TRADEMARKS BAR QUESTIONS

1976 Bar:
X applies for registration in his favor the tradename "Loving Care" for a hair dye on the
ground that he has been using said tradename for almost 3 years before filing his
application. Y opposes the application on the ground that he has been using the tradename
"Loving Care" with the same design for hair pomade which is registered in his name since
1963. X replied that although the said trademark was registered in Y's name, it was
however, for a different article. Can X's application be sustained? Reasons.
SUGGESTED ANSWER:
The application for registration by X cannot be sustained. Under the Intellectual Property Code, a
mark cannot be registered if it nearly resembles such a mark as to be likely to deceive or cause
confusion. Likewise, the Supreme Court has given the holistic test, which necessitates a
"consideration of the entirety of the marks as applied to the products, including the labels and
packaging, in determining confusing similarity. The discerning eye of the observer must focus
not only on the predominant words, but also on the other features appearing on both labels so
that the observer may draw conclusion on whether one is confusingly similar to the other." In
this case, the tradename that X wants to be registered is the same design that Y has been using—
and has been registered — since 1963. Though it may be used differently from Y, the same
might cause confusion or might deceive buyers as to the origin and source of the goods. As such,
X's application for registration cannot be sustained.

1978 Bar:
The trademark LOTUS is already registered in favor of ABC for its product, edible oil.
DEF applied for the registration of the same trademark for its own product, soy sauce,
assuming that the trademark applied for is in smaller type, colored differently of much
smaller size, and set on a background which is dissimilar, as to yield a distinct appearance,
may the application be denied on the ground that its grant would likely to cause confusion
or mistake on the part of the buying public? Decide. Give reasons.
Suggested Answer:
Yes. The application of DEF of the trademark LOTUS for soy sauce should be granted, although
the trademark LOTUS is already registered in favor of ABC for its product, edible oil. The rule
is not whether the challenging mark would actually cause confusion, but whether the use of such
mark would likely cause confusion on the part of the buying public. There is quite a difference
between soy sauce and edible oil; hence, it can be said that DEF's trademark LOTUS on soy
sauce would likely not cause confusion on the part of the buying public.

1979 Bar:
Company X sold its wine under the brand "Rose" brandy, and it became very popular. So,
X registered the trademark "Rose" for its brandy. Subsequently, Company Y
manufactured bicycles and sold it under the name "Rose". Company X now sues Company
Y for violation of the Trademark Law. Rule on the dispute.
SUGGESTED ANSWER:
There is no violation of intellectual property rights herein.
Under the principle of Related Goods or Services, there is trademark 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. It has been held that
goods are related when they belong to the same class or have the same descriptive properties, or
serve the same purpose.
Here, the goods sold by Company Y are completely unrelated to the goods sold by Company X.
The former sells bikes while the latter sells brandies.
Hence, there is no infringement of intellectual property rights.

1981 Bar:
For the past 10 years, Rubberworld Co. has been using the tradename FORMIDAS for its
rubber shoes and slippers, but has never registered it in the Patent Office. Its business has
flourished and it is now exporting its products to other countries.
The Philippine Knittiing Mills Co., a new enterprise, is now selling socks manufactured by
it with the label FORMIDAS, without having registered the same either as a trademark or
a trade name.
Rubberworld Co. wants to stop Philippine Knitting Mills from using the tradename
FORMIDAS, but it entertains some misgivings about its right to do so because firstly, it has
not registered the tradename, and secondly, its products and those of Philippine Knitting
Mills are different and; therefore, not competing items.
Are the doubts of Rubberworld Co. well-founded? Why?
SUGGESTED ANSWER:
No, doubts of Rubberworld Co. are not well-founded. In the case of Superior Commercial
Enterprises, Inc. vs Kunnan Enterprises Etd. the Court ruled that the test of unfair competition is
whether the acts of the defendant have the intent of deceiving or are calculated to deceive the
ordinary buyer making his purchases under ordinary the conditions of the particular trade to
which the controversy relates. In this case, although Rubberworld has not registered the
tradename, it has already acquired a goodwill and the use by another of such name would likely
confuse the consuming public as to the source of the goods, especially in this case where the
tradename is used on socks which like shoes and slippers are footwear. By using the well-known
tradename of Rubberworld, Philippines, Knitting Mills is taking advantage of the reputation of
Rubberworld, and may even adversely affect such reputation if its goods are inferior quality. The
consumers may likely identify the shoes, slippers and socks as coming from one and the same
source, they are all footwear. Thus, Philippine Knitting Mills is guilty of unfair competition, and
can thus be enjoined from using the tradename FORMIDAS.

1981 Bar:
"G" Corporation, organized under Philippine laws is the owner of the trademark
"Jumbo" under Registry No. 50025 issued on February 15, 1979 by the Philippine Patent
Office, for assorted kitchen ware. On June 10, 1980, the Jumbo Cookware Corporation,
organized and existing under the U.S. laws, filed a petition with the Philippine Patent
Office for the cancellation of the trademark "Jumbo" registered in the name of "G"
Corporation alleging ownership and prior use in the Philippines since 1949 of said
trademark on the same kind of goods, which use it had not abandoned.
"G" Corporation moved to dismiss the petition alleging that the Jumbo Cookware
Corporation, being foreign entity, which is not licensed to do and is not doing business in
the Philippines has no personality under the Philippine laws to maintain such petition.
Is "G's" contention meritorious? Explain each of your answers.
SUGGESTED ANSWER:
No, "G's" contention is not meritorious. A foreign corporation is not transacting business in the
Philippines may sue in the Philippines (Pacific Vegetable Oil Corp. v. Singzon, Apr. 29, 1965).
It is well settled that if a foreign corporation is not engaged in business in the Philippines, it may
not be denied the right to file an action in the Philippine Courts (Aetna Casualty & Surety Co. v.
Pacific Star Line, Dec. 29, 1977; 80 SCRA 635). In this case, since Jumbo Cookware
Corporation is not transacting business in the Philippines but merely exporting its goods to the
Philippines; therefore, its trademark shall be protected also in the Philippines. (Western
Equipment & Supply Co. v. Reyes, 51 Phil 115).

ALTERNATIVE ANSWER:
Under the Trademark Law, a foreign corporation may bring an action for unfair competition in
the Philippines, whether or not it has been licensed to do business in the Philippines, provided
that the country of which the said foreign corporation is a citizen or in which it is domiciled, by
treaty or law grants a similar privilege to corporation of the Philippines; and this is granted in the
"Convention of Paris" and by law in the United States of America. (Converse Rubber Corp. v.
Jacinto Rubber and Plastics Co. Inc., April 28,1980; 97 SCRA 158)

1983 Bar:
For the past 10 years, Rubberworld Co. has been using the tradename FORMIDAS for its
rubber shoes and slippers, but has never registered it in the Patent Office. Its business has
flourished and it is now exporting its products to other countries.
The Philippine Knittiing Mills Co., a new enterprise, is now selling socks manufactured by
it with the label FORMIDAS, without having registered the same either as a trademark or
a trade name.
Rubberworld Co. wants to stop Philippine Knitting Mills from using the tradename
FORMIDAS, but it entertains some misgivings about its right to do so because firstly, it has
not registered the tradename, and secondly, its products and those of Philippine Knitting
Mills are different and; therefore, not competing items.
Are the doubts of Rubberworld Co. well-founded? Why?
SUGGESTED ANSWER:
No. Section 168.1 of the Intellectual Property Code provides 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.
Although Rubberworld has not registered the tradename, it has already acquired a goodwill and
the use by another of such name would likely confuse the consuming public as to the source of
the goods, especially in this case where the tradename is used on socks which like shoes and
slippers are footwear. By using the well-known tradename of Rubberworld, Knitting Mills is
taking advantage of the reputation of Rubberworld, and may even adversely affect such
reputation if its goods are inferior quality. The consumers may likely identify the shoes, slippers
and socks as coming from one and the same source, they are all footwear.
Philippine Knitting Mills is therefore guilty of unfair competition and can thus be enjoined from
using the tradename FORMIDAS.

1984 Bar:
Prince Manufacturing Co., Inc. filed a complaint for unfair competition under section 21-A
of R.A. 166 against Prince Industries, Inc. The complaint substantially alleges that plaintiff
is a foreign corporation organized under the laws of California, USA., with offices in San
Francisco; that defendant Prince Industries, Inc. is a corporation organized under the laws
of the Philippines with principal office at Sucat Road, Paranaque, Metro Manila; that
plaintiff, founded in 1920 by Iver Prince, is the largest manufacturer of ball bearings with
the trademark "Prince" and the tradename "Prince Manufacturing Co., Inc." had been
exported to the Philippines since 1960; that due to the superior quality and widespread use
of its products by the public, the same are well known to Filipino consumers under the
tradename "Prince Manufacturing Industries, Inc." and trademark "Prince"; that long
after the commencement of the use of plaintiff's trademark and tradename in the
Philippines, defendant began manufacturing and selling ball bearings under the trademark
"Prince" and tradename "Prince Industries, Co."; that defendant has registered with the
Philippine Patent Office the trademark "Prince", which registration is contrary to Sec. 4 of
RA 166, as amended, and violative of plaintiff's right to the trademark "Prince"; that the
defendant not only uses the trademark "Prince" but likewise has copied the design used by
plaintiff in distinguishing its trademark; and that the use thereof by defendant on its
products would cause confusion in the minds of the consumers and likely deceive them as
to the source or origin of the goods, thereby enabling the defendant to pass off their
products as those of plaintiff.
Invoking the provisions of Sec. 21 A of RA 166, as amended, plaintiff prayed for damages.
It also sought the issuance of a writ of injunction to prohibit defendants from using the
tradename "Prince Industries Co." and the trademark "Prince".
a. If you were the counsel for the defendant Prince Industries Co., what grounds
would you invoke to have the complaint dismissed?
b. If you were the counsel for the plaintiff, what administrative remedy would you
advise your client to pursue in the event the court action fails?

SUGGESTED ANSWER:
a. If I were the counsel for defendant Prince Industries Co., I would invoke that the
complaint be dismissed for failure to state a cause of action proceeding from plaintiffs
failure to allege in the complaint its capacity to sue.

Section 21-A of Republic Act No. 166 as amended (now Section 160 of the Intellectual
Property Code) provides any foreign corporation to which a mark or tradename has been
registered and regardless of whether it has been licensed to do business in the Philippines
may bring an action hereunder for unfair competition, provided that the country to which
the said foreign corporation is a citizen or is domiciled grants similar privilege to
corporate or juristic persons of the Philippines. Moreover, the Court held in the case of
Leviton Industries v. Salvador that the aforementioned reciprocity requirement is a
condition sine qua non to filing a suit by a foreign corporation which, unless alleged in
the complaint, would justify dismissal thereof.

In the present case, the mere allegation by Prince Manufacturing Co., Inc. that it is a
foreign corporation is not sufficient. Such bare averment fails to comply with the
requirements of Republic Act No. 166 and the directive under the Section 4, Rule 8 of the
Rules of Court requiring the parties to show its capacity to sue in a representative
capacity or the legal existence of the organization.

As plaintiff failed to show proof that Philippine registration and that their country grants
substantially similar rights and privileges to Filipino citizens, their complaint must be
dismissed.
 b. If I were the counsel for the plaintiff, I would advise my client to file for administrative
cancellation of the trademark under Section 17 of Republic Act No. 166 as amended
(now Section 151.2 of the Intellectual Property Code).

In the case of General Garments v. Director of Patents, the Supreme Court explained that
while a suit under Section 21-A requires that the mark or tradename alleged to have been
infringed has been "registered or assigned" to the suing foreign corporation, a suit for
cancellation of the registration of a mark or tradename under Section 17 has no such
requirement.

In the case herein, such remedy is available to Prince Manufacturing Co., Inc. as it does
not require that its trademark alleged to have been infringed should have been registered
in the Philippine Patent Office. This, in effect, would deprive the defendant any ground to
move that the action be dismissed.

Therefore, a suit for cancellation of registration of the trademark under Section 17 maybe
resorted to by the plaintiff.

1990 Bar:
In 1988, the FDA approved the labels submitted by Turbo Corporation for its new drug
brand name, "Axilon". Turbo is now applying with the Bureau of Patents, Trademarks
and Technology Transfer for the registration of said brand name. It was subsequently
confirmed that "Accilonne" is a generic term for a class of anti- fungal drugs and is used as
such by the medical professional and the pharmaceutical industry, and that it is used as
generic chemical name in various scientific and professional publications. A competing
drug manufacturer asks you to contest the registration of the brand name "Axilon" by
Turbo.

What will be your advice?

I will advise them that the registration may be contested. According to Section 123 of the Law on
Intellectual property, a mark cannot be registered if it Is likely to mislead the public, particularly
as to the nature, quality, characteristics or geographical origin of the goods or services. In the
given problem, confusion would ensue by using the name "Axilon" because pharmacies might
mistake such name to mean an anti-fungal drug rather than what it really is.
Adding to this, the law also excludes generic names from being registered. Axilon may be
considered the same as Accilone because they have the same aural effect and the spelling of the
word "Axilon" may be considered as an alternative to "Accilone" in the eyes of the public.
Because of such similarity to a generic name, Axilon cannot therefore be registered as this would
be contrary to law. In view of the two arguments, the registration may then be contested.
1994 Bar:
Laberge, Inc., manufactures and markets after-shave lotion, shaving cream, deodorant,
talcum powder and toilet soap, using the trademark "PRUT", which is registered with the
Phil Patent Office. Laberge does not manufacture briefs and underwear and these items
are not specified in the certificate of registration.
JG who manufactures briefs and underwear, wants to know whether, under our laws, he
can use and register the trademark "PRUTE" for his merchandise. What is your advice?
SUGGESTED ANSWER:
YES. The trademark registered in the name of Laberge, Inc. covers only after-shave lotion,
shaving cream, deodorant, talcum powder and toilet soap. It does not cover briefs and underwear.
The limit of the trademark is stated in the certificate issued to Laberge Inc. It does not include
briefs and underwear which are different products protected by Laberge's trademark.
JG can register the trademark "PRUTE" to cover its briefs and underwear.

1996 Bar:
What is the distinction between infringement and unfair competition?
SUGGESTED ANSWER:
As held in the case of Del Monte Corp. et al. v. CA, the distinction between infringement
(presumably trademark) and unfair competition are as follows:
1. In 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. Fraudulent intent is unnecessary in infringement of trademark, whereas fraudulent intent
is essential in unfair competition;
3. The prior registration of the trademark is a prerequisite to an action for infringement of
trademark, whereas registration of the trademark is not necessary in unfair competition.
4. Unfair competition is broader as it includes cases that are covered not only by the
Intellectual Property Code but also by Art. 27 of the New Civil Code.

1996 Bar:
N Corporation manufactures rubber shoes under the trademark "Jordann" which hit the
Phil market in 1985, and registered its trademark with the Bureau of Patents, Trademarks
and Technology (BPTTT) in 1990. PK Company also manufactures rubber shoes with the
trademark "Javorski" which it registered with BPTTT in 1978. In 1992, PK Co adopted
and copied the design of N Corporation's "Jordann" rubber shoes, both as to shape and
color, but retained the trademark "Javorski" on its products.
May PK Company be held liable to N Co? Explain.
Yes, PK may be held liable to N for unfair competition.
There is unfair competition when the competing products are so similar in design and appearance
that the customer will likely be led into thinking that the products are manufactured by one and
the same manufacturer. In the case of Converse Rubber Co v Jacinto Rubber & Plastics, the
Supreme Court held that priority in registration is not material in an action for unfair competition
as distinguished from an action for infringement of trademark. The basis of an action for unfair
competition is confusing and misleading similarity in general appearance, not similarity of
trademarks.
By copying the design, shape and color of N Corporation's "Jordann" rubber shoes and using the
same in its rubber shoes trademarked "Javorski," PK is obviously trying to pass off its shoes for
those of N. It is of no moment that the trademark "Javorski" was registered ahead of the
trademark "Jordann."

1996 Bar:
What is the "test of dominancy"?
In the case of Asia Brewery v CA the Supreme Court explained that the test of dominancy
focuses on the similarities of the prevalent features of the competing trademarks which might
cause confusion or deception, and thus infringement takes place. Duplication or imitation is not
necessary; nor is it necessary that the infringing label should suggest an effort to imitate.
Similarity in size, form and color, while relevant, is not conclusive.

2003 Bar:
Distinguish infringement of trademark from unfair competition.
The distinctions between infringement and unfair competition are as follows:
1. In infringement of trademark, there is unauthorized use of a trademark, while unfair
competition under the IPC involves passing off of one's goods as those of another and
giving one's goods the appearance of that of another;
2. It is not necessary to establish fraudulent intent in a case for infringement of trademark
while it is necessary to establish fraudulent intent in an unfair competition case;
3. Registration of the trademark is necessary for the filing of an action for infringement of
trademark while prior registration of a trademark is not necessary in unfair competition;
4. Unfair competition is broader as it includes cases that are covered not only by the
Intellectual Property Code but also by Article 27 of the New Civil Code.

2003 Bar:
K-9 Corporation, a foreign corporation alleging itself to be the registered owner of
trademark "K-9" and logo "K," filed an Inter Pares case 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 brought before the RTC prosper? Why?
SUGGESTED ANSWER:
Yes, the action brought before the RTC may prosper. Section 151, paragraph 2 of the Intellectual
Property Code of the Philippines states that the earlier filing of a 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.
Hence, K-9 Corporation's filing of a petition for cancellation before the IPO does not constitute a
bar for the filing of an action before the RTC.
Thus, the action could prosper.

2005 Bar: (1.) 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.

S Development Corporation has a better right. The rights in a mark shall be acquired
through registration with the Intellectual Property Office or IPO (Sec 122, IPC).

S Development Corporation has a better right to use the logo and the tradename, since the
protective benefits of the law are conferred by the fact of registration and not by use.
Although Shangrila Corporation's parent had used the tradename and logo long before,
the protection of the laws will be for S Development Corporation because it was the first
entity to register the intellectual properties.

b. How does the international affiliation of Shangrila Corporation affect the outcome
of the dispute? Explain. (5%)

The international affiliation of Shangrila Corporation may be critical in the event that its
affiliates or parent company abroad had registered in a foreign jurisdiction the tradename
and the logo. A well-known mark and tradename is subject to protection under Treaty of
Paris for the Protection of Intellectual Property to which the Philippines is a member.

The Supreme Court ruled that foreign marks that are not registered are still accorded
protection against infringement and/or unfair competition under the Paris Convention and
 Nice Convention (Ecole De Cuisine Manille [Cordon Bleu of the Philippines], Inc. vs
Renau Contreau & Cie)

2009 Bar:
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:
For copyright infringement because of the unauthorized use of the published photographs;
(2%)
The trademark infringement will not prosper. The court ruled in the case of Superior
Commercial Enterprises, Inc. vs Kunnan Enterprises Ltd. And Sports Concept & Distributor Inc.
that only the registrant of the trademark may sue for trademark infringement. In this case, Sonny
Bachao is not the owner of the Lacoste trademark and cannot, therefore sue for copyright
infringement.

2011 Bar:
"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

2014 Bar:
T is the registered trademark owner of "CROCOS" which he uses on his ready-towear
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?
SUGGESTED ANSWER:
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.

2012 Bar:
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.
a. focusing on the similarity of the prevalent features of the competing marks which might
create confusion.
b. looking at the mark whether they are similar in size, form or color.
c. looking at the mark whether there is one specific feature that is dominant.

SUGGESTED ANSWER:
a. focusing on the similarity of the prevalent features of the competing marks which might
create confusion.
Dominancy Test focuses on the similarity of the main, essential, dominant, or prevalent features
of a mark. ( McDonald's Corp. v. L.C. Big Mak Burger Inc.)

2014 Bar:
In intellectual property cases, fraudulent intent is not an element of the cause of action
except in cases involving: (1%)
A. trademark infringement
B. copyright infringement
C. patent infringement
D. unfair competition

In infringement of trademark fraudulent intent is unnecessary, whereas in unfair competition

fraudulent intent is essential. (Del Monte Corporation vs. Court of Appeals)
2014 Bar:
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%)
I will advice KU to seek for the cancellation of the name Kluwer Graduate School of Business of
Mindanao with the Bureau of Trademarks. According to Sec. 123 (1) of the Intellectual Property
Code of the Philippines, 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 contempt or
disrepute." Since Jinggy's use of the mark "Kluwer" is exactly the same as name of his graduate
school which is Kluwer University (KU), it may disparage or falsely suggests a connection with
Kluwer University. Hence, under the law, such mark that falsely suggests a connection is not
registrable. KU, under the law, has the right to seek cancellation of the name Kluwer Graduate
School of Business of Mindanao with the Bureau of Trademarks.

2014 Bar:
Skechers Corporation sued Inter-Pacific for trademark infringement, claiming that Inter-
Pacific used 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%)
The Dominancy Test should be applied. The problem has similar factual milieu as Skechers,
USA, Inc. v. Inter-Pacific Industrial Trading, Nov. 30, 2006, where the court applied the
Dominancy Test. It held that, "Applying the Dominancy Test to the case at bar, this Court finds
that the use of the stylized "S" by respondent in its Strong rubber shoes infringes on the mark
already registered by petitioner with the IPO. While it is undisputed that petitioner's stylized "S"
is within an oval design, to this Court's mind, the dominant feature of the trademark is the
stylized "S," as it is precisely the stylized "S" which catches the eye of the purchaser. Thus, even
if respondent did not use an oval design, the mere fact that it used the same stylized "S", the
same being the dominant feature of petitioner's trademark, already constitutes infringement
under the Dominancy Test. (Skechers, USA, Inc. v. Inter-Pacific Industrial Trading, Nov. 30,
2006).
Hence, following the same in the given case, it is the stylized S that catches the eye of the
purchaser rather than the trivial dissimilarities in the design. The stylized S is the dominant
feature of the product and with the same, similarities can already readily seen with the registered
mark. Hence, the Dominancy Test is correct test to be applied.

2015 Bar:
Differentiate trademark, copyright and patent from each other. (6%)
1. As to definition:

a. Trademark is any visible sign capable of distinguishing goods

b. Copyright is an incorporeal right granted by statute to the author or creator of
original literary and artistic works whereby he is invested for a limited period of
time with the right carry out, authorize and prevent the reproduction, distribution,
transformation, rental, public performance and other forms of communication of
his work to the public.
c. Patent is any technical solution of any problem in any field of human activity
which is new, requires an inventive step and industrially applicable.

2. As to object

a. The object of trademark are goods

b. The object of copyright are original literary and artistic works
c. The object of patent is invention

3. As to term

a. The term of trademark is ten years

b. The term of copyright is generally 50 years
 c. The term of patent is 20 years from application

4. As to how acquired

a. Trademark is acquired through registration and use

b. Copyright is acquired from the moment of creation
c. Patent is acquired through application with the IPO

What is the doctrine of equivalents? (2%)

In a the case of Godines vs Court of Appeals, it was held that infringement of patent occurs when
a device appropriates a prior invention by incorporating its innovative concept and albeit with
some modifications and change performs the same function in substantially the same way to
achieve the same result.
In what ways would a case for infringement of trademark be different from a case for
unfair competition? (3%)
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. ( Delmonte
Corporation vs Court of Appeals, 181 SCRA 410)

2015 Bar:
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%) Suggested answer:
The certificate of registration (COR) must be issued in favor of CHEN, Inc. the Intellectual
Property Code provides: Section 123. Registrability. -123.1. A mark cannot be registered if it x x
xx
(d) Is identical with a registered mark belonging to a different proprietor or a mark with an
earlier filing or priority date, in respect of:
 i. The same goods or services, or
ii. Qosely related goods or services, or
iii. If it nearly resembles such a mark as to be likely to deceive or cause confusion.

Also, jurisprudence explained that under this provision, the registration of a mark is prevented
with the filing of an earlier application for registration. This must not, however, be interpreted to
mean that ownership should be based upon an earlier filing date. While RA 8293 removed the
previous requirement of proof of actual use prior to the filing of an application for registration of
a mark, proof of prior and continuous use is necessary to establish ownership of a mark. Such
ownership constitutes sufficient evidence to oppose the registration of a mark.
In the case at bar, Clark Enterprise is a mere distributor. Such is not sufficient to grant it the
ownership of the trademark over the goods distributed. Thus, the COR issued in favor of CHEN,
Inc should not be cancelled.

20 Bar:
MS Brewery Corporation (MS) is a manufacturer and distributor of the popular beer "MS
Lite." It faces stiff competition from BA Brewery Corporation (BA) whose sales of its own
beer product, "BA Lighter," has soared to new heights. Meanwhile, sales of the "MS Lite"
decreased considerably. The distribution and marketing personnel of MS later discovered
that BA has stored thousands of empty bottles of "MS Lite" manufactured by MS in one of
its warehouses. MS filed a suit for unfair competition against BA before the Regional Trial
Court (RTC). Finding a connection between the dwindling sales of MS and the increased
sales of BA, the RTC ruled that BA resorted to acts of unfair competition to the detriment
of MS. Is the RTC correct? Explain. (5%)
The RTC is not correct.
From jurisprudence, unfair competition has been defined as the passing off or attempting to pass
off upon the public the goods or business of one person as the goods or business of another with
the end and probable effect of deceiving the public. It formulated the "true test" of unfair
competition: whether the acts of defendant are such as are calculated to deceive the ordinary
buyer making his purchases under the ordinary conditions which prevail in the particular trade to
which the controversy relates. One of the essential requisites in an action to restrain unfair
competition is proof of fraud; the intent to deceive must be shown before the right to recover can
exist.
The Supreme Court ruled in Coca-Cola Bottlers Philippines Inc., vs. Gomez, G.R. No. 154491,
November 14, 2008 that hoarding, or the act of accumulating empty bottles to impede circulation
of the bottled product, does not amount to unfair competition. Hoarding inflicts unfairness by
seeking to limit the opposition's sales by depriving it of the bottles it can use for these sales.
In this case, BA did not fraudulently "pass off" its product as that of MS Lite. There was no
representation or misrepresentation on the part of BA that would confuse or tend to confuse its
goods with those of MS Lite. Hence, RTC is not correct. BA did not resort to unfair competition.

2016 Bar:
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%)

ANSWER:

a. No. The Supreme Court in Birkenstock Orthopaedie GMBH vs. Philippine Shoe Expo
Marketing Corporation, GR No. 194307, November 20, 2013 emphasized that
registration of a trademark, by itself, is not a mode of acquiring ownership. If the
applicant is not the owner of the trademark, he has no right to apply for its registration. It
is not the application or registration of a trademark that vests ownership thereof, but it is
the ownership of a trademark that confers the right to register the same.

Since YYY is not the owner of the trademark, it has no right to apply for registration.
Registration of trademark, by itself, is not a mode of acquiring ownership. It is the
ownership of a trademark that confers the right to register the same. Therefore, YYY
does not have any prior right over the trademark.

b. No, the prior registration is not conclusive as to the ownership of trademark.

The Supreme Court ruled in Birkenstock Orthopaedie GMBH vs. Philippine Shoe Expo
Marketing Corporation, GR No. 194307, November 20, 2013 that registration merely
creates a prima facie presumption of the validity of the registration, of the registrant's
ownership of the trademark, and of the exclusive right to the use thereof.

Such presumption, just like the presumptive regularity in the performance of official
 functions, is rebuttable and must give way to evidence to the contrary.

Therefore, the prior registration of YYY Engineers is not conclusive as to its ownership
of the trademark TTubes.

2016 Bar:
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 of
X, 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%)
The application of the Holistic Test is not correct. The Court in McDonald's Corporation vs. LC
Big Mak Burger, Inc., GR No. 143993, August 18, 2004 stated that in determining likelihood of
confusion, jurisprudence has developed two tests, the dominancy test and the holistic test. The
dominancy test focuses on the similarity of the
-prevalent features of the competing trademarks that might cause confusion. In contrast, 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.
In cases involving burger products, the Supreme Court has consistently applied the dominancy
test. The dominancy test considers the dominant features in the competing marks in determining
whether they are confusingly similar. Under the dominancy test, courts give greater weight to the
similarity of the appearance of the product arising from the adoption of the dominant features of
the registered mark, disregarding minor differences. Courts will consider more the aural and
visual impressions created by the marks in the public mind, giving little weight to factors like
prices, quality, sales outlets and market segments.
In one case, Big Mak has been held to be confusingly similar with Big Mac and so with McDo
and Mcjoy both under the dominancy test. In this case, MINI-ME trademark is confusingly
similar with the ME-TOOmark. The color blue and blue green in their logos can be confusingly
similar. Given this, the application of the Holistic Test is not correct.
2018 Bar:
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 Yoling under the brand name
 "Ysmaellas" began to attract national distinction. Aling Yoling 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 Yoling 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%)
No. As held in the case of Kho v. Court of Appeals (G.R. No. 115758; March 19, 2002),
trademark, copyright and patents are different intellectual property rights that cannot be
interchanged with one another. In the case at bar, the brand name "Ysmaellas" is a proper subject
of trademark as it squarely falls within the definition that it is any visible sign capable of
distinguishing goods of an enterprise. Aling Yoling'a copyright on a trade name or mark does not
guarantee her the right to the exclusive use of the same for the reason that it is not a proper
subject of said intellectual right. Therefore, Aling Yoling cannot successfully obtain court relief
to prohibit Aling Yasmin from using the brand name "Ysmaellas" in her product on the basis of
Aling Yoling's copyright.
The registration of a copyright is only a proof of the recording of the copyright but not a
condition precedent for the copyright to subsist and for copyright infringement suit to prosper;
whereas, registration of a trademark is an indispensable requisite for any trademark infringement
suit.

(b) Can Aling Yasmin seek injunctive relief against Aling Yoling from using the brand name
"Ysmaellas", the latter relying on the doctrine of "prior use" as evidenced by her prior
copyright registration? (2.5%)
No. The Supreme Court ruled in the case of EYIndustrial Sales v. Shen Dar (G.R. No. 184850;
October 20, 2010) that registration does not confer the upon the registrant an absolute right to the
registered mark. The certificate of is merely a prima facie proof that the registrant is the owner of
the registered mark or trade name. Evidence of prior and continuous use of the mark or trade
name by another can overcome the presumptive ownership of the registrant and may very well
entitle the former to be declared owner in an appropriate case. Here, the registration of Aling
Yasmin of the brand name "Ysmaellas" does not confer upon her the absolute right of the mark.
Registration does not confer ownership. As evidenced by copyright registration of Aling Yoling,
it is clear that Aling Yoling is the prior user of the mark. Since Aling Yoling was the first one to
use the brand or trade name in commerce, then she is considered the owner thereof. Thus, Aling
Yasmin cannot seek injunctive relief against Aling Yoling from using the brand name
"Ysmaellas".
(c) Can Aling Yoling 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 coverages? (2.5%)
No. Section 123.1(e) of the Intellectual Property Code provides that a mark cannot be registered
if it 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. Clearly, the well- known mark rule only applies to a mark which is well- known
internationally and in the Philippines. In the instant case, nothing was indicated that the brand
name "Ysmaellas" was well-known internationally and in the Philippines. Hence, Aling Yoling
cannot seek the cancellation of Aling Yasmin's trademark registration of the brand name
"Ysmaellas" on the ground of well- known brand. She, however, can seek the cancellation of the
trademark for being the prior user even though the mark is not well-known.

2019 Bar:
Define the following terms:
(b) Unfair competition (2%)
Section 168.2 of the Intellectual Property Code provides that there is unfair competition when
any person employs 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.

2019 Bar:
In 2005, W Hotels, Inc., a multinational corporation engaged in the hospitality business,
applied for and was able to register its trademark "W" with the Intellectual Property
Office of the Philippines (IPO) in connection with its hotels found in different parts of the
world.
In 2009, a Filipino corporation, RST Corp., filed before the IPO a petition for cancellation
of W Hotels, Inc.'s "W" trademark on the ground of non-use, claiming that W Hotels, Inc.
failed to use its mark in the Philippines because it is not operating any hotel in the country
which bears the "W" trademark.
In its defense, W Hotels, Inc. maintained that it has used its "W" trademark in Philippine
commerce, pointing out that while it did not have any hotel establishment in the
Philippines, it should still be considered as conducting its business herein because its hotel
reservation services, albeit for its hotels abroad, are made accessible to Philippine residents
through its interactive websites prominently displaying the "W" trademark. W Hotels, Inc.
also presented proof of actual booking transactions made by Philippine residents through
such websites.
Is W Hotels, Inc.'s defense against the petition for cancellation of trademark tenable?
Explain. (5%)
No. The Intellectual Property Code provides that there must be actual use after registration. The
registrant shall file a declaration of actual use and evidence to that effect. A trademark may be
cancelled 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 the
uninterrupted period of 3 years or longer.
In the case at bar, W Hotels, Inc. failed to file a declaration of actual use and present an evidence
to that effect that it provided hotel reservation services, albeit for hotels abroad, accessible to
Philippine residents through its interactive websites prominently displaying the "W" trademark
during the uniterrupted period of 3 years or longer. Therefore, its defense is untenable.