CASES/JURISPRUDENCE IN INTELLECTUAL PROPERTY LAW (IPL)

I. LAW ON TRADEMARKS

A. De Vera vs. CA

Infringement vs. Unfair Competition:

Infringement Unfair Competition

Unauthorized use of trademark
Fraudulent intent is unnecessary
Prior registration of trademark is a
prerequisite to the action
Passing off of one’s goods as those of another
Fraudulent intent is essential
(confusion to the public)
Registration is not necessary

Test in determining infringement and unfair competition (imitation):

 General confusion made by the article/logo upon the eye of the casual purchaser is such
as to likely result in his confounding it with the original. (not the details of the logo or
label)
 The mark shall be considered as a whole and not as dissected.

Registration

Principal Register vs. Supplemental Register

Principal Register Supplemental Register

Presumption of validity of registration
(registrant’s ownership of the mark and his
right to exclusive use thereof)
Constructive notice of the registrant’s
ownership
Limited to the actual owner of the trademark
and proceedings on the issue of ownership
can be contested through opposition or
interference proceedings, or after registration,
in a petition for cancellation.
Basis for action for infringement
Publication is necessary
No presumption of validity
Merely proof of actual use of the trademark
and notice that the registrant has used or
appropriated the mark.
Not subject to opposition although may be
cancelled after the issuance of registration
Not a basis of action for infringement
Publication is not necessary

Note: In awarding damages in action for infringement, the claimant must provide evidence to
prove the amount being claimed except nominal damages under Article 2222 of the NCC.

B. LYCEUM vs. CA

Doctrine of Secondary Meaning states 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.

C. SHANG PROPERTIES vs. ST. FRANCIS

Fraud is an essential element of unfair competition and such cannot be deemed automatically
present by the existence of secondary meaning.

Requisites of Secondary Meaning:

(a) the secondary meaning must have arisen as a result of substantial commercial use of a
mark in the Philippines;
(b) such use must result in the distinctiveness of the mark insofar as the goods or the
products are concerned; and
(c) proof of substantially exclusive and continuous commercial use in the Philippines for five (5)
years before the date on which the claim of distinctiveness is made. Unless secondary meaning
has been established, a geographically-descriptive mark, due to its general public domain
classification, is perceptibly disqualified from trademark registration.

SEC. 123. Registrability. –

123.1 A mark cannot be registered if it:

xxxx

(j) Consists exclusively of signs orof indications that may serve in trade to designate the kind,
quality, quantity, intended purpose, value, geographical origin, time or production of the goods
or rendering of the services, or other characteristics of the goods or services;