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Intellectual Property Law 134

Trademarks

Prof. Vicente B. Amador
Comparative Table

Copyright Patents Trademarks

Original Technical Visible sign
intellectual solution of a capable of
creations in the problem in any distinguishing
literary or field of human goods or services
artistic domain activity of enterprise

Originality Novelty, Distinctiveness
inventive step
and industrial
applicability
Comparative Table

Reproduction, Making, using, Use in commerce
dramatization, selling, offering without consent
first public for sale and of a mark or a
distribution, importing dominant feature
rental, public in connection
display, public with sale,
performance offering for sale,
other distribution,
communication advertising in a
to public manner likely to
cause confusion
Comparative Table
From creation From filing, From filing,
without any publication, publication,
formality grant grant

During lifetime Twenty years Ten years
and 50 years from filing date renewable
after death without
limitation

Stimulation of Promotion of Protection of
artistic creativity innovation for goodwill and the
for the public free exploitation public against
good confusion
Section 121.1."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; (Sec. 38, R.A. No. 166a)
Is the MGM Roaring Lion registrable as a
trademark in the Philippines?

Is the Harley Davidson roaring engine registrable as
a trademark in the Philippines?
In what ways is a collective mark different from a
trademark?

Section 121.2. "Collective mark" means any
visible sign designated as such in the
application for registration and capable of
distinguishing the origin or any other common
characteristic, including the quality of goods or
services of different enterprises which use the
sign under the control of the registered owner
of the collective mark; (Sec. 40, R.A. No. 166a)
How are trademarks classified based on their
distinctiveness?
Spectrum of Distinctiveness
• Generic – no trademark significance, cannot be
exclusively appropriated except as a part of an
otherwise composite mark, and even then must be
disclaimed, e.g, Kamiseta, Pancake House
• Descriptive – tells us the intended purpose,
function, use,size, desirable characteristics of goods,
nature of goods or effects upon users,
e.g., T-JOISTS for floor and roof systems; self-
laudatory marks like TASTY for bread, CHAP
STICK for lip balm; change of form
notwithstanding, SPECS for spectacles,
DYANSHINE for shoe polish from dye and
shine; KWIKSTART for car batteries; but may
be registrable upon proof of secondary meaning
• Suggestive – indirect or vague reference to
information about the product and requires a
thought process, ROACH MOTEL for
cockroach trap, COPPERTONE for tan oil,
PLAYBOY for magazine, CYCLONE for wire
fence, STRONGHOLD for nails
• Arbitrary or Fanciful – usually coined words,
ROLEX for watches, KODAK for cameras
Why Distinctiveness Matters

Pearl & Dean (Phil.), Incorporated vs. Shoemart,
Incorporated, and North Edsa Marketing,
Incorporated, G.R. No. 148222, August 15, 2003
Issue: TM infringement, Non-distinctive mark
Facts:
6. P&D manufactures advertising display units or
light boxes, which utilize specially printed posters
sandwiched between plastic sheets and illuminated
with back lights.
7. It secured a TM registration for "Poster Ads"
which petitioner's president said was a contraction
of "poster advertising."
3. But the goods covered were "stationeries such as
letterheads, envelopes, calling cards and
newsletters," which P&D did not actually
manufacture.

The SC held:

5. The trademark registration did not cover poster
ads. If at all, the cause of action should have been
for unfair competition, a situation which was
possible even if P & D had no registration.
6. Nonetheless, respondents are not liable for unfair
competition.
3. There was no evidence that P & D's use of "Poster
Ads" was distinctive or has been associated by the
public with P&D by reason of long and exclusive use
in its business. "'Poster Ads' was too generic a name
so it was difficult to identify it with any company.
Hence, in the mind of the public, the goods and
services carrying the trademark "Poster Ads" could
not be distinguished from the goods and services of
other entities.

4. "Poster Ads" cannot acquire secondary meaning.
SOCIETE DES PRODUITS NESTLE, S.A. and NESTLE
PHILIPPINES, INC. vs. COURT OF APPEALS and CFC
CORPORATION, G.R. No. 112012. April 4, 2001.

Nestle’s Marks: MASTER ROAST and MASTER BLEND."
CFC’s Marks: "FLAVOR MASTER"
Nestle filed notice of opposition to CFC’s application for
FLAVOR MASTER

CFC argued that its trademark, FLAVOR MASTER, is not
confusingly similar with the former's trademarks, MASTER
ROAST and MASTER BLEND.
1. MASTER is either a generic or descriptive word Other words
used with the trademarks are very different from each other — in
meaning, spelling, pronunciation, and sound.
Bureau of Patents denied CFC’s trademark application, but CA
reversed its decision and ruled in favor of CFC.

CA held that the physical discrepancies between appellant CFC's
and appellee's respective logos are so ostensible that the casual
purchaser cannot likely mistake one for the other.
Supreme Court reversed the CA:

1. The Court of Appeals applied some judicial precedents which
are not on all fours with this case.

2. In infringement or trademark cases in the Philippines, no set
rules can be deduced in ascertaining whether one trademark is
confusingly similar to or is a colorable imitation of another. Each
case must be decided on its own merits.
3. The cases cited by the Court of Appeals to justify the application
of the totality or holistic test to this case are inapplicable, the factual
circumstances being substantially different.
BIOFERIN and BUFFERIN for pains caused headaches and colds
are spelled and pronounced differently and are prescribed by
physicians
ALACTA for goods under Class 6 for pharmaceutical and
nutritional preparation is distinguishable from ALASKA for goods
under Class 47 for food ingredients. The latter does not require
prescription.

4. "The determination of whether two trademarks are indeed
confusingly similar must be taken from the viewpoint of the
ordinary purchasers who are, in general, undiscerningly rash in
buying the more common and less expensive household products like
coffee, and are therefore less inclined to closely examine specific
details of similarities and dissimilarities between competing
products."
5. MASTER is the dominant feature of opposer's mark.
MASTER is printed predominantly on the label and emphasized
in TV, radio and printed advertising materials with personalities
like Robert Jaworski and Atty. Ric Puno Jr., who are given the
titles Master of the Game and Master of the Talk Show.

6. In addition, the word "MASTER" is neither a generic nor a
descriptive term. As such, said term can not be invalidated as a
trademark and, therefore, may be legally protected. Rather, the
term "MASTER" is a suggestive term brought about by the
advertising scheme of Nestle.

7. The term "MASTER", therefore, has acquired a certain
connotation to mean the coffee products MASTER ROAST and
MASTER BLEND produced by Nestle. As such, the use by CFC
of the term "MASTER" in the trademark for its coffee product
FLAVOR MASTER is likely to cause confusion or mistake or
even to deceive the ordinary purchasers.
What elements of this art design are registrable as
trademarks and how do you classify them in terms of
distinctiveness ?
What elements in this pictorial illustration are
registrable as trademarks in the Philippines and how
do you classify them in terms of distinctiveness?
Trademarks, Patents and Copyright as Subjects of
Commercial Transactions

SECTION 4. Definitions. - 4.1. The term
"intellectual property rights" consists of:
a) Copyright and Related Rights;
b) Trademarks and Service Marks;
c) Geographic Indications;
d) Industrial Designs;
e) Patents;
f) Layout-Designs (Topographies) of Integrated
Circuits; and
g) Protection of Undisclosed Information (n,
TRIPS).
4.2. The term "technology transfer arrangements"
refers to contracts or agreements involving the
transfer of systematic knowledge for the
manufacture of a product, the application of a
process, or rendering of a service including
management contracts; and the transfer, assignment
or licensing of all forms of intellectual property
rights, including licensing of computer software
except computer software developed for mass
market.
Section 150. License Contracts. – 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.
Technology Transfer Arrangement

Section 4.2. The term "technology transfer
arrangements" refers to contracts or agreements
involving the transfer of systematic knowledge for
the manufacture of a product, the application of a
process, or rendering of a service including
management contracts; and the transfer,
assignment or licensing of all forms of intellectual
property rights, including licensing of computer
software except computer software developed for
mass market.
Requirement for Enforceability

Section 92. Non-Registration with the
Documentation, Information and Technology
Transfer Bureau. - Technology transfer
arrangements that conform with the provisions of
Sections 86 and 87 need not be registered with the
Documentation, Information and Technology
Transfer Bureau. Non-conformance with any of the
provisions of Sections 87 and 88, however, shall
automatically render the technology transfer
arrangement unenforceable,
unless said technology transfer arrangement is
approved and registered with the Documentation,
Information and Technology Transfer Bureau under
the provisions of Section 91 on exceptional cases. (n)

Don’ts of IP Licensing

SECTION 87. Prohibited Clauses. - Except in
cases under Section 91, the following provisions shall
be deemed prima facie to have an adverse effect on
competition and trade:
87.1. Those which impose upon the licensee the
obligation to acquire from a specific source
capital goods, intermediate products, raw
materials, and other technologies, or of
permanently employing personnel indicated by
the licensor;
87.2. Those pursuant to which the licensor
reserves the right to fix the sale or resale prices of
the products manufactured on the basis of the
license;
87.3. Those that contain restrictions regarding
the volume and structure of production;
87.4. Those that prohibit the use of
competitive technologies in a non-exclusive
technology transfer agreement;
87.5. Those that establish a full or partial
purchase option in favor of the licensor;
87.6. Those that obligate the licensee to
transfer for free to the licensor the inventions
or
improvements that may be obtained through the use
of the licensed technology;
87.7. Those that require payment of royalties to the
owners of patents for patents which are not used;
87.8. Those that prohibit the licensee to export the
licensed product unless justified for the protection of
the legitimate interest of the licensor such as exports
to countries where exclusive licenses to manufacture
and/or distribute the licensed product(s) have
already been granted;
87.9. Those which restrict the use of the
technology supplied after the expiration of the
technology transfer arrangement, except in
cases of early termination of the technology
transfer arrangement due to reason(s)
attributable to the licensee;
87.10.Those which require payments for
patents and other industrial property rights
after their expiration, termination
arrangement;
87.11.Those which require that the technology
recipient shall not contest the validity of any of
the patents of the technology supplier;
87.12.Those which restrict the research and
development activities of the licensee designed
to absorb and adapt the transferred
technology to local conditions or to initiate
research and development programs in
connection with new products, processes or
equipment;
87.13.Those which prevent the licensee from
adapting the imported technology to local
conditions, or introducing innovation to it, as long
as it does not impair the quality standards
prescribed by the licensor;
87.14.Those which exempt the licensor for liability
for non-fulfillment of his responsibilities under the
technology transfer arrangement and/or liability
arising from third party suits brought about by the
use of the licensed product or the licensed
technology; and
87.15.Other clauses with equivalent effects. (Sec.
33-C (2), R.A 165a)
Do’s of IP Licensing

SECTION 88. Mandatory Provisions. - The
following provisions shall be included in voluntary
license contracts:
88.1. That the laws of the Philippines shall govern
the interpretation of the same and in the event of
litigation, the venue shall be the proper court in the
place where the licensee has its principal office;
88.2. Continued access to improvements in
techniques and processes related to the
technology shall be made available during the
period of the technology transfer arrangement;
88.3. In the event the technology transfer
arrangement shall provide for arbitration, the
Procedure of Arbitration of the Arbitration Law
of the Philippines or the Arbitration Rules of the
United Nations Commission on International
Trade Law (UNCITRAL) or the Rules of
Conciliation and
Arbitration of the International Chamber of
Commerce (ICC) shall apply and the venue of
arbitration shall be the Philippines or any neutral
country; and
88.4. The Philippine taxes on all payments
relating to the technology transfer arrangement
shall be borne by the licensor. (n)
Exceptions to the Don’ts and Do’s
SECTION 91. Exceptional Cases. - In
exceptional or meritorious cases where substantial
benefits will accrue to the economy, such as high
technology content, increase in foreign exchange
earnings, employment generation, regional
dispersal of industries and/or substitution with or
use of local raw materials, or in the case of Board of
Investments, registered companies with pioneer
status, exemption from any of the above
requirements may be allowed by the
Documentation, Information and Technology
Transfer Bureau after evaluation thereof on a case
by case basis. (n)
Not All Marks are Created Equal
You can’t go wrong with a mark like ROLEX

Montres Rolex, S. A. vs. Rolex Scientific Corporation,
SEC Decision, April 28, 2004
Issue: Unauthorized use of Rolex trademark and
trade name
Facts:
6. Petitioner is the registered owner of the trademark
ROLEX for watches in the Phils. and elsewhere.
ROLEX is used as a trade name.
2. ROLEX trademark is registered in numerous
countries worldwide. It is used as part of the
corporate name of a Rolex subsidiary in the Phils.
3. Respondent used and registered ROLEX as part
of its corporate name in the Phils. ahead of the
Rolex subsidiary. Respondent manufactures
laboratory supplies. Respondent claims that
confusion is unlikely because it is using ROLEX
only as part of its corporate name, but not as a
trademark.

Held:
4. Under Sec. 37 of TM Law (and now Sec. 165 of IP
Code), trade names are protected against
subsequent use by a third party in a manner likely
to mislead the public.
2. Sec. 18 of Corp. Code also protects the registered
corporate names of Rolex companies in the Phils. A
corporation’s right to use its corporate name is a
property right, which it may protect against the
whole world.
2. The ROLEX name and mark is known worldwide
as a leading brand or name for timepieces. It is a
world famous mark.
4. Respondent’s argument that confusion is not likely
is unacceptable because “what is sought to be
protected is not the product alone, but the trade
name itself of petitioner.
5. The protection to which the prior user of a
corporate name is entitled is not limited to guarding
its goods or business from actual market competition
with identical or similar products of the parties but
extends to all cases in which the use of the junior
appropriator of the name is likely to lead to confusion
as to source, as where prospective purchasers would
be misled into thinking that the complaining
corporation has extended its business into the field, or
is in any way connected with the activities of the
infringer; or when it forestalls the normal expansion
of its business.
Some Marks are in a Class Above all the Rest
If you have not heard of Intel, you
don’t belong to this century !!!
Everybody Loves Microsoft!!!
You can’t live without it!!!
Why it is given special treatment

Pribhdas J. Mirpuri .vs. Court of Appeals, Director of
Patents and the Barbizon Corporation, G.R. No.
114508. November 19, 1999
Issue: Well-known mark
Facts:
6. Escobar applied with the BPTT for the registration
of the trademark "Barbizon" for use in brassieres
and ladies undergarments. She claimed use of the
mark since 1970.
7. Barbizon opposed the application on the basis of its
use of “Barbizon” for apparel.
8. Escobar prevailed but her registration lapsed
because she failed to file affidavit of use.
4. Barbizon opposed Escobar’s re-application.
Opposition was based on new grounds:
fraudulent registration in 1974, violation of Art.
189 (3) the RPC, protection of well-known mark
under Art. 6bis of Paris Convention
SC held:
3. Opposition is not barred by res judicata because
while the first opposition was only based on
claim of confusing similarity second opposition
was based on new grounds not raised in the first
case.
4. Barbizon’s opposition is anchored on protection
of well-known mark Article under 6bis of the
Paris Convention
3. The “Barbizon” trademark is well-known because:
(a) It has been used as early as 1933 on products such
as robes, pajamas, lingerie, nightgowns and slips;
(b) It was registered with the USPO in 1934 and 1949;
and variations of the same trademark, i.e.,
"BARBIZON" with Bee design and "BARBIZON"
with the representation of a woman were also
registered with the USPO in 1961 and 1976;
(c) It has been used in the Philippines and in many
countries all over the world for over forty years.
(d) "Barbizon" products have been advertised in
international publications and the marks registered in
36 countries worldwide;
Section 123. Registrability. A mark cannot be
registered if it:*
(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;
SECTION 123.Registrability. A mark cannot be
registered if it:*
(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;
Par (e) covers situation where:

•a mark is considered by Philippine authorities to
be well-known internationally and in the Phils.
•the mark may or may not be registered in the
Phils.
•the mark is used for identical or similar goods
and services to those of the rival user
•the well-known mark bars the rival mark
Par (f) covers situation where:

•a mark is considered well-known internationally
and in the Phils.
•such mark is also registered in the Phils.
•the goods or services for which the mark is
registered are not similar to those in respect of
which rival mark is applied for
•well-known mark bars the rival mark if
“connection” with and “prejudice” to owner of
mark are shown
Rule102. Criteria. In determining whether a
mark is well known, the following criteria or
any combination thereof may be taken into
account:
(a) The duration, extent and geographical area
of any use of the mark, in particular, the
duration, extent and geographical area of any
promotion of the mark, including the
advertising or publicity and the presentation at
fairs, or exhibitions, of the goods and services
to which the mark applies;
(b) the market share, in the Philippines and in
other countries, of the goods and 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;
(iv)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
(l) the presence or absence of identical or
similar marks validly registered for or used
on identical or similar goods and services
and owned by persons other than the person
claiming that his mark is a well-known
mark.
Protection of Trade Names
• Paris Convention mandates that member
countries shall protect the trade names of
nationals of other members “without the
obligation of filing or registration”
• Section 18 of the Corporation Code prevents
the use as corporate names of designations
“protected by law”
1. What is the national treatment principle in IP law?

Each WTO member shall accord to nationals of other
Members treatment no less favorable than that which it
accords to its own nationals with regard to the protection of
intellectual property

5. What is the most-favored national treatment in IP law?

With regard to the protection of intellectual property, any
advantage, favor, privilege or immunity granted by
Members to the nationals of any other country shall be
accorded immediately and unconditionally to the nationals
of all other Members.
It doesn’t pay to copy another’s mark
particularly if it’s well known

Section 123. Registrability. A mark cannot be
registered if it:*
(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;
Why do I have to worry about it?

SECTION 123.Registrability. A mark cannot be
registered if it:*
(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;
You are truly something special

Rule102. Criteria. In determining whether a
mark is well known, the following criteria or
any combination thereof may be taken into
account:
(a) The duration, extent and geographical area
of any use of the mark, in particular, the
duration, extent and geographical area of any
promotion of the mark, including the
advertising or publicity and the presentation at
fairs, or exhibitions, of the goods and services
to which the mark applies;
(b) the market share, in the Philippines and in
other countries, of the goods and 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;
(iv)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
(l) the presence or absence of identical or
similar marks validly registered for or used
on identical or similar goods and services
and owned by persons other than the person
claiming that his mark is a well-known
mark.
Call it by any other name and it won’t mean
the same

Section 121.3. "Trade name" means the
name or designation identifying or distinguishing
an enterprise; (Sec. 38, R.A. No. 166a)
A mark can be a trade name and vice versa

ROLEX, KODAK, INTEL, MICROSOFT,
AMAZON, BARBIZON
Protection of Trade Names

• Paris Convention mandates that member
countries shall protect the trade names of
nationals of other members “without the
obligation of filing or registration”
• Section 18 of the Corporation Code prevents
the use as corporate names of designations
“protected by law”
When is it immoral and when deceptive?

Section 165.Trade Names or Business Names. -
165.1. 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.
No registration is required for protection

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.
Enterprise must be be transferred with the trade name

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.
Domain name as a trademark
A name may be a mark
A BENCH is what you wear to sit on one
Is it alright to use your name as a mark when
you’re dead?

Section 123.1. A mark cannot be registered if it*
*(e) Consists of the 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 lifetime of his widow, if
any, except by the written consent of the widow;
What you hear is what you paid for
If TEXT ALOUD doesn’t tell you what
it is, it time to quit this course!!
If a Dragon talks, will you understand
what it says?
Don’t use it if it tells you what the product is
Section 123. A mark cannot be registered if it:
(j) consists exclusively of signs or of indications
that may serve in trade to designate the kind,
quality, quantity intended purpose, value,
geographical origin, time or production of the
goods or the rendering of the services or other
characteristics of the goods or services.
… unless you are ready to use it for the at least
five years before you can claim it as your own

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.
and even then, it’s just prima facie after
five years!!!

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.
If it has a secondary meaning, it must have a
primary

Doctrine of secondary meaning or acquired
distinctiveness
•limited to marks under paragraphs (j),(k) and
(l), and excludes absolutely unregistrable
trademarks
• Phil. Nut Industry Inc. vs. Standard Brands
Inc., GR L-23035, July 31, 1975; PLANTERS
• Ang vs. Teodoro, GR No. L-48226, December
14, 194; ANG TIBAY
It’s the consumer’s mind that counts

Tests of Strength
• Strength refers to the distinctiveness of the
mark
•Fanciful-suggestive-descriptive continuum is
often used to determine strength or weakness
of marks
•It is a question of consumer recognition
•It is not determined by the value of the goods
on which it is used
…and the more users there are, the less
distinctive it is

•Strength is also determined by number of
third-party uses
• e.g., In a crowded field, MRS. OF THE
WORLD is not likely to be confused with
MISS WORLD, Miss World UK vs. Mrs.
American Pageant, Inc. 856 F. 2d 1445
Do you order it single or double?

•A mark may be used singly or in combination
with other marks
e.g., company name is used as house mark in
addition to another mark on labels: SONY
VAIO, KELLOGG POP-TARTS, Kellogg vs.
General Foods Corp., 166 USPQ 27
• Multiple marks may be used together by
multiple users
e.g., lawn mower manufactured by Yardman
and retailed by Sears Roebuck can be
properly identified as “Product of Yardman for
Sears Roebuck, Yardman, Inc. vs. Getz
Exterminators, Inc. 157 USPQ 100
If it’s difficult to remember, it’s better than one
that isn’t

Types of Marks
•Arbitrarily arranged letters given wide
protection
because they are difficult to remember
•An alphanumeric telephone number may be used
a trademark, but if it includes a generic term,
composite mark can be descriptive and may be
protected only upon proof of secondary meaning
•But numbers used to indicate size, capacity,
model or style are not used as trademarks
•Abbreviations and nicknames may function as
marks, e.g., COKE for Coca-Cola, BUD for
Budweiser
•Slogans can serve as marks, e.g.. Where There’s
Life… There’s Bud, but not Soil It-Wash it-
Never-Needs Pressing for apparel
If it is ornamental, keep it as a house decor

Ornamental symbols and designs may serve as
source designations, but not if exclusively
ornamental, e.g., red, white and blue panels on
basketball, In re Soccer Sport Supply Co., 507 F
2d 1400; colored bands around top of men’s
socks is not distinctive, In re Schenectady
Varnish Co., 280 F2d 169; but a mark consisting
of three parallel colored lines of each side of
ADIDAS shoes was registered on proof of
secondary meaning, In re Dassler, 134 USPQ 265
If is useful for practical purposes, it doesn’t
function as a mark

Product and Container Shapes may be
protected under unfair competition law if
following elements are present:
•Non-functionality
•Proof of secondary meaning
•Likelihood of confusion
e.g., shape of classic automobile, Ferrari SpA vs.
McBurnie, 11 USPQ2d 1843; overall design of
sports shoes, L. A. Gear vs. Thom McAn Shoe,
12 USPQ2d 1001
… but if is neither functional nor ornamental, it
might be worth a try

Levi’s pocket tab is a valid trademark, not
primarily functional, and not merely
ornamental, Levi Strauss & Co. vs. Blue Bell,
200 USPQ 434
You can’t appropriate what others need to
compete
If one manufacturer should make an advance
in effectiveness of operation or simplicity of
form, or in utility of color; and if that advance
did not entitle him to a monopoly by means of
a machine or process or a product or a design
patent; and if by means of unfair trade suits he
could shut out other manufacturers who
plainly intended to share in the benefits of
unpatented utilities …
he would be given gratuitously a monopoly more
effective than that of the unobtainable patent in
a ratio of eternity to seventeen years – Pope
automatic Merchandising Co. vs. McCrum-
Howell Co., 191 F. 979, 223 US 730
If the Supreme Court said so, you better believe it!

Functional features cannot be appropriated as
trademarks
• Asia Brewery Inc. vs. San Miguel Corp., July
5, 1993

Territorial character of trademarks
•Philip Morris Inc. et. al. vs. Fortune Tobacco
Corp., July 16, 1993
• But see Section 123(e) * * * 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;