…………………continuation

3. Dominancy Test

Asia Brewery Inc. vs. CA, G.R. No. 103543, July 5, 1993
It has been consistently held that the question of infringement of a trademark is to be
determined by the test of dominancy. Similarity in size, form and color, while relevant, is not
conclusive. If the competing trademark contains the main or essential or dominant features
of another, and confusion and deception is likely to result, infringement takes place.
Duplication or imitation is not necessary; nor it is necessary that the infringing label should
suggest an effort to imitate. The question at issue in cases of infringement of trademarks is
whether the use of the marks involved would be likely to cause confusion or mistakes in the
mind of the public or deceive purchasers. There is hardly any dispute that the dominant
feature of SMC's trademark is the name of the product: SAN MIGUEL PALE PILSEN, written
in white Gothic letters with elaborate serifs at the beginning and end of the letters "S" and
"M" on an amber background across the upper portion of the rectangular design. On the
other hand, the dominant feature of ABI's trademark is the name: BEER PALE PILSEN, with
the word "Beer" written in large amber letters, larger than any of the letters found in the SMC
label.

The trial court perceptively observed that the word "BEER" does not appear in SMC's
trademark, just as the words "SAN MIGUEL" do not appear in ABI's trademark. Hence, there
is absolutely no similarity in the dominant features of both trademarks. Neither in sound,
spelling or appearance can BEER PALE PILSEN be said to be confusingly similar to SAN
MIGUEL PALE PILSEN. No one who purchases BEER PALE PILSEN can possibly be deceived
that it is SAN MIGUEL PALE PILSEN. No evidence whatsoever was presented by SMC proving
otherwise.

Phil. Nut Industry vs. Standard, L-23055, July 31, 1975

The questioned mark is confusingly similar because it adopts the work “PLANTERS”, which
is the dominant feature of Standard’s mark. The word PLANTERS printed across the upper
portion of the label in bold letters easily attracts and catches the eye of the ordinary consumer
and it is that word and none other that sticks in his mind when he thinks of salted peanuts.
As a whole it is the word PLANTERS which draws the attention of the buyer and leads him
to conclude that the salted peanuts contained in the two cans originate from one and the
same manufacturer. In fact, when a housewife sends her housemaid to the market to buy
canned salted peanuts, she will describe the brand she wants by using the word PLANTERS
and not "Cordial" nor "Cocktail".

American Wire Cable Co. vs. Director of Patents, G.R. No. L-26557, Feb. 18, 1970It
has been consistently held that the question of infringement of a trademark is to be
determined by the test of dominancy. Similarity in size, form, and color, while relevant, is not
conclusive. If the competing trademark contains the main or essential or dominant features
of another, and confusion and deception is likely to result, infringement takes place.
Duplication or imitation is not necessary, nor is it necessary that the infringing label should
suggest an effort to imitate (C. Neilman Brewing Co. vs. Independent Brewing Co., 191 F.
489, 495, citing Eagle White Lead Co. vs. Pflugh [CC] 180 Fed. 579). The question at issue in
cases of infringement of trademarks is whether the use of the marks involved would be likely
to cause confusion or mistakes in the mind of the public or deceive purchasers." (Go Tiong
vs. Director of Patents, 95 Phil. 1, cited in Lim Hoa vs. Director of Patents, 100 Phil. 214).

In fact, even their similarity in sound is taken into consideration, where the marks refer to
merchandise of the same descriptive properties, for the reason that trade idem
sonans constitutes a violation of trade mark patents.3 Thus, in he case of Marvex Commercial
Co. vs. Hawpia & Co.,4 the registration of the trademark "Lionpas" for medicated plaster was
denied for being confusingly similar in sound with "Salonpas", a registered mark also for
medicated plaster, the Court saying:

Two letters of "SALONPAS" are missing in "LIONPAS" the first letter a and the letter s. Be that
as it may, when the two words are pronounced, the sound effects are confusingly similar.
And where goods are advertised over the radio, similarity in sound is of especial significance
(Co Tiong Sa vs. Director of Patents, 95 Phil. 1, citing Nims, The Law of Unfair Competition
and Trademarks, 4th ed., vol. 2, pp. 678-679). "The importance of this rule is emphasized by
the increase of radio advertising in which we are deprived of help of our eyes and must depend
entirely on the ear (Operators, Inc. vs. Director of Patents, supra.)

Emerald Garments Mfg. Corp. v. Court of Appeals, G.R. No. 100098, December
29, 1995, 251 SCRA 600

Petitioner's trademark is the whole "STYLISTIC MR. LEE." Although on its label the word
"LEE" is prominent, the trademark should be considered as a whole and not piecemeal. The
dissimilarities between the two marks become conspicuous, noticeable and substantial
enough to matter especially in the light of the following variables that must be factored in.

Generic & Descriptive Marks

Question: Why are generic and descriptive terms not registrable?

These types of marks cannot be susceptible for exclusive appropriation

Societe des Produits vs. CA, G.R. No. 112012, April 4, 2001
Generic and Descriptive Marks:
Generic terms are those which constitute "the common descriptive name of an article or
substance," or comprise the "genus of which the particular product is a species," or are
"commonly used as the name or description of a kind of goods," or "imply reference to every
member of a genus and the exclusion of individuating characters," or "refer to the basic
nature of the wares or services provided rather than to the more idiosyncratic characteristics
of a particular product," and are not legally protectable. On the other hand, a term is
descriptive and therefore invalid as a trademark if, as understood in its normal and natural
sense, it "forthwith conveys the characteristics, functions, qualities or ingredients of a
product to one who has never seen it and does not know what it is," or "if it forthwith conveys
an immediate idea of the ingredients, qualities or characteristics of the goods," or if it clearly
denotes what goods or services are provided in such a way that the consumer does not have
to exercise powers of perception or imagination.

Suggestive terms can be registered:

Rather, the term "MASTER" is a suggestive term brought about by the advertising scheme of
Nestle. Suggestive terms are those which, in the phraseology of one court, require
"imagination, thought and perception to reach a conclusion as to the nature of the goods."
Such terms, "which subtly connote something about the product," are eligible for protection
in the absence of secondary meaning. While suggestive marks are capable of shedding "some
light" upon certain characteristics of the goods or services in dispute, they nevertheless
involve "an element of incongruity," "figurativeness," or " imaginative effort on the part of the
observer."

East Pacific Merchandising Corp. vs. Director of Patents, G.R. No. L-14377, Dec. 29,
1960
The term "Verbena" being descriptive of a whole genus of garden plants with fragrant flowers
(Verbenaceae), its use in connection with cosmetic products, wherein fragrance is of
substantial import, evokes the idea that the products are perfumed with the extract of
verbena flowers, or of some oil of similar aroma; and, regardless of other connotations of the
word, the use of the term cannot be denied to other traders using such extract or oils in their
own products. It follows that the Director of Patents correctly held the term to be non-
registerable in the sense that petitioner company would be entitled to appropriate its use to
the exclusion of others legitimately entitled, such as oppositor Pellicer. The denial of
registration is further strengthened by the Director's express findings that petitioner does not
use verbena essences in his products.
 Masso Hermanos vs. Director of Patents, G.R. No. L-3952, Dec. 29, 1953
The word "Cosmopolite" does not give the name, quality or description of the canned fish for
which it is used. It does not even describe the place of origin, for it does not indicate the
country or place where the canned fish was manufactured. it is a very general term which
does not give the kind or quality of the goods. For example, a dealer in shoes cannot register
a trademark "Leather Shoes" because that would be descriptive and it would be right to use
the same words with reference to their merchandise.

The court is, therefore, of the opinion that the registration of the trademark "Cosmopolite"
under Act No. 666 was valid and is subsisting.

Phil. Refining Co. vs. Ng Sam, G.R. No. L-26676, July 30, 1982
It is evident that "CAMIA" as a trademark is far from being distinctive. By itself, it does not
identify petitioner as the manufacturer or producer of the goods upon which said mark is
used, as contra-distinguished to trademarks derived from coined words such as "Rolex",
"Kodak" or "Kotex." It has been held that "if a mark is so commonplace that it cannot be
readily distinguished from others, then it is apparent that it cannot identify a particular
business; and he who first adopted it cannot be injured by any subsequent appropriation or
imitation by others, and the public will not be deceived." |awlibrary

The trademark "CAMIA" is used by petitioner on a wide range of products: lard, butter,
cooking oil, abrasive detergents, polishing materials and soap of all kinds. Respondent
desires to use the same on his product, ham. While ham and some of the products of
petitioner are classified under Class 47 (Foods and Ingredients of Food), this alone cannot
serve as the decisive factor in the resolution of whether or not they are related goods.
Emphasis should be on the similarity of the products involved and not on the arbitrary
classification or general description of their properties or characteristics.chanrobles

Asia Brewery Inc. vs. CA, G.R. No. 103543, July 5, 1993
The words "pale pilsen" may not be appropriated by SMC for its exclusive use even if they are
part of its registered trademark: SAN MIGUEL PALE PILSEN, any more than such descriptive
words as "evaporated milk," "tomato ketchup," "cheddar cheese," "corn flakes" and "cooking
oil" may be appropriated by any single manufacturer of these food products, for no other
reason than that he was the first to use them in his registered trademark. In Masso
Hermanos, S.A. v. Director of Patents, 94 Phil. 136, 139 (1953), it was held that a dealer in
shoes cannot register "Leather Shoes" as his trademark because that would be merely
descriptive and it would be unjust to deprive other dealers in leather shoes of the right to use
the same words with reference to their merchandise. No one may appropriate generic or
descriptive words. They belong to the public domain.

Ong Ai Gui vs. Director of Patents, G.R. No. L-6235, March 28, 1955
The legal question is put up by the claim of the applicant-appellant that while he admits that
the term "nylon" is by itself alone descriptive and generic, what he desires to register is not
the said word alone but the whole combination of "20th Century Nylon Shirts Factory." It is
to be noted in answer to this contention that the Director of Patents has not completely
denied the registration of the whole trade-name. He has made a conditional denial only,
permitting the registration of the name but with the disclaimer of the terms "shirt factory"
and "nylon." The import of the decision is that the trade-name may be registered, but
applicant-appellant may not be entitled to the exclusive use of the terms "shirts factory" and
"nylon" as against any other who may subsequently use the said terms, for the latter are
merely descriptive or general terms, juris publici, incapable of appropriation by any single
individual to the exclusion of others. This is supported by reason and authority.

"A word or a combination of words which is merely descriptive of an article of trade, or of its
composition, characteristics, or qualities, cannot be appropriated and protected as a
trademark to the exclusion of its use by others. The reason for this is that inasmuch as all
persons have an equal right to produce and vend similar articles, they also have the right to
describe them properly and to use any appropriate language or words for that purpose, and
no person can appropriate to himself exclusively any word or expression, properly descriptive
of the article, its qualities, ingredients, or characteristics, and thus limit other persons in the
use of language appropriate to the description of their manufactures, the right to the use of
such language being common to all. This rule excluding descriptive terms has also been held
to apply to trade-names. As to whether words employed fall within this prohibition, it is said
that the true test is not whether they are exhaustively descriptive of the article designated,
but whether in themselves, and as they are commonly used by those who understand their
meaning, they are reasonably indicative and descriptive of the thing intended. If they are
thus descriptive, and not arbitrary, they cannot be appropriated from general use and become
the exclusive property of anyone." (52 Am. Jur. 542-543.)

Doctrine of Secondary Meaning

Exception to rule that generic and descriptive marks are non-registrable. Because such
marks has already deemed popularity such that the public is already accustomed to the
goods that are manufactured by a particular dealer or manufacturer. The first meaning is
unregistrable. But since it has taken another meaning, secondary meaning, it became
registrable.

Phil. Nut Industry vs. Standard, L-23055, July 31, 1975

This Court held that the doctrine is to the effect that a word or phrase originally incapable of
exclusive appropriation with reference to an article on the market, because geographically or
otherwise descriptive, might nevertheless have been used so long and so exclusively by one
producer with reference to his article that, in that trade and to that branch of the purchasing
public, the word or phrase has come to mean that the article was his product.
By way of illustration, is the word "Selecta" which according to this Court is a common
ordinary term in the sense that it may be used or employed by any one in promoting his
business or enterprise, but which once adopted or coined in connection with one's business
as an emblem, sign or device to characterize its products, or as a badge of authenticity, may
acquire a secondary meaning as to be exclusively associated with its products and business,
so that its use by another may lead to confusion in trade and cause damage to its business.
The applicability of the doctrine of secondary meaning to the situation now before Us is
appropriate because there is oral and documentary evidence showing that the word
PLANTERS has been used by and closely associated with Standard Brands for its canned
salted peanuts since 1938 in this country. Not only is that fact admitted by petitioner in the
amended stipulation of facts (see p. 2 of this Decision), but the matter has been established
by testimonial (tsn October 4, 1962, pp. 2-8) and documentary evidence consisting of invoices
covering the sale of "PLANTERS cocktail peanuts". (Exhibits C to C-4; D to D-10; E to E-10;
F to F-2) In other words, there is evidence to show that the term PLANTERS has become a
distinctive mark or symbol insofar as salted peanuts are concerned, and by priority of use
dating as far back as 1938, respondent Standard Brands has acquired a preferential right to
its adoption as its trademark warranting protection against its usurpation by another. Ubi
jus ibi remedium. Where there is a right there is a remedy. Standard Brands has shown the
existence of a property right (Arce Sons & Co. vs. Selecta Biscuit Co., Inc., supra, pp. 262-
263) and respondent Director, has afforded the remedy.

Ang vs. Teodoro, 74 Phil 50 (1942)

We have said that the phrase "Ang Tibay," being neither geographic nor descriptive, was
originally capable of exclusive appropriation as a trade-mark. But were it not so, the
application of the doctrine of secondary meaning made by the Court of Appeals could
nevertheless be fully sustained because, in any event, by respondent's long and exclusive
use of said phrase with reference to his products and his business, it has acquired a
proprietary connotation.
 Arce Sons and Co. vs. Selects Biscuits, 1 SCRA 253 91961)
Although the word SELECTA may be an ordinary or common word in the sense that it may
be used or employed by any one in promoting his business ore enterprise, once adopted or
coined in connection with one’s buseiness as an emblem, sign or device to characterize its
products, or as a

CONVERSE RUBBER CORPORATION, Petitioner, v. UNIVERSAL RUBBER PRODUCTS, INC. and

TIBURCIO S. EVALLE, DIRECTOR OF PATENTS, Respondents. [G.R. No. L-27906. January 8, 1987.]
Respondent's witness had no Idea why respondent chose "UNIVERSAL CONVERSE" as
trademark and the record discloses no reasonable explanation for respondent's use of the
word "CONVERSE" in its trademark. Such unexplained use by respondent of the dominant
word of petitioner's corporate name lends itself open to the suspicion of fraudulent motive to
trade upon petitioner's reputation, thus:
A boundless choice of words, phrases and symbols is available to one who wishes a trademark
sufficient unto itself to distinguish his product from those of others. When, however, there is
no reasonable explanation for the defendant's choice of such a mark though the field for his
selection was so broad, the inference is inevitable that it was chosen deliberately to deceive.

LIM HOA, Petitioner, vs. DIRECTOR OF PATENTS, Respondent.

[G.R. No. L-8072. October 31, 1956.]
The danger of confusion in trademarks and brands which are similar may not be so great in the
case of commodities or articles of relatively great value, such as, radio and television sets, air
conditioning units, machinery, etc., for the prospective buyer, generally the head of the family or a
businessman, before making the purchase, reads the pamphlets and all literature available,
describing the article he is planning to buy, and perhaps even makes comparisons with similar
articles in the market. He is not likely to be deceived by similarity in the trademarks because he
makes a more or less thorough study of the same and may even consult his friends about the relative
merit and performance of the article or machinery, as compared to others also for sale. But in the
sale of a food seasoning product, a kitchen article of everyday consumption, the circumstances are
far different. Said product is generally purchased by cooks and household help, sometimes illiterate
who are guided by pictorial representations and the sound of the word descriptive of said
representation. The two roosters appearing in the trademark of the applicant and the hen appearing
on the trademark of the Oppositor, although of different sexes, belong to the same family of chicken,
known as manok in all the principal dialects of the Philippines, and when a cook or a household help
or even a housewife buys a food seasoning product for the kitchen the brand of “Manok” or “Marca
Manok” would most likely be upper most in her mind and would influence her in selecting the product,
regardless of whether the brand pictures a hen or a rooster or two roosters. To her, they are all manok.
Therein lies the confusion, even deception.
We do not see why applicant could not have stretched his imagination even a little and extended his
choice to other members of the animal kingdom, as a brand to differentiate his product from similar
products in the market.

Well-known Marks (Sec. 123.1)

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;

Sec. 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.

Rule 100 par. C, Trademark Regulations

“Competent authority” for purposes of determining whether a mark is well-known, means
the Court, the Director General, the Director of the Bureau of Legal Affairs, or any
administrative agency or office vested with quasi-judicial or judicial jurisdiction to hear and
adjudicate any action to enforce the rights to a mark

Rule 102, Trademark Regulations

Rule 102. Criteria for determining whether a mark is well-known. 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 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.

Read Corp. vs. Daway, G.R. No. 157216, November 20, 2003

1. 11. Trademark Infringement is a relative concept

Read Canon Kabushiki Kaisha vs. CA, supra and McDonald’s Corp. vs. MACJOY
Fastfood Corp., G.R. No. 166115, February 2, 2007

1. 12. Well-known marks

Sec. 123.1 [e] and [f]

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;

(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;

Sec. 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.

Read Mirpuri vs. CA, supra and McDonalds Corp. vs. L.C. Big Mak, supra

1. 13. Formal Requirement for application of registration

Sec. 124
The application for the registration of the mark shall be in Filipino or in English and shall
contain the following:
(a) A request for registration;
(b) The name and address of the applicant;
(c) The name of a State of which the applicant is a national or where he has domicile; and
the name of a State in which the applicant has a real and effective industrial or commercial
establishment, if any;
(d) Where the applicant is a juridical entity, the law under which it is organized and existing;
(e) The appointment of an agent or representative, if the applicant is not domiciled in the
Philippines;
(f) Where the applicant claims the priority of an earlier application, an indication of:
(i) The name of the State with whose national office the earlier application was filed or it filed
with an office other than a national office, the name of that office,
(ii) The date on which the earlier application was filed, and
(iii) Where available, the application number of the earlier application;
(g) Where the applicant claims color as a distinctive feature of the mark, a statement to that
effect as well as the name or names of the color or colors claimed and an indication, in respect
of each color, of the principal parts of the mark which are in that color;
(h) Where the mark is a three-dimensional mark, a statement to that effect;
(i) One or more reproductions of the mark, as prescribed in the Regulations;
(j) A transliteration or translation of the mark or of some parts of the mark, as prescribed in
the Regulations;
(k) The names of the goods or services for which the registration is sought, grouped according
to the classes of the Nice Classification, together with the number of the class of the said
Classification to which each group of goods or services belongs; and
(l) A signature by, or other self-identification of, the applicant or his representative.

1. 14. Filing date

Sec. 127; 127.2

The filing date of an application shall be the date on which the Office received the following
indications and elements in English or Filipino:
(a) An express or implicit indication that the registration of a mark is sought;
(b) The identity of the applicant;
(c) Indications sufficient to contact the applicant or his representative, if any;
(d) A reproduction of the mark whose registration is sought; and
(e) The list of the goods or services for which the registration is sought.
No filing date shall be accorded until the required fee is paid.

Sec 133. Examination and Publication

Once the application meets the filing requirements of Section 127, the Office shall examine
whether the application meets the requirements of Section 124 and the mark as defined in
Section 121 is registrable under Section 123.
Where the Office finds that the conditions referred to in Subsection 133.1 are fulfilled, it
shall, upon payment of the prescribed fee. Forthwith cause the application, as filed, to be
published in the prescribed manner.

If after the examination, the applicant is not entitled to registration for any reason, the Office
shall advise the applicant thereof and the reasons therefor. The applicant shall have a period
of four (4) months in which to reply or amend his application, which shall then be re-
examined. The Regulations shall determine the procedure for the re-examination or revival
of an application as well as the appeal to the Director of Trademarks from any final action by
the Examiner.

An abandoned application may be revived as a pending application within three (3) months
from the date of abandonment, upon good cause shown and the payment of the required fee.
The final decision of refusal of the Director of Trademarks shall be appealable to the Director
General in accordance with the procedure fixed by the Regulations.

Priority Right of a Foreign Applicant (Sec. 131)

“Making your foreign registration as your local registration. Filing date of local application
for registration is deemed as the filing date of foreign application. But local registration is
conditioned on the foreign registration.”

An application for registration of a mark filed in the Philippines by a person referred to in

Section 3, and who previously duly filed an application for registration of the same mark in
one of those countries, shall be considered as filed as of the day the application was first filed
in the foreign country.

No registration of a mark in the Philippines by a person described in this section shall be

granted until such mark has been registered in the country of origin of the applicant.
Nothing in this section shall entitle the owner of a registration granted under this section to
sue for acts committed prior to the date on which his mark was registered in this
country: Provided, That, notwithstanding the foregoing, the owner of a well-known mark as
defined in Section 123.1(e) of this Act, that is not registered in the Philippines, may, against
an identical or confusingly similar mark, oppose its registration, or petition the cancellation
of its registration or sue for unfair competition, without prejudice to availing himself of other
remedies provided for under the law.

In like manner and subject to the same conditions and requirements, the right provided in
this section may be based upon a subsequent regularly filed application in the same foreign
country: Provided, That any foreign application filed prior to such subsequent application
has been withdrawn, abandoned, or otherwise disposed of, without having been laid open to
public inspection and without leaving any rights outstanding, and has not served, nor
thereafter shall serve, as a basis for claiming a right of priority.

1. 15. Certificate of Registration (Sec. 138)

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.

Read Canon Kabushiki Kaisha vs. CA, supra and Faberge Inc. vs. IAC, 215 SCRA 316
(1992)

1. 16. Duration of the registration - Sec. 145; 146.2

A 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.

1. 17. Rights conferred with registration – Sec. 147; 147.2

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.

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.

1. 18. Limitation of rights – Sec. 148

Use of Indications by Third Parties for Purposes Other than those for which the Mark is Used.
Registration of the mark shall not confer on the registered owner the right to preclude third
parties from using bona fide their names, addresses, pseudonyms, a geographical name, or
exact indications concerning the kind, quality, quantity, destination, value, place of origin,
or time of production or of supply, of their goods or services: Provided, That such use is
confined to the purposes of mere identification or information and cannot mislead the public
as to the source of the goods or services.

Read Canon Kabushiki Kaisha vs. CA

1. 19. Assignment and Transfer of Application and Registration – Sec 149;

149.2;149.4; 149.5

It does not have to be registered; valid between the parties. But to be binding to third persons,
it must be registered with IPO.

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)

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.
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.

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.
Assignments and transfers shall have no effect against third parties until they are recorded
at the Office.

1. 20. License Contracts – Sec. 150; 150.2

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.

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.

1. 21. Cancellation of Registration– Sec. 151; 151.2

A petition to cancel a registration of a mark under this Act may be filed with the Bureau of
Legal Affairs by any person who believes that he is or will be damaged by the registration of
a mark under this Act as follows:

(a) Within five (5) years from the date of the registration of the mark under this Act.

(b) At any time, if the registered mark becomes the generic name for the goods or
services, or a portion thereof, for which it is registered, or has been abandoned, or
its registration was obtained fraudulently or contrary to the provisions of this Act, or if
the registered mark is being used by, or with the permission of, the registrant so as to
misrepresent the source of the goods or services on or in connection with which the
mark is used. If the registered mark becomes the generic name for less than all of the
goods or services for which it is registered, a petition to cancel the registration for only
those goods or services may be filed. A registered mark shall not be deemed to be the generic
name of goods or services solely because such mark is also used as a name of or to identify
a unique product or service. The primary significance of the registered mark to the relevant
public rather than purchaser motivation shall be the test for determining whether the
registered mark has become the generic name of goods or services on or in connection with
which it has been used. (n)

(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 longer.
The court or the administrative agency vested with jurisdiction to hear and adjudicate any
action to enforce the rights to a registered mark shall likewise exercise jurisdiction to
determine whether the registration of said mark may be cancelled in accordance with this
Act. The filing of a suit to enforce the registered mark with the proper court or agency shall
exclude any other court or agency from assuming jurisdiction over a subsequently filed
petition to cancel the same mark. On the other hand, the earlier filing of petition to cancel
the mark with the Bureau of Legal Affairs shall not constitute a prejudicial question
that must be resolved before an action to enforce the rights to same registered mark
may be decided.

In any action involving a registered mark, the court may determine the right to registration,
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. Judgment
and orders shall be certified by the court to the Director, who shall make appropriate entry
upon the records of the Bureau, and shall be controlled thereby. (Sec 161)

There must be an action, an infringement suit, before the court can entertain questions on
registrability

Read Bata Industries Ltd vs. CA, 114 SCRA 318 (1982 and Emerald Garment Mfg., vs.
CA, supra

1. 22. Non-use of Mark when excused – Sec. 152 – 152.4

Non-use of a Mark When Excused.

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.
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.
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.
The use of a mark by a company related with the registrant or applicant shall inure to
the latter’s benefit, and such use shall not affect the validity of such mark or of its
registration: Provided, That such mark is not used in such manner as to deceive the public.
If use of a mark by a person is controlled by the registrant or applicant with respect to the
nature and quality of the goods or services, such use shall inure to the benefit of the
registrant or applicant.

1. 23. Remedies for Infringement – Sec. 155

Any person who shall, without the consent of the owner of the registered mark:
1. (USING) 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

2. (REPRODUCING, COUNTERFEITING, COPYING, COLORABLY IMITATING) 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.

-intent to imitate is immaterial in infringement, unlike in unfair competition

1. 24. Actions, Damages and Injunction for Infringement – Sec. 156 – 158, 170

The owner of a registered mark may recover damages from any person who infringes his
rights, and the measure of the damages suffered shall be either the reasonable profit which
the complaining party would have made, had the defendant not infringed his rights, or the
profit which the defendant actually made out of the infringement, or in the event such
measure of damages cannot be readily ascertained with reasonable certainty, then the court
may award as damages a reasonable percentage based upon the amount of gross sales of the
defendant or the value of the services in connection with which the mark or trade name was
used in the infringement of the rights of the complaining party. (Sec. 23, First Par., R. A. No.
166a)

On application of the complainant, the court may impound during the pendency of the
action, sales invoices and other documents evidencing sales. (n)
In cases where actual intent to mislead the public or to defraud the complainant is shown,
in the discretion of the court, the damages may be doubled. (Sec. 23, First Par., R. A. No.
166)

The complainant, upon proper showing, may also be granted injunction.

Power of Court to Order Infringing Material Destroyed

In any action arising under this Act, in which a violation of any right of the owner of the
registered mark is established, the court may order that goods found to be infringing be,
without compensation of any sort, disposed of outside the channels of commerce in such a
manner as to avoid any harm caused to the right holder, or destroyed; and all labels, signs,
prints, packages, wrappers, receptacles and advertisements in the possession of the
defendant, bearing the registered mark or trade name or any reproduction, counterfeit, copy
or colorable imitation thereof, all plates, molds, matrices and other means of making the
same, shall be delivered up and destroyed.

In regard to counterfeit goods, the simple removal of the trademark affixed shall not be
sufficient other than in exceptional cases which shall be determined by the Regulations, to
permit the release of the goods into the channels of commerce. (Sec. 24, R. A. No. 166a).

Damages; Requirement of Notice

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.

Shangri-la Int’l Hotel Management vs. CA, G.R. No. 111580, June 21, 2001
Following both law and the jurisprudence enunciated in Conrad and Company, Inc. v. Court
of Appeals,22 the infringement case can and should proceed independently from the
cancellation case with the Bureau so as to afford the owner of certificates of registration
redress and injunctive writs. In the same light, so must the cancellation case with the BPTTT
(now the Bureau of Legal Affairs, Intellectual Property Office) continue independently from
the infringement case so as to determine whether a registered mark may ultimately be
cancelled. However, the Regional Trial Court, in granting redress in favor of Developers
Group, went further and upheld the validity and preference of the latter's registration over
that of the Shangri-La Group.
There can be no denying that the infringement court may validly pass upon the right of
registration under Sec 161.

With the decision of the Regional Trial Court upholding the validity of the registration of the
service mark "Shangri-La" and "S" logo in the name of Developers Group, the cancellation
case filed with the Bureau hence becomes moot. To allow the Bureau to proceed with the
cancellation case would lead to a possible result contradictory to that which the Regional
Trial Court has rendered, albeit the same is still on appeal. Such a situation is certainly not
in accord with the orderly administration of justice.

Read Conrad and Company Inc. vs. CA, G.R. No. 115115, 246 SCRA 691[1995]

1. 25. Limitations to Actions for Infringement – Sec. 159

Notwithstanding any other provision of this Act, the remedies given to the owner of a right
infringed under this Act shall be limited as follows:

1. Notwithstanding the provisions of Section 155 hereof, a registered mark shall have no
effect against any person who, in good faith, before the filing date or the priority date,
was using the mark for the purposes of his business or enterprise: 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.

2. 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.

3. Where the infringement complained of is contained in or is part of paid advertisement

in a newspaper, magazine, or other similar periodical or in an electronic
communication, 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. The limitations of
this subparagraph shall apply only to innocent infringers: Provided, That such injunctive
relief shall not be available to the owner of the right infringed 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.

1. 26. Rights of Foreign Corporation to sue in Trademark or Service Mark

Enforcement action- Sec. 160

Any 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.

Read Leviton Industries vs. Salvador, 114 SCRA 420 (1982)

General Garments vs. Director of Patents, 41 SCRA 50 (1971)
La Chemise Lacoste vs. Fernandez, supra
Converse Rubber Corp. vs. Universal Rubber, supra

1. 27. Trade names or business names – Sec. 165 – 165.4

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.

(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.
The remedies provided for in Sections 153 to 156 and Sections 166 and 167 shall
apply mutatis mutandis.

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.

Read Converse Rubber vs. Universal Rubber, supra

- Philips Export vs. CA, 206 SCRA 457 (1992)

1. 28. Goods bearing infringing marks of Trade Names - Sec. 166

No article of imported merchandise which shall copy or simulate the name of any domestic
product, or manufacturer, or dealer, or which shall copy or simulate a mark registered in
accordance with the provisions of this Act, or shall bear a mark or trade name calculated to
induce the public to believe that the article is manufactured in the Philippines, or that it is
manufactured in any foreign country or locality other than the country or locality where it is
in fact manufactured, shall be admitted to entry at any customhouse of the Philippines. In
order to aid the officers of the customs service in enforcing this prohibition, any person who
is entitled to the benefits of this Act, may require that his name and residence, and the name
of the locality in which his goods are manufactured, a copy of the certificate of registration of
his mark or trade name, to be recorded in books which shall be kept for this purpose in the
Bureau of Customs, under such regulations as the Collector of Customs with the approval of
the Secretary of Finance shall prescribe, and may furnish to the said Bureau facsimiles of
his name, the name of the locality in which his goods are manufactured, or his registered
mark or trade name, and thereupon the Collector of Customs shall cause one (1) or more
copies of the same to be transmitted to each collector or to other proper officer of the Bureau
of Customs.

1. 29. Unfair competition, rights, regulations and remedies – Sec. 168

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.

WHO MAY BE CHARGED WITH UNFAIR COMPETITION?

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 (ABOUT GOODS);

(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 (ABOUT SERVICES); 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.
The remedies provided by Sections 156, 157 and 161 shall apply mutatis mutandis.

DISTINCTION BETWEEN INFRINGEMENT AND UNFAIR COMPETITION:

(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.

read Proline Sports Center vs. CA, 281 SCRA 162

- American Wire vs. Director of Patents, 31 SCRA 544

1. 30. False Designations of Origin, False Description or representation – Sec. 169

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 likely to be damaged by
such act.

Any goods marked or labeled 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 recourse under the customs revenue laws or may have the remedy given by
this Act in cases involving goods refused entry or seized.

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