Trademark Law

1, It is 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.

a. Mark

b. Collective Mark
c. Tradename

d. Copymark!

2. It is 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.

a. Mark

b. Collective Mark
c. Tradename

d. Copymark?

3. It is the name or designation identifying or distinguishing an enterprise.

a. Mark

b. Collective Mark
c. Tradename

d. Copymark3

Note:

The rights in a mark shall be acquired through registration made

validly in accordance with the provisions of the Intellectual Property Law (sec.
122, IPL).

Note:

The applicant or the registrant shall file a I t

the mark with evidence to that effect within three (3) years from the filing date

of the application. Otherwise, the application shall be refused or the mark shall
be removed from the Register by the Director (Sec. 124, IPL),

Note:

If the applicant is not domiciled or has no real and effective

commercial establishment in the Philippines, he shall designate by a written
document filed in the office, the name and address of a Philippi ident who

may be served notices or process in Proceedings affecting the mark (sec. 125, !PL-

Note:
' Suggested answer: A
é Sugpested answer: B
’ Supwested answer: C

876
a

| ademark Law
t the filing date of an application shall be the date on which the

| jacellectual! on rerty Office received the following indications and elements in

english or Filipina:
a. An express OF implicit indication that the registration of a mark is
sought;
b, The identity of the applicant;
Indications sufficient Co contact the applicant or his representative, if
any;
d. Areproduction of the mark whose registration is sought; and

o. The list of the goods or services for which the registration is sought.

Note:
No filing date shall be accorded until the required fee is paid (Sec. 127,

IPL).

Note:
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 (Sec. 138, IPL).

4.1. A certificate of registration of a mark shall be conclusive 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.

Il. certificate of registration shall remain in force for 15 years.

a. Only | is true
b. Only Il is true
c. Both are true
d. Both are false*

Note:

A certificate of registration shall remain in force for ten (10)

vears: 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 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 (Sec. 145 1Pl).

Note; | on
er or periods of ten

A certificate of registration may be renewed for periods yi (

prescribed fee and upon filing ofa

years at its expiration upon payment of the

Pequest (Sec. 146, IPL).
a trademark.

& .
I, Infringement of trademark is the unauthorized use ol

Re, wi
Trademark Law
II. Unfair competition is the passing off of one's goods as those of another.

. Only lis true

b. Only IT is true
c. Both are true
d. Both are false5

Note:
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 (Del Monte Corporation and Philippine Packing
Corporation
vs. CA and Sunshine Sauce Manufacturing Industries, G.R. No. L-78325, January 25,
1990).

Note:
Functions of a Trademark
1. To indicate the origin of the goods to which they are attached;

2. To guarantee the standard of quality of the goods; and

3. To advertise the goods (Mirpuri vs. CA, G.R. No. 114508).

Note:
1. The right to the mark is separate and distinct from the business using
such mark (sec. 149, IPL); and
2. The right of registration belongs to the owner of the mark (unno Commercial
Enterprises, Inc. vs. General Milling Corp., G.R. No. L-28554, February 28, 1983).

6. J. In infringement of trademark, fraudulent intent is unnecessary.

II. In unfair competition, fraudulent intent is essential.
a. Only lis true
b. Only Il is true
c. Both are true
d. Both are falseé

7. 1. In infringement of trademark, the prior registration of the trademark is

a prerequisite to the action.
I]. In unfair competition, registration is not necessary.
Only I is true
Only II is true
Both are true
Both are false”

ao op
5 Suggested answer: C
6 Suggested answer: C
? Suggested answer: C

878
Law

' a
note ule: ;

enero scriptive name, word or phrase of the character, qualities or

De ticle cannot be registered as trademark or tradename

ar
sition a aon 5 ; 5
-ompo ie: Pa Je Pilsen for beer) (Asia Brewery, Inc. vs. CA, G.R. No. 103543, July
5, 1994).
mple-
(Bx0

g. Arbitrary Mark . .
It is utilized as a device having a common meaning that has no

relation to the goods or services being sold. (Example: “Dutch Boy” for
paints and paint color solutions) (National Lead Corporation vs. Wolfe, 223 F. nd
195 (9%

Cir, 1955) July 14, 1955).

b, Fanciful Mark
It is invented for the sole purpose of functioning as a trademark and

have no other meaning than acting as a mark, (Example: “Kodak” for

camera and “Xerox” for photocopying machine) (Eastman Kodak Co. vs. Weil, 137

Misc. 506, June 1730).

2 Ifused as part of coined mark;

Coined Mark
Marks may be registered even if they are contractions of or coined
from generic and descriptive terms. (Example: “Starbrite” for metal polish,
Gaslam” for lamps, “Mirrorlike” for furniture and floor polish are coined
= for ‘star bright”, “gas lamp”, or “mirror like") (Life industries Corp. vs.
¢ Distributing, Inc., 31 F. 3d 42, August 18, 1994).

3]
fused as part of composite mark;

Composite Mark

words pr marks consisting of two or more elements or combination of

° registered designs, symbols, or color schemes. Although they cannot
ark as lon themselves, together they may be a part of a composite
em as part of, they may provide a disclaimer. ‘The person who registers

rentury Nyj a mark will not acquire ownership thereto. (Example: “20%
Shi ylon Shirts Factory” must be required to disclaim “nylon” and

factory”
28, 1995) y ) (Ong Ai Gui vs. The Director of the Philippine Patent Office, G.R.
No, L-6235, March

4 Ip;
—
qireg
a :
Secondary meaning:

Ctr;
™m
Wi ih ve Secondary Meaning
No as . ” - . . .
of *Gistraby general rule, generic, indicative or descriptive marks are
Its long ae when such kind of mark has become distinctive, because
ntinuous and exclusive use for five (5) years, as used in

879
SCL
Trademark Law

connection with the applicant's goods or services in commerce and in the

mind of the public indicates a single source to consumers, it may be
registered. (Sec. 123.2, IPL).

8. I. The dominancy test focuses on the similarity of the prevalent features of

the competing trademarks that might cause confusion or deception.

II. The holistic test requires the court to consider the entirety of the marks
as applied to the products, including the labels and packaging, in
determining confusing similarity.

a. Only lis true

b. Only Il is true
c. Both are true
d. Both are false®

Focuses on the similarity of the | Mandates that the entirety of the

main, essential, dominant, or | marks in question must be
prevalent features of a mark. considered in determining
confusing similarity.

Relies only on visual comparison.

Relies on visual, aural, and

connotative comparisons and
overall impressions between the
two trademarks.

The test is whether there is

similarity of the prevalent
features of the competing
trademarks which might cause
confusion or deception and thus

constitute infringement (Societe

Des Produits Nestle, S.A. vs. CA, GR. No,

The test is whether the general

confusion made by the article
upon the eye of the casual
purchaser who is unsuspicious
and off his guard, is such as to
likely result in his confounding it
with the original (Det Monte Corp. vs.
112012, April 4, 2001).

CA, G.R. No. L-78325, January 25, 1990).

9. It refers to a mark considered well-known by the competent authority of

the country where protection for the mark is sought.
a. Trademark
b. Service mark
c. Well-known mark
d. Patent mark?

Note:

In determining whether a mark is well-known, the knowledge of ail

relevant sector of the public, rather than the public at large, including
knowledge in the Philippines which has been obtained as a result of the
promotion of the mark, shall be pertinent (sec. 123, IPL).

® Suggested answer: C
° Suggested answer: C (Sec. 123, IPL)

880
ex —=te

gear Lae
ff

note: The exclusive right of the owner of a well-known mark which ts

_ared in the Philippines, shall extend to goods and services which are not
regis r those in respect of which the mark is registered: Provided, that use of
ginil rk in relation to those goods or services would indicate a connection
‘i oods or services and the owner of the registered
e js provided, further, that the interests of the owner of the registered mark
’ damaged by such use (Sec. 147, IPL).

gollective Mark ne
It refers to any visible sign, designated as such in the application for

registration and capable of distinguishing the origin or any other common

characteristics, 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. 121, IPC).

designated as such in the application for

i0.[t means any visible sign

f distinguishing the origin or any other

registration and capable o

common characteristic.

a. Collective mark

b. Collective sign

c. Collective symbol

d. Collective logo?®

Note:
A mark cannot be registered if it:

a. Consists of immoral, deceptive or scandalous matter, or matter which

may disparage or falsely suggest a connection with persons, living or
dead, institutions, beliefs, or national symbols, or bring them into
5 contempt or disrepute;
: Consists of the flag or coat of arms or other insignia of the Philippines or
any of its political subdivisions, or of any foreign nation, or any

. erlatian thereof;
- Consists of a name, portrait or signature identifying a particular living

nolvidual except by his written consent, or the name, signature, or

rtrait of a deceased President of the Philippines, during the life of his

Wi ; i
d. Is ow, ifany, except by written consent of the widow,
entical with a registered mark belonging to a different proprietor or
am . 5‘
ark with an earlier filing or priority date, in respect of:

LT ;
he same goods or services, or

Ui,
fe Hele related goods or services, or
Tf it nearly resembles such a mark as to be likely to deceive or

Cc ‘
ause confusion;
“stag

answer,
era (Sec. 121, IPC)
Trademark Law

e. Is identical with, or confusingly similar to, or constitutes a translation of

g.

h.

k.

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;

Is identical with, or confusingly similar to, or constitutes a translation of

a mark considered well-known 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;

Is likely to mislead the public, particularly as to the nature, quality,

characteristics, or geographical origin of the goods or services;
Consists exclusively of signs that are generic for the goods or services
that they seek to identify;

Consists exclusively of signs or of indications that have become

customary or usual to designate the goods or services in everyday
language or in bona fide and established trade practice;

- 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 rendering of the
services, or other characteristics of the goods or services;

Consists of shapes that may be necessitated by technical factors or by the

nature of the goods themselves or factors that affect their intrinsic value;

L. Consists of color alone, unless defined by a given form; or

m. Is contrary to public order or morality (Sec. 123, IPL).

11. It is the name or designation identi

fying or distinguishing an enterprise.

a. Trade name
b. Trade mark
c. Business permit
d. Goodwill!!
Note:
A tradename or business identifier means the name or designation
identifyi

firm name, device or word used b

and others to identify their busin

Corp. vs. Universal Rubber Products, Inc., G.R. No. L-27906, Janua

ng or distinguishing an enterprise; any individual name or surname,

y Manufacturers, industrialists, merchants,
esses, vocations or Occupations (Converse Rubber
ty 8, 1987).

"| Suggested answer: A

882
Eee arte

park Law

¢
yal ;
ename need not be registered with the IPO before an

} rsuit may be filed by its owner against the owner of an infringing

iri! mel alt chat is required is that the trade name is previously used in
feml . in the Philippines (Coffee & Roastery, Inc, G.R. No. 169504, March 3,
2010.).

f ile . "
" jor commerce
(rule

j trad

Trademark vs. Tradename

ee yaaa radename css

It identifies an enterprise.

he goods or services

| er
i {Jt designates rv
| rson or enterprise.

| offered by 4 Pe

<p registered in| the Intellectual It is registered in the Department of

| property Office. Trade and Industry.

| _
Cee

), Amark cannot be registered if it:

Consists of immoral, deceptive, or scandalous matter, or matter

which may disparage or falsely suggest a connection with

persons, living or dead, institutions, beliefs, or national symbols,

or bring them into contempt or disrepute

b. Consists of the flag or coat of arms or other insignia of the

Philippines or any of its political subdivisions, or of any foreign
nation, or any simulation thereof

¢. Consists of a 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 life of his widow, if any, except by written consent of
the widow

d. Allof the above!2

a,

Note:

A tr ; ; ; .
Property off ademark is acquired through registration with the Intellectual
ic fee Oe
a ifringement PO). Registration is necessary before one can file an action

Note:

Pree, fobs in the Philippines is not required before registration.

. ? . .
Rin lust be an actual use after registration (FUNA, Trademark Law).

IL ap Stacle to 800ds to which the mark is applied will not constitute

Ne Intel] © registration.
Videnes cctual Pro ; ;
Ce perty Office (IPO) may accept as prima facie
© mark has become distinctive, proof of substantially
tinuous use thereof by the applicant in commerce in

xp © that
co
Trademark Law

the Philippines for 5 years before the date on which the claim of

distinctiveness is made.
a. Only lis true
b. Only IT is true
c. Both are true
d. Both are false!3

Note:

The right to register a trademark is based. on ownership and a mere

distributor of a product bearing trademark, even if permitted to use said
trademark, has no right to and cannot register the said trademark (crisanta Gabriel

vs. Perez, G.R. No. L-24075, January 31, 1974).

Note:
Doctrine of Secondary meaning
The following are non-registrable as a general rule:

1. 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 rendering of the
services, or other characteristics of the goods or services;

2. Consists of shapes that may be necessitated by technical factors or by the

nature of the goods themselves or factors that affect their intrinsic value;
and

3. Consists of color alone, unless defined by a given form.

However, nothing shall prevent the registration of any such sign or

device ifit has b e distinctive in relation to the goods for which registration
is requested as a result of the use that has been made of it in commerce in the
Philippines.

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.

14. I. Any person who believes that he would be damaged by the registration
of a mark may file with the IPO an opposition to the application.

I]. When the period for filing the opposition has expired, the IPO shall issue
the certificate of registration.

a. Only lis true

b. Only Il is true
c. Both are true

d. Both are false!4

'S Suggested answer: C (Sec. 123, IPC)

‘4 Suggested answer: C (Sec. 136, IPC)

884.
adem k Law
f

|
| . 4 certificat

{5 ‘ applicant.
certificate

e of registration of a mark may be issued to the assignee of

of registration of a mark shall be prima facie evidence of
"validity of the registration, the registrant’s ownership of the mark,

4 of the registrant's exclusive right to use the same in connection with

a goods or services and those that are related thereto specified in the
t

certificate.
g. Only lis true
b. Only Il is true
c Both are true
d. Both are false?®

Note:
Certificate of Registration
It shall be prima facie evidence of:

1. The validity of the registration;

2. The registrant’s ownership of the mark; and

3. The registrant’s exclusive right to use the same in connection with

the goods or services and those that are related thereto.

16.1. A certificate of registration shall remain in force for 10 years.

I A certificate of registration may be renewed for periods of 10 years at
its expiration.
a Only I is true
b. Only Il is true
¢. Both are true
d. Both are falseié

Be of a registered mark shall have the exclusive right to prevent

of trade es not having the owner's consent from using in the course
Which are donee or similar signs or containers for goods or services

is registered nye or similar to those in respect of which the trademark

| where such use would result in a likelihood of confusion.

In cas
e . . . 5 : .
likelj Of the use of an identical sign for identical goods or services, a

ne of confusion shall be presumed.

b nly lis true
* Only Ilis true
oth are true
Both are false17

Note.

(Sec. 135
e< 1378138, IPC)
ge | 45&146, IPC)

“Wee. 147, 1pcy

885
Trademark Law

Doctrine of Related Goods or Services

There is infringement when there is use of similar marks on goods that

are so related that the public may be, or is actually deceived, and misled that
the goods come from the same maker or manufacturer (Esso Standard Eastern, inc. vs.
CA, G.R. No. 29971, August 31, 1982).

Doctrine of Dilution

Copying which, while not sufficiently confusing to divert sales in the

short run, will tend to divert them in the long run by weakening the
instantaneous favorable associations the public makes with highly regarded
products.

18.1. The exclusive right of the owner of a well-known mark 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.

II. 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.

a. Only lis true

b. Only Il is true

c. Bothare true

d. Both are false18

Note:

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 (sec. 148, IPL).

19.1. 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.

II. 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.

Only I is true
Only II is true
Both are true
Both are false19

ao 7 p
'9 Suggested answer: C (Sec. 1478148, IPC)
‘9 Suggested answer: C (Sec. 149, IPC)

886
-

; rk Law ei
rae
notes tand Transfer of Applicati
nmen Pptication a
Ast An application for registration of a
assigned or transferred with or witho gistration, may be
the mark. of the business using
Such assignment or transfer shall, ho

2 mislead the public, particularly as ren in ane void if it is liable

manufacturing process, characteristics, or suitability for ther e, source,
of the goods or services to which the mark is applied i a

3, The assignment of the application for registration ofa mark. .

registration, shall be in writing and require the Siar i.
contracting parties. Transfers by mergers or other forms of imion
may be made by any document supporting such transfer.

4, 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.

5, Assignments and transfers shall have no effect against third parties until
they are recorded at the Intellectual Property Office (IPO) (sec. 149, IPL).

nd Registration

ut the transfer

20.1. Assignments and transfers of registration of marks shall be recorded at

the IPO; assignment and transfers of applications for registration shall
be provisionally recorded, and the mark, when registered, shall be in the
name of the assignee or transferee. . .

ll. Assignments and transfers shall have no effect against third parties
until they are recorded at the IPO.
a. Only /is true

b. Only Il is true

c. Both are true

d. Both are false?°

Note:

License Contracts ;
1. Any license contract concerning th

icati i ective !
een ee shall provi’ for ne licensee in connection with
ali ods or

t provide for such

which the mark is used. the Nor Te veatvel) carried out, the
quality control, or if such quality control is not é

license contract shall not be valid.

. e Office

2. A license contract shall be submitted t0 M ffi

contents confidential but shall recor

ainst thir
A license contract shall have ne? effect a9
recording is effected.

e registration of a mark, or an

which shall keep tts

erence thereto.
til such

Resta,
“answer: ¢ (Sec. 149, 1PC)
4 ea7
|

Trademark Law
21. 1. A petition to cancel a registration of a mark may be filed by any person
who believes that he is or will be damaged by the registration of a mark.
II. Non-use of a mark may be excused if caused by circumstances arisin
independently of the will of the trademark owner. Lack of funds shall

excuse non-use of a mark.

a. Only Tis true
b. Only Il is true
c. Bothare true
d. Both are false?!

Note:
A petition to cancel a registration of a mark 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 as follows:

a. Within 5 years from the date of the registration of the mark.

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 the Intellectual Property Code of the
Philippines, 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.

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 3 years or longer.

Non-use of a Mark When Excused

i. 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.
2.7 he use of the mark in a form different from the form in which it ts
registered, which does not alter its distinctive character, shall not be 4

ground for cancellation or removal of the mark and shall not diminish
the protection granted to the mark.

*1 Suggested answer: A (Sec. 151&1 52, IPC)

888
VY demae i,
qr F The use ofa mark in connection with one or

; ; th . More of
pelonging o ee In respect of Which the a the goods OF Services
revent its ation or removal in respect sp, “istered shall
services of the same class, pect of all other goods
IS or

)
| 4, The use ofa mark by a company related with the reg,
| shall inure to the latter’s benefit, and stieh a registrant or applicant

; j ; Se sh :
of such mark or of its registration: Provided ae ue the validity
, mark is not used

in such manner as to deceive the public. If use ofam

controlled by the registrant or applicant with reapers a person is
€ nature and

quality of the goods or services, such use shall i

aly of Pts all inure to the benefit of the

| The use of the mark in a form different from Bae Ge

i. registered, which does not alter its distinctive ie hall nich i is
ground for cancellation or removal of the mark and shall not dim a
the protection granted to the mark. nis
i], 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.
a. Only lis true
b. Only II is true
c. Both are true
d. Both are false?2

23, Any person who shall, without the consent of the owner of the registered
mark, 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.
a. Infringement of trademark
b Copyrighting of trademark
& Patenting of trademark
d. Unfair competition of trademark”?

Note: Complete
+ fri t, Com
a a of] j ark infringement.
Intent to deceive is not required in tradem if 79235, January 25,

! " a is Not requir C vs. CA, G.R. No.

[ ri Ti ent Del Monte Corp.
1999), i t qul ed fo inft ingem (
Note, ement

» of trademark infring

. “ n
the “gravame 04).

(Me DonaiyetKelihood of confusion Is 93, August 18, 20

* Corp. vs. L.C. Big Mak Burger, Inc, GR. No. 143?
1 ess
Bea
estey angen C (Sec. 152, IPC)
i "A (Sec. 155, IPL)
i 889

frogs
aa
Trademark Law

24, Any person who shall, without the consent of the owner of the registereq
mark 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 advertisin
of goods or services on or in connection with which such use is likely to

cause confusion, or to cause mistake, or to deceive.

a. Infringement of trademark
b. Copyrighting of trademark

c. Patenting of trademark
d. Unfair competition of trademark”*

Note:
Infringement
Any person who shall, without the consent of the owner of the

registered mark:

1. 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. 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 ing

Note:
Who can File a Case for Infringement?

Only a registrant of a mark can file a case for infringement. Upon the
finality of an order of cancellation of a mark, the right of a registrant to file a
case for infringement terminates (Superior Commercial Ent, Inc. vs. Kunnan Ent.
Ltd, GR No
169974, April 20, 2010).

25. 1. The owner of a registered mark

ma erson
who infringes his rights. erates aed
Il. ee of the damages suffered shall be either the reasonable
profit which the complaining party would have made, had the defendant

24 Suggested answer: A (Sec. 155, IPL)

890
grademar puew .
ot infringed his rights, or the profit whic
° t of the infringement.
“ a. Only lis true

h the defendant actually made

b. Only II is true

c. Bothare true

d. Both are false25

Note:

Actions, Damages, and Injunction for Infringement

1. 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 pa I

made, had the defendant not infringed his rights, or the profit which the

enda ith 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.

2. On application of the complainant, the court may impound during the

pendency of the action, sales invoices and other documents evidencing
sales,

3. 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.

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

(Sec. 156, IPL),

Note:

_ In any action in which a violation of any right of the owner of the

"egistered mark is established, the court may order that goods found to be
"fringing be, without compensation of any sort, disposed of outside the
rhannels of commerce in such a manner as to avoid any harm caused to the
rahe holder, or destroyed; and all labels, signs, prints, packages, eehper
re Ptacles, and advertisements in the possession of the defendant, bearing the
con ered mark or trade name or any reproduction, counterfeit, copy or
mane imitation thereof, all plates, molds, matrices, and other means of

'Ng the Same, shall be delivered up and destroyed.

8]

‘| | .

. "NY action in which a violation of any right of the secu oe

be ered mark is established, the court may order that Bos ae
the gi Bing be, without compensation of any sort, dispose

ll

an .
Ihany “nels of commerce or destroyed. ‘evistered mark shall not
be git for in fri t, the owner of the regis
© enti eee less the acts have been
ttled to recover profits or damages unless
Se
~

Sy,
i Mswe, Cg
“Meee, 1

6, 1PC)
uN 891

x ae
Trademark Law

committed with knowledge that such imitation is likely to cause

confusion, or to cause mistake, or to deceive.

a. Only Lis true

b. Only Il is true

c. Bothare true

d. Both are false2®

Note:

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 (sec. 158, IPL).

Note:

There is infringement of trademark when the use of the mark

involved would likely cause confusion or mistake in the mind of the public or to

deceive purchasers as to the origin or the source of the commodity (Fruit of the
Loom, Inc., vs. CA, G.R. No. L-32747, November 29, 1984).

Factors to consider in confusingly similar goods

1. Value of the goods (Emerald Garment Manufacturing Corp. vs. CA, G.R. No. 100098,
December
29, 1995);
2. Common Trade Channel (Ang vs. Teodoro, G.R. No. 48226, December 14, 1942);
3. Type of cCOnNSUMEYS (Mead Johnson vs. Mc Cullough, G.R. No. 6217, December 26,
1911); and

4, Necessary expansion of the Business (Ang vs. Teodoro, G.R. No. 48226, December
14,
1992).

Note:
Colorable Imitation

It refers to such similarity in form, content, words, sound, meaning,

special arrangement, or general appearance of the mark or trade name with
that of the other mark or trade name in their overall presentation or in their
essential, substantive or distinctive parts as would likely to mislead or confuse

persons in the ordinary course of purchasing the genuine article (Emerald Garment
Manufacturing Corp. vs. CA, G.R. No, 100098, December 29, 1995).

Idem Sonans Rule

‘Two trademarks used on identical or related goods may be confusing y

similar if they have similar sound or pronunciation
. It may be sufficient to make two marks confusingly similar when
applied to merchandise of the same descriptive properties. (Example

* Suggested answer: C (Sec. 158, IPC)

892
prademark Law

“sglonpas” and “Lionpas” both for medica) pla

Ster ‘Marve > <

gawpia ard Co, G.R No. L-19297, December 22, 1966) (Marvex Commercial Co, vs. Petra
haa .

7 |. Aregistered mark shall have no effect against any per

“faith, before the filing date or the priority eee
the purposes of his business or enterprise,
1]. Where an infringer who is engaged solely in the busin
mark or other infringing materials for other
the owner of the right infringed shall be
infringer only to an injunction

ho, in good
date, was using the mark for

ess of printing the

S ls an innocent infringer,

entitled as against such

against future printing,

a. Onlylis true

b. Only Ilis true

c. Both are true

d. Both are false27

Note:

Limitations to Actions for Infringement

1. 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. 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. . .

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 nee
magazine, or other similar periodical or electronic eee sha

be limited to an injunction against the presentation of such 7 ee

matter in future issues of such newspapers, magazines, ou a i sl
periodicals or in future transmissions of such electronic

communications.
infri t of trademarks or tradenames of
4 There shall be no infringemen A Sede CS ee

drugs and medicines: Provided, that said

5 i t
imported or sold off-paten he registered marks and have not been

drugs and medicines bear t gist

tampered, unlawfully modified, or infringed.

Note:

Elements of infringement
1. Registration of trademar
2. Trademark is reproduced, co

" IPO);
rk i tellectual Property Office ( 0);
ie vied, coun terfeited or colorably imitated;

—
Trademark Law

3. It is used in connection with the sale, or it is offering for sale op

advertising of goods, services or business or applied to labels, signs
wrappers, etc. intended to be used in connection with such goods,

services, or business; Ee
4, There is, in the use or application, a likelihood of confusion; and
5, Lack of consent on the part of the registered owner or their assignee

(Societe Des Produits Nestle, S.A. vs. Dy, Jr, GR. No. 172276, August 9, 2010).

Note:
Trade Names or Business Names

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.

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.

3. 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 (Sec. 165,
IPL).

28. I. 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.

II. 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 oth i

er property rights.
a. Only Lis true sia ts

b. Only Il is true
c. Both are true
d. Both are false28

Unfair Competition, Rights, Regulation and Remedies

1. A person who has identified in the mind of the public the goods 7
mnamufachures or deals in, his business or services from those of 0
whether or not a registered mark is employed, has a property right

28 Suggested answer: C (Sec. 168, IPC)

894
rk Law

the goodwill of the said goods, business OF Services su identif

will be protected in the same manner as other propert rh mn ini

2, Any person who shall employ deception or any other Tha ci ntr
good faith by which he shall pass off ‘the goods manufactured hin "
in which he deals, or his business, or Services for those of ithe ¢ = oe a
established such goodwill, or who shal] commit any acts selected 0
produce said result, shall be guilty of unfair competition, and shail he
subject to an action therefor, ‘ °

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:

grade

(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 likely 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;

(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; 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 (Sec. 168, IPL).

“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 likely
influence purchasers to believe that the goods offered are those
of a manufacturer or dealer, other than the actual manufacturer
or dealer,

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 suc
Services in the mind of the public. > course of
Any Person who shall make any false statement a ead Gait of
trade or who shall commit any other act contrary to g

895
MEME Oe er aa

Trademark Law
a nature calculated to discredit the goods, business or services of

another.
d. All of the above??

. a
pement Q, f Trademark | EGE

Unauthorized use of a | Thepassing offof one’s goods

trademark. as those of another.
Fraudulent intent is not | Fraudulent intent is
necessary. necessary.

Note:

Unfair competition includes passing off goods with or without

trademark infringement. Trademark infringement is a form of unfair
competition. Trademark infringement constitutes unfair competition when
there is not merely likelihood of confusion, but also actual or probable
deception on the public because of the general appearance of the goods. There
can be trademark infringement without unfair competition as when the
infringer discloses on the labels containing the mark that he manufactures the
goods, thus preventing the public from being deceived that the goods originate
from the trademark owner (McDonald's Corporation vs. LC. Big Mak Burger, Inc. G.R.
No. 143993,
August 18, 2004).

Note:
False Designations of Origin; False Description or Representation

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 oF another
person's goods, services, or commercial activities, shall be liable © a
civil action for damages and injunction by any person who believes tha
he or she is or likely to be damaged by such act.

29 Suggested answer: D (Sec. 168, IPC)

896