine Nut Industry -
Used so long and so exclusively; proof of
substantially exclusive and continuous use;
testimonial and documentary (invoices)

International Kennel Club -

i. Consumers’ testimony and surveys. ii.Usage as to


how long you have been using the name.iii.
Advertising and volume of sales.
Trade dress

refers to the distinctive features of a product’s


packaging or the product configuration itself.

“the total image of a product and may include features


such as size, shape, color or color combination,
texture, graphics, or even particular sales techniques.”
Inherently distinctive trade dress may be protected, without
proof that the trade dress has secondary meaning, because:

(1) recovery for trademark infringement was generally available


without proof of a secondary meaning;

(2) there was no persuasive reason to apply different principles


to trade dress, since:
(a) the protections of trademarks and trade dress were both for
the purpose of preventing deception,
(b) no textual basis for different treatment, and
(c) requiring a secondary meaning for inherently distinctive
trade dress would undermine the purposes of the law and could
have anticompetitive effects.
(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
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.
Acquisition of
Ownership
Registration is not a mode of acquiring ownership.
Merely prima facie proof of ownership

Ownership is acquired by adoption and use

Within the Philippines?

Bad Faith Registration


“Trademark rights are not created
by sporadic, casual, and nominal
shipments of goods bearing a mark.
There must be a trade in goods
sold under the mark or at least an
active and public attempt to
establish such a trade.”- P&G v.
Johnson & Johnson (485 F.Supp.
1185)
The rights in a mark shall be acquired through
registration made validly in accordance with the
provisions of this law. (Section 122, IP Code)

The applicant or the registrant shall file a declaration of


actual use of the mark with evidence to that effects
within three (3) years from the filing date of the
application. Otherwise, the application shall be refused
or the mark shall be removed from the Register.
Section 124.2, IP Code)
Acquisition of Ownership

Trademark Trade Name

Use can be
Shangri-La
outside Philippines

Use must be in Use must be in


Isetan
Philippines Philippines

Use can be
outside Philippines Use can be outside
Harvard
for Well-Known Philippines
Marks
A certificate of registration of a mark shall be prima
facie evidence of the validity of the registration, the
registrant’s ownership of the mark, and of the
registrant’s exclusive right to use the same in
connection with the goods or services and those that
are related thereto specified in the certificate (Section
138, IP Code)
A certificate of registration is valid for ten (10) years.
Declaration of Use and Renewal
Sec. 147. Rights Conferred147.1. The owner of a registered
mark shall have the exclusive right to prevent all third parties
not having the owner’s consent from using in the course of trade
identical or similar signs or containers for goods or services
which are identical or similar to those in respect of which the
trademark 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 shall be
presumed.147.2. The exclusive right of the owner of a well-
known mark defined in Subsection 123.1(e) which is registered
in the Philippines, shall extend to goods and services which are
not similar to those in respect of which the mark is registered:
Provided, That use of that 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.
In any suit for infringement, the owner of the registered
mark shall not be entitled to recover profits or
damages unless the acts have been committed with
knowledge that such imitation is likely to cause
confusion, or to cause mistake, or to deceive. Such
knowledge is presumed if the registrant gives notice
that his mark is registered by displaying with the mark
the words "Registered Mark" or the letter R within a
circle or if the defendant had otherwise actual notice of
the registration. (Sec. 158)
The registrant of a trademark ... shall give notice that
the same is registered by displaying with the mark
the words “Registered Mark” or the letter R within a
circle or “Reg.IPOPHL”... (IPO Office Order 187
Series of 2010)
Sec. 165. Trade Names or Business Names165.1. A name or
designation may not be used as a trade name if by its nature or the use
to which such name or designation may be put, it is contrary to public
order or morals and if, in particular, it is liable to deceive trade circles or
the public as to the nature of the enterprise identified by that
name.165.2. (a) Notwithstanding any laws or regulations providing for
any obligation to register trade names, such names shall be protected,
even prior to or without registration, against any unlawful act committed
by third parties.(b) In particular, any subsequent use of the trade name
by a third party, whether as a trade name or a mark or collective mark,
or any such use of a similar trade name or mark, likely to mislead the
public, shall be deemed unlawful.165.3. The remedies provided for in
Sections 153 to 156 and Sections 166 and 167 shall apply mutatis
mutandis.165.4. Any change in the ownership of a trade name shall be
made with the transfer of the enterprise or part thereof identified by that
name. The provisions of Subsections 149.2 to 149.4 shall apply mutatis
mutandis.
• IPV and cancellation
• Competent Authority
• Evidence of well-known
Factors in Determining Well-Known Status

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
applies; 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.
BENEFITS OF
REGISTRATION
The Bureau of Trademarks shall have
the following functions:

Search and examination of the


applications for the registration of marks,
geographic indications and other marks
of ownership and the issuance of the
certificates of registration (Section 9)
A certificate of registration of a mark shall be prima
facie evidence of the validity of the registration, the
registrant’s ownership of the mark, and of the
registrant’s exclusive right to use the same in
connection with the goods or services and those that
are related thereto specified in the certificate (Section
138)
The rights in a mark shall be acquired through
registration made validly in accordance with the
provisions of this law. (Section 122)
A certificate of registration is valid for ten (10) years.
Declaration of Use and Renewal
Sec. 147. Rights Conferred147.1. The owner of a registered
mark shall have the exclusive right to prevent all third parties
not having the owner’s consent from using in the course of trade
identical or similar signs or containers for goods or services
which are identical or similar to those in respect of which the
trademark 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 shall be
presumed.147.2. The exclusive right of the owner of a well-
known mark defined in Subsection 123.1(e) which is registered
in the Philippines, shall extend to goods and services which are
not similar to those in respect of which the mark is registered:
Provided, That use of that 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.
In any suit for infringement, the owner of the registered
mark shall not be entitled to recover profits or damages
unless the acts have been committed with knowledge that
such imitation is likely to cause confusion, or to cause
mistake, or to deceive. Such knowledge is presumed if
the registrant gives notice that his mark is registered by
displaying with the mark the words "Registered Mark" or
the letter R within a circle or if the defendant had
otherwise actual notice of the registration. (Sec. 158)

The registrant of a trademark ... shall give notice that


the same is registered by displaying with the mark
the words “Registered Mark” or the letter R within a
circle or “Reg.IPOPHL”... (IPO Office Order 187
Series of 2010)
Sec. 165. Trade Names or Business Names165.1. A name or
designation may not be used as a trade name if by its nature or the use
to which such name or designation may be put, it is contrary to public
order or morals and if, in particular, it is liable to deceive trade circles or
the public as to the nature of the enterprise identified by that
name.165.2. (a) Notwithstanding any laws or regulations providing for
any obligation to register trade names, such names shall be protected,
even prior to or without registration, against any unlawful act committed
by third parties.(b) In particular, any subsequent use of the trade name
by a third party, whether as a trade name or a mark or collective mark,
or any such use of a similar trade name or mark, likely to mislead the
public, shall be deemed unlawful.165.3. The remedies provided for in
Sections 153 to 156 and Sections 166 and 167 shall apply mutatis
mutandis.165.4. Any change in the ownership of a trade name shall be
made with the transfer of the enterprise or part thereof identified by that
name. The provisions of Subsections 149.2 to 149.4 shall apply mutatis
mutandis.
Sec. 165. Trade Names or Business Names
165.2. (a) Notwithstanding any laws or
regulations providing for any obligation to
register trade names, such names shall be
protected, even prior to or without registration,
against any unlawful act committed by third
parties.
Bars to Registration
Section 123
(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;
Generic Factors
• Dictionary meaning
• Generic use by claimant
and competitors
• Generic use in the media
• Consumer survey
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
immoral scandalous
m) Is contrary to public order or morality.
disparage

deceptive
Rationales for Prohibiting
Scandalous and Immoral
Marks
• Not an attempt to legislate morality
but to avoid using government
time, services and money for such
marks (Free Speech issue?)
• Not to give government stamp of
approval
• Protect consumer sensibilities
Shocking to the sense of truth,
decency or propriety; disgraceful;
offensive; disreputable; giving
offense to the conscience and
moral feelings; calling out for
condemnation; calling out for
condemnation; vulgar
Test
• What is the meaning of the mark?
(In the context of the marketplace
as applied to the goods; not just
per se)
• Is the meaning scandalous to the
substantial composite of the
general public? (In the context of
contemporary attitudes; not just
target consumers)
(a) Who is the targeted group? It’s
usually the group of people
complaining about the mark.
(b) What does the mark mean?
(c) Could the mark disparage a
substantial composite of the
targeted group?
(a) Consists of immoral,
deceptive or scandalous matter,
or matter which may disparage ...
R.A. 8392 (e) Consists
R.A.of166
a mark or
trade-name which, when
(g) Is likely to mislead the applied to or used in
public, particularly as to the
nature, quality, characteristics
connection with the goods,
or geographical origin of the business or services of the
goods or services;
(j) Consists exclusively of
applicant is merely
signs or of indications that descriptive or deceptively
may serve in trade to misdescriptive of them, or
designate the kind, quality, when applied to or used in
quantity, intended purpose, connection with the goods,
value, geographical origin, business or services of the
time or production of the
goods or rendering of the
applicant is primarily
services, or other geographically descriptive or
characteristics of the goods deceptively misdescriptive of
signs or devices (f) Except as expressly
mentioned in excluded in paragraphs
paragraphs (j), (k), (a), (b), (c) and (d) of
and (l), nothing shall this section, nothing
prevent the herein shall prevent the
registration of any registration of a mark or
such sign or device trade-name used by the
which has become applicant which has
distinctive in relation to become distinctive of
the goods for which the applicant's goods,
registration is business or services.
requested as a result
of the use that have
• Deceptive
• Merely Descriptive
• Deceptively Misdescriptive
• Primarily Geographical Descriptive
• Primarily Geographically
Deceptively Misdescriptive

• Primarily Merely a Surname


R.A. No. 8293 did not expressly repeal in
its entirety R.A. No. 166, but merely
provided in Section 239.1 that Acts and
parts of Acts inconsistent with it were
repealed. In other words, only in the
instances where a substantial and
irreconcilable conflict is found between the
provisions of R.A. No. 8293 and of R.A.
No. 166 would the provisions of the latter
be deemed repealed.
Berris v. Abyadang
Issues
• Misleading vs. Deceptive,
Deceptively Misdescriptive,
Geographically Deceptively
Misdescriptive
• Personal Names vs. Merely a
Surname
• Secondary Meaning for
Misleading
Is it Deceptive?
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.
Is it Descriptive or Deceptively
Misdescriptive?
(a) What is the meaning of the mark?
GLASS WAX
(b) What is the product?
The product is a glass cleaner; it does not contain wax.

Conclusion:
Deceptively Misdescriptive
Do we require secondary meaning?
1) Is the term misdescriptive of the character,
quality, function, composition or use of the goods?
Yes.
2) If so, are prospective purchasers likely to believe
the misdescription?
Yes.
3) If so, is the misdescription likely to affect the
decision to buy?
Yes.
Result: Mark is Deceptive
Yes to 1 and 2 mark is deceptively misdescriptive
Yes to only 1 mark is arbitrary
Geographical Marks
(g) Is likely to mislead the public, particularly as
to the nature, quality, characteristics or
geographical origin of the goods or services;

(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;
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.
1. Is the primary significance of the mark a generally
known-geographic location?

2. If so, if there a goods-place association?

3. If so, do the goods come from the place?


1. Is the primary significance of the mark a
generally-known geographic location?
2. If so, do the goods or services not come from
that place?
3. If so, would purchasers be likely to believe
that they originate there?
4. If so, would the representation be a relative
factor in a significant portion of the purchasers'
decision to buy?
Should we equate Misleading:

1) with Deceptive or

2) with Deceptively Misdescriptive and


Geographically Deceptively
Misdescriptive?

3) If yes to 2, do we require secondary


meaning?
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;
True representation of simulation:
gives appearance, effect or
characteristics of the original

A design should be perceived by


the public as a flag, regardless of
whether other matter appears with
or on the flag
REPUBLIC ACT NO. 8491
AN ACT PRESCRIBING THE CODE OF THE NATIONAL
FLAG, ANTHEM, MOTTO, COAT-OF-ARMS AND OTHER
HERALDIC ITEMS AND DEVICES OF THE PHILIPPINES
c) To use the flag:

6) As trademarks, or for industrial, commercial or agricultural


labels or designs.

d) To display the flag:

f) To add any word, figure, mark, picture, design, drawings,


advertisement, or imprint of any nature on the flag;

i) To use, display or be part of any advertisement or


infomercial; and
(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;
to protect rights of privacy and publicity that living
persons have in the designations that identify them

- Does not have to be full name

- applies also to first names, surnames, stage names,


titles, or nicknames, if there is evidence that the name
identifies a specific living individual (e.g. OBAMA
PAJAMA)

- What about PNOY Pajama?


Compare with primarily merely a surname
(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;
(l) Consists of color
alone, unless defined
by a given form;
(l) Consists of color alone, unless defined by a given
form; or
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.
Trade Dress
(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;
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.
Rationale
•Recognition for
Patents Law
•Preserving free
competition
In re Morton-Norwich Products:
The genesis of functionality
law.

De facto vs De jure
functionalityfunctionality
De facto - has some utilitarian
purpose. Every part serves a
functional purpose

De Jure - utility that it constitutes


a “superior” design which
competitors must use to compete
effectively
Evidence of De Jure
Functionality
•Utility Patents
•Advertising Materials
•Unavailable Alternate
Designs
•Simple or cheaper
method
Defenses
•GENERICISM
•ABANDONMENT
Loss of Trademark
Rights
ABANDONMENT

•ACTUAL (NON-USE)
•CONSTRUCTIVE
NON-USE
124.2. The applicant or the registrant shall file a
declaration of actual use of the mark with
evidence to that effect, as prescribed by the
Regulations within three (3) years from the filing
date of the application. Otherwise, the
application shall be refused or the mark shall be
removed from the Register by the Director.
Sec. 145. DurationA certificate of registration
shall remain in force for ten (10) years:
Provided, That the registrant shall file a
declaration of actual use and evidence to that
effect, or shall show valid reasons based on
the existence of obstacles to such use, as
prescribed by the Regulations, within one (1)
year from the fifth anniversary of the date of
the registration of the mark. Otherwise, the
mark shall be removed from the Register by
the Office.
Sec. 146. Renewal146.1. A certificate of
registration may be renewed for periods of ten
(10) years at its expiration upon payment of the
prescribed fee and upon filing of a request.

Sec. 151. Cancellation(c) At any time, if the


registered owner of the mark without legitimate
reason fails to use the mark within the
Philippines, or to cause it to be used in the
Philippines by virtue of a license during an
uninterrupted period of three (3) years or
Sec. 152. None-use of a Mark When Excused152.1.
Non-use of a mark may be excused if caused by
circumstances arising independently of the will of the
trademark owner. Lack of funds shall not excuse non-
use of a mark.152.2. The use of the mark in a form
different from the form in which it is registered, which
does not alter its distinctive character, shall not be
ground for cancellation or removal of the mark and
shall not diminish the protection granted to the
mark.152.3. The use of a mark in connection with
one or more of the goods or services belonging to the
class in respect of which the mark is registered shall
prevent its cancellation or removal in respect of all
other goods or services of the same class.
CONSTRUCTIVE
•ASSIGNMENT IN
GROSS
•NAKED LICENSING
•FAILURE TO POLICE,
LACHES, ESTOPPEL,
ACQUIESCE
Rationale
Divorced from the goodwill of the assignor, the
assignee obtains the symbol, but not the reality.
...The continuity of the thing symbolized by the
mark is broken. Use of the mark by the
assignee in connection with a different goodwill
and product may result in a fraud on the
purchasing public, who reasonably assume that
the mark signifies the same nature and quality
of goods or services, whether used by one
person or another.
Sec. 149. Assignment and Transfer of
Application and Registration149.1. An
application for registration of a mark, or its
registration, may be assigned or transferred
with or without the transfer of the business
using the mark. (n)149.2. Such assignment or
transfer shall, however, be null and void if it is
liable to mislead the public, particularly as
regards the nature, source, manufacturing
process, characteristics, or suitability for their
purpose, of the goods or services to which the
mark is applied.
149.3. The assignment of the application for
registration of a mark, or of its registration, shall be
in writing and require the signatures of the
contracting parties. Transfers by mergers or other
forms of succession may be made by any document
supporting such transfer.149.4. Assignments and
transfers of registration of marks shall be recorded
at the Office on payment of the prescribed fee;
assignment and transfers of applications for
registration shall, on payment of the same fee, be
provisionally recorded, and the mark, when
registered, shall be in the name of the assignee or
transferee.
149.5. Assignments and transfers shall have no
effect against third parties until they are
recorded at the Office.
Rationale
If a trademark owner allows
licensees to depart from his quality
standards, the public will be misled
and the trademark will cease to
have utility as an informational
device.
Naked Licensing

Sec. 150. License Contracts150.1. Any license


contract concerning the registration of a mark,
or an application therefor, shall provide for
effective control by the licensor of the quality of
the goods or services of the licensee in
connection with which the mark is used. If the
license contract does not provide for such
quality control, or if such quality control is not
effectively carried out, the license contract shall
not be valid.
150.2. A license contract shall be submitted to
the Office which shall keep its contents
confidential but shall record it and publish a
reference thereto. A license contract shall have
no effect against third parties until such
recording is effected. The Regulations shall fix
the procedure for the recording of the license
contract.
a) Claimant unreasonably delayed

b) As a result of the delay, defendant


suffered prejudice
Sec. 160. Right of Foreign Corporation to Sue
in Trademark or Service Mark Enforcement
ActionAny foreign national or juridical person
who meets the requirements of Section 3 of
this Act and does not engage in business in the
Philippines may bring a civil or administrative
action hereunder for opposition, cancellation,
infringement, unfair competition, or false
designation of origin and false description,
whether or not it is licensed to do business in
the Philippines under existing laws.
• REGISTRATION OF
TRADEMARKS
• INFRINGEMENT OF
TRADEMARKS
(Sections 155, 156, 157,158 and
170)
Application
Rejection

Opinion and/or
Examination amendment

Allowance for Rejection


Publication reversed

Issuance of Opposition
Certificate
REGISTRATION OF
TRADEMARKS
Bureau of Trademarks (Section 9)

OPPOSITION
Bureau of Legal Affairs (Section 10.1)
CANCELLATION and
INFRINGEMENT
Bureau of Legal Affairs (Section 10.1)

Regular Courts (Sections 151.2 and 161)


A.M. 03-03-03-SC
3. Upon the effectivity of this Resolution, all IP
cases shall be transferred to the designated
Special Commercial Courts except those which
have undergone the pretrial stage in civil cases
or those where any of the accused has been
arraigned in criminal cases which shall be
retained by the court previously assigned to try
them;
Infringement filed first with court or BLA
- excludes others

Cancellation filed first with BLA


- does not exclude the filing of infringement
in court and will not be considered a
prejudicial question

Cancellation filed first with court?


INFRINGEMENT OF
TRADEMARKS
Administrative Bureau of Legal Affairs
Civil Special Commercial
Courts
Criminal
(1) The trademark being infringed is registered; however, in
infringement of trade name, the same need not be registered;(2)
The trademark or trade name is reproduced, counterfeited,
copied, or colorably imitated;(3) The infringing mark or trade
name is used in connection with the sale, offering for sale, or
advertising of any goods, business or services; or the infringing
mark or trade name is applied to labels, signs, prints, packages,
wrappers, receptacles or advertisements intended to be used
upon or in connection with such goods, business or services;(4)
The use or application of the infringing mark or trade name is
likely to cause confusion or mistake or to deceive purchasers or
others as to the goods or services themselves or as to the source
or origin of such goods or services or the identity of such
business; and(5) It is without the consent of the trademark or
trade name owner .
Likelihood of Confusion
Opposition or cancellation
Infringement and/or unfair competition
(Sections 123, 147 and 155)

More than just the possibility of confusion;


probability
“colorable imitation” denotes such a “close or
ingenious imitation as to be calculated to
deceive ordinary persons, or such a
resemblance 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.
Visual Similarity
Examination on 3 levels Phonetic Similarity
Conceptual
Consider class of Similarity
goods and buyers
Likelihood of Confusion
- product and source
- case to case basis
- same as confusingly similar
- apply the trilogy
(sight, sound and meaning)
Dominancy
Holistic or Totality
Dominancy
When a person sees an object, a central or
dominant idea or picture thereof is formed in his
mind. This dominant picture or idea is retained
in the mind, and the decorations or details are
forgotten.

He may notice some variations, but he will


ignore these, believing that they are variations
of the same trademark to distinguish one kind
or quality of goods from another.
Duplication or imitation is not
necessary; nor is it necessary
that the infringing label should
suggest an effort to imitate.
One feature of the mark may be more
significant, which buyer would be more
likely to remember
Part of IP Code
Dominancy
focuses on similarity of the prevalent
features of the competing marks

Holistic or Totality
entirety of the marks in question must be
considered as they appear in their
respective labels or hang tags
Scope of Protection
Non-competing goods may be those which,
though they are not in actual competition,
are so related to each other that it can
reasonably be assumed that they originate
from the manufacturer, in which case,
confusion of business can arise out of the
use of similar marks.
Skechers v. Trendworks

The most successful form of copying is to


employ enough points of similarity to confuse
the public, with enough points of difference to
confuse the courts.