2018 BAR EXAMINATIONS - MERCANTILE LAW

1. A distinctive-tasting pastillas is well-known throughout the

country as having been developed within a close-knit women's
group in Barangay San Ysmael which is located along a very busy
national highway. Its popularity has encouraged the setting up of
several shops selling similar delicacies, with the most famous
product being the pastillas of "Barangay San Ysmael." Eventually,
the pastillas of Aling Voling under the brand name "Ysmaellas"
began to attract national distinction. Aling Voling therefore
registered it as a copyright with the National Library. Her neighbor,
Aling Yasmin, realizing the commercial value of the brand, started
using the term "Ysmaellas" for her pastillas but used different
colors. Aling Yasmin registered the brand name "Ysmaellas" with
the Intellectual Property Office (IPO).

(a) Can Aling Voling successfully obtain court relief to prohibit Aling
Yasmin from using the brand name "Ysmaellas" in her products on
the basis of her (Aling Yoling's) copyright? What is the difference
between registration as a copyright and registration as a trade or
brand name? (2.5%)

(b) Can Aling Yasmin seek injunctive relief against Aling Voling
from using the brand name "Ysmaellas," the latter relying on the
doctrine of "prior use" as evidenced by her prior copyright
registration? (2.5%)

(c) Can Aling Voling seek the cancellation of Aling Yasmin's

trademark registration of the brand name "Ysmaellas" on the
ground of "Well Known Brand" clearly evidenced by her (Aling
Yoling's) prior copyright registration, actual use of the brand, and
several magazine articles? (2.5%)

2016 BAR EXAMINATIONS - MERCANTILE LAW

2. ABC Appliances Corporation (ABC) is a domestic corporation

engaged in the production and sale of televisions and other
appliances. YYY Engineers, a Taiwanese company, is the
manufacturer of televisions and other appliances from whom ABC
actually purchases appliances. From 2000, when ABC started
doing business with YYY, it has been using the mark "TTubes" in
the Philippines for the television units that were bought from YYY.
In 2015, YYY filed a trademark application for "TTubes." Later, ABC
also filed its application. Both claim the right over the trademark
"TTubes" for television products. YYY relies on the principle of "first
to file" while ABC involves the "doctrine of prior use."
[a] Does the fact that YYY filed its application ahead of ABC mean
that YYY has the prior right over the trademark? Explain briefly.
(2.5%)

[b] Does the prior registration also mean a conclusive assumption

that YYY Engineers is in fact the owner of the trademark "TTubes?"
Briefly explain your answer. (2.5%)

3. X's "MINI-ME" burgers are bestsellers in the country. Its "MINI-

ME" logo, which bears the color blue, is a registered mark and has
been so since the year 2010. Y, a competitor ofX, has her own
burger which she named "ME-TOO" and her logo thereon is printed
in bluish-green. When X sued Y for trademark infringement, the trial
court ruled in favor of the plaintiff by applying the Holistic Test. The
court held that Y infringed on X's mark since the dissimilarities
between the two marks are too trifling and frivolous such that Y's
"ME-TOO," when compared to X's "MINI-ME," will likely cause
confusion among consumers.

Is the application of the Holistic Test correct? (5%)

2015 BAR EXAMINATIONS - MERCANTILE LAW

4. In what ways would a case for infringement of trademark be

different from a case for unfair competition? (3%)

5. CHEN, Inc., a Taiwanese company, is a manufacturer of tires

with the mark Light Year. From 2009 to 2014, Clark Enterprises, a
Philippine registered corporation, imported tires from CHEN, Inc.
under several sales contracts and sold them here in the Philippines.
In 2015, CHEN, Inc. filed a trademark application with the
Intellectual Property Office (IPO) for the mark Light Year to be used
for tires. The IPO issued CHEN, Inc. a certificate of registration
(COR) for said mark. Clark Enterprises sought the cancellation of
the COR and claimed it had a better right to register the mark Light
Year. CHEN, Inc. asserted that it was the owner of the mark and
Clark Enterprises was a mere distributor. Clark Enterprises argued
that there was no evidence on record that the tires it imported from
CHEN, Inc. bore the mark Light Year and Clark Enterprises was
able to prove that it was the first to use the mark here in the
Philippines. Decide the case. (4%)

2014 BAR EXAMINATIONS - COMMERCIAL LAW

6. Jinggy went to Kluwer University(KU) in Germany for his
doctorate degree (Ph.D.). He completed his degree with the highest
honors in the shortest time. When he came back, he decided to set-
up his own graduate school in his hometown in Zamboanga. After
seeking free legal advice from his high-flying lawyer-friends, he
learned that the Philippines follows the territoriality principle in
trademark law, i.e., trademark rights are acquired through valid
registration in accordance with the law. Forth with, Jinggy named
his school the Kluwer Graduate School of Business of Mindanao
and immediately secured registration with the Bureau of
Trademarks. KU did not like the unauthorized use of its name by its
top alumnus no less. KU sought your help. What advice can you
give KU? (4%)

7. Skechers Corporation sued Inter-Pacific for trademark

infringement, claiming that Inter-Pacificused Skechers’ registered
"S" logo mark on Inter-Pacific’s shoe products without its consent.
Skechers has registered the trademark "SKECHERS" and the
trademark "S" (with an oval design) with the Intellectual Property
Office (IPO).

In its complaint, Skechers points out the following similarities: the

color scheme of the blue, white and gray utilized by Skechers. Even
the design and "wave-like" pattern of the mid-sole and outer sole of
Inter Pacific’s shoes are very similar to Skechers’ shoes, if not
exact patterns thereof. On the side of Inter-Pacific’s shoes, near the
upper part, appears the stylized "S" placed in the exact location as
that of the stylized "S" the Skechers shoes. On top of the "tongue"
of both shoes, appears the stylized "S" in practically the same
location and size.

In its defense, Inter-Pacific claims that under the Holistic Test, the
following dissimilarities are present: the mark "S" found in Strong
shoes is not enclosed in an "oval design"; the word "Strong" is
conspicuously placed at the backside and insoles; the hang tags
labels attached to the shoes bear the word "Strong" for Inter-Pacific
and "Skechers U.S.A." for Skechers; and, Strong shoes are
modestly priced compared to the costs of Skechers shoes.

Under the foregoing circumstances, which is the proper test to be

applied – Holistic or Dominancy Test? Decide. (4%)

2012 BAR EXAMINATIONS - MERCANTILE LAW

8. The "test of dominancy" in the Law on Trademarks, is a way to

determine whether there exists an infringement of a trademark by –
(a) determining if the use of the mark has been dominant in the
market.
(b) focusing on the similarity of the prevalent features of the
competing marks which might create confusion.
(c) looking at the mark whether they are similar in size, form or
color.
(d) looking at the mark whether there is one specific feature that is
dominant.

2011 BAR EXAMINATIONS - MERCANTILE LAW

9. "Eagleson Refillers, Co.," a firm that sells water to the public,

opposes the trade name application of "Eagleson Laundry, Co.," on
the ground that such trade name tends to deceive trade circles or
confuse the public with respect to the water firm’s registered trade
name. Will the opposition prosper?

(A) Yes, since such use is likely to deceive or confuse the public.
(B) Yes, since both companies use water in conducting their
business.
(C) No, since the companies are not engaged in the same line of
business.
(D) No, since the root word "Eagle" is a generic name not subject to
registration.

10. T is the registered trademark owner of "CROCOS" which he

uses on his ready-to-wear clothes. Banking on the popularity of T's
trade mark, B came up with his own "CROCOS" mark, which he
then used for his "CROCOS" burgers. T now sues B for trademark
infringement but B argues that his product is a burger, hence, there
is no infringement. Is B correct?

(A) No, since the owner of a well-known mark registered in the

Philippines has rights that extends even to dissimilar kinds of
goods.
(B) Yes, since the right of the owner of a well-known mark
registered in the Philippines does not extend to goods which are
not of the same kind.
(C) Yes, as B was in bad faith in coming up with his own
"CROCOS" mark.
(D) No, since unlike T, he did not register his own "CROCOS" mark
for his product.
2010 BAR EXAMINATIONS - MERCANTILE LAW

11.
a. What contractual stipulations are required in all technology
transfer agreements? (2%)
b. Enumerate three (3) stipulations that are prohibited in technology
transfer agreements. (3%)
c. Can an article of commerce serve as a trademark and at the
same time enjoy patent and copyright protection? Explain and give
an example. (2%)

2009 BAR EXAMINATIONS - MERCANTILE LAW

12. After disposing of his last opponent in only two rounds in Las
Vegas, the renowned Filipino boxer Sonny Bachao arrived at the
Ninoy Aquino International Airport met by thousands of hero-
worshipping fans and hundreds of media photographers. The
following day, a colored photograph of Sonny wearing a black polo
shirt embroidered with the 2-inch Lacoste crocodile logo appeared
on the front page of every Philippine newspaper.

Lacoste International, the French firm that manufactures Lacoste

apparel and owns the Lacoste trademark, decided to cash in on the
universal popularity of the boxing icon. It reprinted the photographs,
with the permission of the newspaper publishers, and went on a
world-wide blitz of print commercials in which Sonny is shown
wearing a Lacoste shirt alongside the phrase "Sonny Bachao just
loves Lacoste."

When Sonny sees the Lacoste advertisements, he hires you as

lawyer and asks you to sue Lacoste International before a
Philippine court:

a) For trademark infringement in the Philippines because Lacoste

International used his image without his permission; (2%)

b) For copyright infringement because of the unauthorized use of

the published photographs; (2%) and

c) For injunction in order to stop Lacoste International from

featuring him in their commercials. (2%)

d) Will these actions prosper? Explain.

e) Can Lacoste International validly invoke the defense that it is

not a Philippine company and, therefore, Philippine courts have
no jurisdiction? Explain. (2%)

2005 BAR EXAMINATIONS - MERCANTILE LAW

13. S Development Corporation sued Shangrila Corporation for
using the “S” logo and the tradename “Shangrila”. The former
claims that it was the first to register the logo and the tradename in
the Philippines and that it had been using the same in its restaurant
business. Shangrila Corporation counters that it is an affiliate of an
international organization which has been using such logo and
tradename “Shangrila” for over 20 years. However, Shangrila
Corporation registered the tradename and logo in the Philippines
only after the suit was filed.

a) Which of the two corporations has a better right to use the logo
and the tradename? Explain.

b) How does the international affiliation of Shangrila Corporation

affect the outcome of the dispute? Explain. (5%)

2003 BAR EXAMINATIONS - MERCANTILE LAW

14. In what way is an infringement of a trademark similar to that

which pertains to unfair competition?

15. K-9 Corporation, a foreign corporation alleging itself to be the

registered owner of trademark “K-9” and logo “K”, filed an Inter
Partes case with the Intellectual Property Office against Kanin
Corporation for the cancellation of the latter’s mark “K-9” and logo
“K.” During the pendency of the case before the IPO, Kanin
Corporation brought suit against K-9 Corporation before the RTC
for infringement and damages. Could the action
before the RTC prosper? Why?