Supplemental lessons in IPC

In the SC decided case of Pearl & Dean, the Court

said there is “no unfair competition in copyrights,” as
it refers to disputes over the use of trademarks.
Even a name or phrase incapable of appropriation as
trademark or trade name may, by long and exclusive
use by a business (such that the same has become
so closely associated with the business or product in
the mind of the purchasing public) be entitled to
Poster ads was too generic a name; it was difficult to
identify it with any company.
This principle prevented the application of the
doctrine of secondary meaning; which means that a
word or phrase originally incapable of exclusive
appropriation with reference to an article in the
market (because it is geographically or otherwise
descriptive) might nevertheless have been used for
so long and so exclusively by one producer with
reference to his article that, in the trade and to that
branch of the purchasing public, the word or phrase
has come to mean that the article was his property.

In trademark infringement – there are two types of

confusion that are likely to arise:
1. Confusion of goods – where a prudent purchaser
is induced to purchase one product in the belief
that he is buying the genuine one, but in reality
the imitation was the one actually bought and
the poor quality badly reflects on the original one
assumed to originate from the genuine thus,
deceiving the public into believing that there is a
connection between the 2 sources/or business

Tests to determine confusing similarity between

marks:
Note: there are no set rules to guide one in
determining whether one trademark is confusingly
similar to or is a colorable imitation of another.
Each case must be probed on its own merits
(depends on the factual milieu of each case):
1. Dominancy Test – focuses on the similarity of the
prevalent features of competing trademarks
which might cause confusion or deception
(infringement is committed). It is not required
that there be an effort to imitate. The aural and
visual impressions created by the mark on the
buyers of goods giving little weight to factors like
prices, quality, sales outlets and market segments.

2. Holistic test – entails probing of the entirety of the

marks as applied to the products, including the
labels/packaging, in determining confusing
similarity. Probe must focus not only on the
predominant words but also on the other features
appearing on both labels in order that one may draw
the conclusion that one is confusingly similar to the
other.
Colorable imitation of a registered mark:
- That which denotes 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 buyer, giving such attention as one usually
gives, as to cause him to buy the one supposing it to
be the other.
-the law disallows use of marks that resembles a
registered mark if such is likely to deceive or cause
confusion
Is there a need to prove actual confusion?
In American Wire and Cable Co. v. Dir of Patents, it
was held that Sec 22 requires the less stringent
standard of ‘likelihood of confusion’ only. While
proof of actual confusion is best evidence of
infringement, its absence is inconsequential.”
Registration of trademark is not a mode of acquiring
ownership. It merely creates prima facie
presumption of
1. the validity of registration
2. registrant’s ownership of trademark
3. registrant’s exclusive right to use thereof
(only presumptive regularity – may be overcome by
evidence to contrary)
Clearly, it is not the application or registration of a
trademark that vests ownership thereof, but it is the
ownership of a trademark that confers the right to
register the same.
Birkenstock established its ownership of the
trademark with the following:
1. Evidence as to origin and history of Birkenstock
2. Its use in commerce long before its registration in
the Phil
3. It proved that it was first adopted in Europe in
1774 by its inventor, Johann Birkenstock, a
shoemaker, along the line of quality footwear
4. Submitted various certificates of registration of
the mark in different countries worldwide including
the Phils
For trademark infringement to succeed – trademark
registration is an essential element.
Patent and copyright registration claimed by a party
over the mark of her beauty products and container
cannot sustain her claim to use the same exclusively
in a suit for trademark infringement. Her copyright
and patent registrations are not the appropriate
intellectual property rights that will give her ample
protection to use exclusively the trademark over her
products and its container.
Trademark, copyright, and patents are different
intellectual property rights that cannot be
interchanged with one another.
Trademark- refers to any visible sign capable of
distinguishing the goods.
Trade name – the name or designation identifying or
distinguishing an enterprise/establishment.
Copyright – scope 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.
Patent – refers to patentable inventions which are
technical solutions to problems in any field of
human activity which is new, involves an inventive
step and is industrially applicable. Patentable
inventions may relate to a product, or process, or an
improvement of any of the foregoing.
Non-Patentable inventions –
1. discoveries, scientific theories and math methods
and in the case of drugs/medicines, the mere
discovery of a new form or new property of a known
substance which does not result in the enhancement
of the known efficacy of that substance, or the mere
discovery of any new property or new use for a
known substance, or the mere use of a known
process unless such known process results in a new
product that employs at least one new reactant.
2. Schemes, rules and methods of performing
mental acts,playing games or doing business, and
programs for computers;
3. Methods for treatment of the human body or
animal body by surgery or therapy and diagnostic
methods practiced on the human or animal body.
4. Plant varieties or animal breeds or essentially
biological processes for the production of plants or
animals.
5. Aesthetic creations
6. Anything contrary to public order or morality.

Elements of patentability:
1. Novelty-new; not forming part of prior art
2 classes of prior art:
a)everything that is already available to the
public not only in the country but
anywhere in the world
 b) those that are subject of the applic for patent
registration- includes the whole contents – utility
model, industrial design registration that are
published in accordance with law filed or effective in
the Phil with a filing or priority date that is earlier
than the filing or priority date of the application are
considered prior art, subject to certain conditions.
2. Inventive step
3. Industrial applicability
Su