Limitations to Actions for Infringement.

What does not constitute infringement? Under Sec. 159.1 a registered mark shall have no effect against
any person who:
1. in good faith,
2. before the filing date or the priority date,
3. was using the mark for the purposes of his business or enterprise:
4. Provided, That his right may only be transferred or assigned together with his enterprise or business
or with that part of his enterprise or business in which the mark is used.

Let’s say, this mark already registered to X and have been using it on his product. Yun pla si Z has been
using exactly this same mark even before for his pancit canton. So when X found that Z has been using it
for his pancit canton, can he sue for infringement? If Z had been using it long before the filing date, then
Z cannot be sued for infringement. Now look at this “Provided, That his right may only be transferred or
assigned together with his enterprise or business xxx” earlier we look at a provision which says assign
you trademark, you do not have to assign your good to it. But if this person Z, had been using this mark
of X wants to sell his pancit canton business, he cannot sell the mark because he does not own the mark.
If he wants to transfer it, it must go with the business and the transferee or assignee can still use the
same mark but only for pancit canton.

Now, xmpre no ung mga packaging involves printing. Ung mga advertisement.
Sec. 159.2 states where an infringer who is engaged solely in the business of printing the mark or other
infringing materials for others is an innocent infringer, the owner of the right infringed shall be entitled
as against such infringer only to an injunction against future printing.

Nagdala lng ng template si X, malay ba ni printer if this is an infringing mark. So the printer, he was only
ask to print. He is an innocent infringer. What can the registered owner do? Just stop the printer from
printing the infringing materials.

What if the infringement is contained or is part of a paid advertisement a newspaper, magazine, or

other similar periodical or in an electronic communication. Nasa internet na, Philippine star, inquirer.
The remedies of the owner of the right infringed as against the publisher or distributor of such
newspaper, magazine, or other similar periodical or electronic communication shall be limited to an
INJUNCTION against the presentation of such advertising matter in future issues of such newspapers,
magazines, or other similar periodicals or in future transmissions of such electronic communications.

This is not against accomplices of the crime. The publisher only prints. Magbabayad lng ng fee if gusto
magpapublish dba.

Injunctive relief shall NOT be available to the owner of the right infringed meaning the registered owner,
with respect to an issue of a newspaper, magazine, or other similar periodical or an electronic
communication containing infringing matter where restraining the dissemination of such infringing
matter in any particular issue of such periodical or in an electronic communication would delay the
delivery of such issue, or transmission of such electronic communication is customarily conducted in
accordance with the sound business practice, and not due to any method or device adopted to evade
this section, or to prevent or delay the issuance of an injunction or restraining order with respect to such
infringing matter.

Sec. 160 the same as patents. What can a foreign entity do? File a case 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.

Lets go to this. Authority to determine the right to registration.

Dba opposition cases & cancellation cases are filed with BLA. What do you normally file in court?
Infringement cases. The court will determine the right to registration or order the cancellation of a
registration, in whole or in part, and otherwise rectify the register with respect to the registration of any
party to the action in the exercise of this.

The court then again can cancel trademark registration and infringement case.

Judgment and orders shall be certified by the court to the Director of trademarks, who shall make
appropriate entry upon the records of the Bureau, and shall be controlled thereby.

So no need to go to another cancellation case with BLA.

Lets go to some cases:

CANON KABUSHIKI KAISHA v. CA

NSR Rubber filed an application for registration of the mark CANON. You know this as a brand for
camera. NSR Rubber filed an application for registration of the mark CANON for SANDALS. An
Opposition was filed by CANON KABUSHIKI KAISHA [CKK], a foreign corporation duly organized and
existing under the laws of Japan, alleging that it will be damaged by the registration of the trademark
CANON in the name of NSR.
The evidence presented by CKK consisted of its certificates of registration for the mark CANON in various
countries covering goods belonging to class 2 consisting of paints, chemical products, toner, and dye
stuff. And it has Philippine Trademark Registration No. 39398, showing its ownership over the trademark
CANON also under class 2.
CKK alleges that it is entitled to exclusive use of the mark CANON because it is its trademark and is used
also for footwear. Naka.register xa sa with paint but they also have footwear.
BLA dismissed the opposition of CKK and gave due course to NSR's application for the registration of the
trademark CANON. What is this? This is paragraph D of Sec. 123.
According to the SC, there is a world of difference between the paints, chemical products, toner, and
dyestuff of CKK and the sandals of NSR.
Then another case. “Gold Toe” and “Gold Top”. Cluett Peabody (a New York corporation) claims
exclusive ownership of the trademark GOLD TOE as used on men's socks and it is registered here in the
Philippines. And here comes Amigo who was able to get registration for GOLD TOP also for men’s socks.
Medyas ng lalaki ba. (everyone laughs! ☺) Cluett filed a case against Amigo for cancellation of
trademark. According to Amigo, how can Gold toe and Gold top confusingly similar? But SC said they are
confusingly similar and besides they are both for men’s socks. Buti sana kung ibang product ung Gold
top. So registration of Amigo was cancelled.

Let me just go through the list. There is this case Prosource vs Horphag  where the SC listed all those
confusingly similar sounding names although not identical but this is for the same products.
1. Salonpas & Lionpas, what is the popular one, salonpas dba, lionpas not allowed registration.
2. Gold Dust & Gold Drop, confusingly similar but I don’t know what product.
3. “Jantzen” and “Jass-Sea”, confusingly similar
4. “Silver Flash” and Supper Flash”
5. “Cascarete” and “Celborite” remember, we are talking about same products.
6. “Celluloid” and “Cellonite”
7. “Cutex” and “Cuticlean”, what is popular one? cutex.
8. “Hebe” and “Meje”
9. “Kotex” and “Femetex”
10. “Zuso” and Hoo Hoo.”
11. “Yusea” and “U-C-A,”
12. “Steinway Pianos” and “Steinberg Pianos,”

The subject of this case is the term PYCNOGENOL, a food supplement manufactured by Horphag ,
Switzerland and distributed by Zuellig Pharma. Prosource of the Philippines wanted to register PCO-
GENOLS. According to SC, NO. what did the Prosource do? They change it. Sabi ng SC, uu you can change
it but still you committed acts of infringement.

Before we go, there is still important case that I want to discuss. These are two cases.
This is the case of Shangri-la vs CA. Now, in 1988, the Shangri-la Group, this is the Shangri-la Hotels,
Makati Shangri-la & Edsa Shangri-la filed a petition for cancellation of the registration of the “Shangri-
La” mark and “S” device/logo. Apparently, before the Shangri-la group entered in the Philippines, the
first hotel that they build was Edsa Shangri-la then the Makati Shangri-la. But previous to that there was
already another group, DGC (Developers Group of Companies) able to register that term Shangri-la & S-
logo.