CASE DOCTRINES IN INTELLECTUAL PROPERTY LAW

By: Kairene Diao

[Based on the syllabus and discussions of Atty. Verne]

Registration of marks

Mattel vs. Francisco Barbie confectionair vs. Barbie dolls

(2008)
Whether Uy’s trademark “Barbie” for confectionaires is confusingly
similar with that of Mattel’s “Barbie”, and thus Uy’s application for
registration of trademark should not be given due course. (NO, it is not
confusingly similar because Mattel’s TM covers dolls and related
paraphernalia, while Uy’s TM is for confectionaires.)

● This case was already moot because Uy admitted that he had

abandoned his application for his failure to file the Declaration
of Actual Use (DAU), as required under RA 8293.

Tanduay Distillers Tanduay “Ginebra kapitan” vs. San Miguel’s “Ginebra San Miguel -
vs. Ginebra (2022) both liquor products

● Is “Ginebra” a generic mark that cannot be appropriated? (NO,

and here it already acquired a secondary meaning as to GSM.)
● Can Tanduay use the word “Ginebra” in its liquor products?
(NO, because

Strength of the mark – degree of distinctiveness of marks:

1. Coined or fanciful marks - invented words or signs that have no
real meaning (e.g., Google, Kodak). These marks are the
strongest and have the greatest chance of being registered.

2. Arbitrary marks - words that have a meaning but have no

logical relation to a product (e.g., SUNNY as a mark covering
mobile phones, APPLE in relation to computers/phones).

3. Suggestive marks - marks that hint at the nature, quality or

attributes of the product, without describing these attributes
(e.g., SUNNY for lamps, which would hint that the product will
bring light to homes). If not considered as bordering on
descriptive, this may be allowed.

4. Descriptive marks - describe the feature of the product such as

quality, type, efficacy, use, shape, etc. The registration of
descriptive marks is generally not allowed under the IP Code.

5. Generic marks - words or signs that name the species or object

to which they apply (e.g., CHAIR in relation to chairs). They are
not eligible for protection as marks under the IP Code.
a. EX: Doctrine of Secondary meaning – Here, a word or
 phrase that is originally incapable of exclusive
appropriation, may nonetheless be used as a TM of an
enterprise if such word or phrase, by reason of its long
and exclusive use with reference to its article, has come
to mean that such article was its product.

KEC I vs. KPII (July KPII’s “KOLIN” for Class 35 goods

2021) en banc

● Whether KPII’s application should be denied. (YES, because it

is confusingly similar to KECI’s mark and its use of this mark
will cause damage to KECI because of the likelihood of
confusion.
○ Since complementarity is another basis for finding legal
relatedness, it cannot be denied that KOLIN (Class 9)
and KOLIN cover related goods and services, thereby
making confusion likely.

● Does KPII have the authority to register anew for the mark,
“Kolin” with different style? NO, because the only consequence
of TKC's authorization is that KPII was given the right to use the
exact mark allowed to be registered in the Taiwan Kolin case,
not a blanket authority to use — or register, for that matter —
any and all figurative or stylized versions of the word "KOLIN".

TK vs. KECI (March Design mark of TK for “Kolin”

2015) - TK - Class 9 goods → colored televisions, refrigerators, window-type
and split-type air conditioners, electric fans and water dispensers
- KECI - Class 9 goods → automatic voltage regulator, converter,
recharger, stereo booster, AC-DC regulated power supply, step-down
transformer, and PA amplified AC-DC

● Whether TK is entitled to its trademark registration of KOLIN

over its specific goods of television sets and DVD players.
(YES, because the uniformity in the parties’ classification of
goods does not automatically preclude the registration of an
apparently identical mark and the trademarks of TK and KECI
are substantially different.)
○ Having the same classification of goods covered by the
 disputed mark is not the sole and decisive factor in
determining a possible violation of Kolin Electronics’
intellectual property right should the petitioner's
application be granted. It is hornbook doctrine, as held
in the above-cited cases, that emphasis should be on
the similarity of the products involved and not on the
arbitrary classification or general description of their
properties or characteristics.

KECI vs. KPII KECI - KOLIN vs. TK - kolin

(February 2021)
● Whether TK should be allowed to register the mark for TV sets
and DVD players. (NO, because the marks are confusingly
similar and will cause damage to KECI.)

● SC’s findings:
○ There is resemblance between KECI's KOLIN and
KPII's kolin marks;
○ The goods covered by KECI's KOLIN are related to the
goods covered by KPII's kolin;
○ There is evidence of actual confusion between the two
marks;
○ The goods covered by KPII's kolin fall within the normal
potential expansion of business of KECI;
○ The sophistication of buyers is not enough to eliminate
confusion;
○ KPII's adoption of KECI's coined and fanciful mark
would greatly contribute to likelihood of confusion; and

○ KPII applied for kolin in bad faith.

● TEST of confusion:

a) Resemblance of marks

i) Dominancy test - this focuses on the similarity of

the prevalent (dominant) features of the
competing trademarks which might cause
confusion or deception, and thus infringement. If
the competing trademark contains the main,
essential or dominant features of another, and
confusion or deception is likely to result,
infringement takes place.

ii) Holistic test – Holistic or totality test - requires

that the entirety of the marks in question be
considered in resolving confusing similarity.

b) Relatedness of the G/S (Mighty Corporation case)

i) Business to which the G/S belongs
 ii) Class of products
iii) Quality, quantity, size, nature of package,
wrapper, or container
iv) Nature and cost
v) Descriptive properties, physical attributes, or
other essential characteristics relating to form,
composition, texture, and quality
vi) Day-to-day household item?
vii) Fields of manufacture
viii) Conditions under which the article is usually
purchased
ix) Channels of trade through which the goods flow
— parang wala na rin itong bearing kasi lahat
pwede na rin thru online selling platforms
x) Complementarity [additional]
xi) Nice Classification – REMOVED from list

● Normal potential expansion of business – the registered

trademark owner enjoys protection in product and market areas
that are the normal potential expansion of his business.
(Dermaline vs. Myra Pharma)

● Strength of marks – HERE, KECI's KOLIN mark is a fanciful or

coined mark. Considering that it is highly distinctive, confusion
would be likely if someone else were to be allowed to
concurrently use such mark in commerce.

Word mark Design mark

Greater protection than design or On the other hand, stylized

stylized mark.
According to the WIPO, a word
mark "often provides broad
protection because it allows the
owner to limit a competitor's use
of any figurative version of the
trademark that is confusingly
similar for the same type of
goods or services." Otherwise
stated, "[t]he words and/or letters
or numbers themselves are
protected."
marks offer narrow protection
because "should the image
change in any way, the
registration loses its
enforceability to an extent since it
pertains to that exact
registration."
simply put, the registrant of a
stylized mark only gains rights
and protection over the particular
and specific stylization of the
registered mark.

Composed of only words, letters, Consists of not only characters,

numbers, or a combination of but also a specific design, color,
them. or some other distinctive
element.
KECI vs. TK Domain name of KECI – it should be registration of service mark
(December 2021) representing the domain name

● Whether KECI has the right to register and use the mark
"www.kolin.ph" consistent with its exclusive right to use the
"KOLIN" mark in relation to the goods/services covered by
Class 35. (YES, because KECI was already declared the first
and prior user of the "KOLIN" mark in the Philippines and thus
the owner of the "KOLIN" mark under RA 166, in a final and
executory decision rendered by the CA. This is pursuant to Sec.
236 of the IP Code that states that nothing in the IP Code shall
impair the rights of the enforcement of marks in good faith prior
to the effective date of said law.)
● Figurative vs. word mark – Perlas-Bernabe concurring opinion

Perlas- Bernabe Concurring Opinion:

Mang Inasal vs. IFP OK Hotdog Inasal Cheese Hotdog Flavor Mark" (OK Hotdog Inasal
Manufacturing mark) filed application in 2011
(2017) Vs. Mang Inasal, Home of Real Pinoy Style Barbeque and Device –
registered in 2006

● Whether IFP’s mark should be given due course. (NO, because

OK Hotdog Inasal mark is a colorable imitation of the Mang
Inasal mark, as shown by the fact that IFP used the exact same
dominant figurative mark of Mang Inasal for its cracker
packaging although there are other elements which IFP
omitted.)

● Conditions of confusion and likelihood of deception per Sec.

123.1(d)(iii)
1) prospective mark must nearly resemble or be similar to an
earlier mark

2) prospective mark must pertain to goods or services that

are either identical, similar or related to the goods or
services represented by the earlier mark

Prior user in good faith

Zuneca vs. Zuneca - ZYNAPS → for medicine for treatment of seizure disorders
Natrapharm (2020) vs. Natrapharm - ZYNAPSE → or the treatment of cerebrovascular disease or
stroke

● Does Zuneca’s actual prior use of the mark tantamount to its

 ownership of the disputed mark? (NO, because this principle of
actual use and non-abandonment (which vests ownership of
the mark), has already been abandoned and is embodied in the
IP Code which states that ownership of a trademark is acquired
through registration.) (S159.1 IPC)
● Whether Zuneca should be allowed to continue using its mark,
“ZYNAPS”. (YES, because it is a prior user in good faith)

Section 159.1 of the IP Code clearly contemplates that a prior user in

good faith may continue to use its mark even after the registration of
the mark by the first-to-file registrant in good faith, subject to the
condition that any transfer or assignment of the mark by the prior user
in good faith should be made together with the enterprise or business
or with that part of his enterprise or business in which the mark is used.

Note: January 1, 1998. - effectivity of the IP Code where the actual use
and non-abandonment of mark is deleted.

Madrid Protocol

IP-AP vs. Ochoa Constitutionality of Ph’s accession to the Madrid Protocol

(2016)
● Whether the accession to the Madrid Protocol by the President,
without concurrence by ⅔ of the Senate, is constitutionally
infirm. (NO, and the accession is valid because the Madrid
Protocol is an executive agreement. As such, the President,
without the concurrence of the Senate, may ratify the Protocol.)

Well-known marks

Shangri-La vs. CA Shangri-La device/logo “S” and “Shangri-La”

(2001)
●

Skechers USA Inc. Search warrants applied for by Skechers against Inter Pacific, in
v. Inter Palta relation to its “S” (with oval design) mark registered in the IPO.
[J]acific Industrial
Trading Corp., GR ● Whether Inter Pacific is guilty of trademark infringement. (YES,
164321, 23 March because Inter Pacific made a colorable imitation of the “S”logo
2011, Second of Skechers.)
Division Resolution ○ Here, 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.

● The essential element of infringement under R.A. No. 8293 is

that the infringing mark is likely to cause confusion. The
Dominancy Test focuses on the similarity of the prevalent or
dominant features of the competing trademarks that might
cause confusion, mistake, and deception in the mind of the
purchasing public.

General considerations

Kho vs. CA Chin Chun Su - difference between trademark, copyright, and

patentable creations

Trademark – 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. In relation thereto,
a trade name means the name or designation identifying or
distinguishing an enterprise.

Copyright – the scope of a copyright is confined to literary and

artistic works which are original intellectual creations in the literary
and artistic domain.
- Protected from the moment of their creation.

Patentable creations – refer to any technical solution of a problem

in any field of human activity which is new, involves an inventive
step and is industrially applicable.

Pearl and Dean vs. Light boxes

SMI (2003)
● Does the copyright registration of PD of the technical drawings
of the utility boxes include the utility boxes themselves? (NO,
because the actual product itself is not the proper subject of a
copyright, particularly under “O” classification under Section 2
(O) of PD 49)
○ The copyright was limited to the drawings alone and not
to the light box itself.
○ Sec. 2(O) of PD 49 provides for the covered works
under copyright, among others: Prints, pictorial
illustrations, advertising copies, labels, tags, and box
wraps.

● In this case:
○ The copyright protection extended only to the technical
drawings and not to the light box itself because the latter
was not at all in the category of "prints, pictorial
illustrations, advertising copies, labels, tags and box
 wraps."

Roma Drug vs. RTC ● Whether Roma Drug should be held liable for importing
Guagua unregistered counterfeit drugs. (NO, because Sec. 72 provides
that the patent owner may not prevent third parties from USING
a patented product, after the drug or medicine has been
introduced in the Ph or anywhere else in the world by the patent
owner, or by a party authorized by him and that the right to
import the drugs and medicines contemplated herein shall be
available to any government agency or any private third party.)

Smith Kline vs. CA ● Doctrine of equivalents – [kumuha ka ng part sa prior

invention tapos inimprove mo lang] provides that an
infringement also takes place when a device appropriates a
prior invention by incorporating its innovative concept and,
although with some modification and change, performs
substantially the same function in substantially the same way to
achieve substantially the same result. [Check: Substantial
sameness in the principle or mode of operation]

● The doctrine of equivalents thus requires satisfaction of the

function-means-and-result test, the patentee having the
burden to show that all three components of such
equivalency test are met.

○ In this case: (HINDI SILA PAREHAS) There is no

showing that Albendazole is in every essential detail
identical to methyl 5. Although they are both an
anthelmintic agent, that the methods or means by which
Albendazole weeds out parasites in animals is the same
as that of the methyl 5 are not substantiated.

Compulsory licensing

Parke, Davis, and ● That a compulsory license cannot be granted to respondent

Co vs. Doctor’s because the latter does not intend to work the patented
Pharmaceuticals invention itself but merely to import it – INCORRECT, because
(1965) the law does not require the petitioner of a license to work the
patented invention if it refers to medicine.

Smith Kline and Additional ground for grant of compulsory license → relates to food or
French Laboratories medicine
vs. CA (2001)

Godines vs. CA Tests of infringement

1) Literal infringement – [LITERAL] look at the words of the

claim. If the accused matter falls within the claim, there is
infringement. To determine if a particular item falls within the
literal meaning of the patent claims, the court must juxtapose
 the claims of the patent and the accused product within the
overall context of the claims and specifications, to determine
whether there is EXACT IDENTITY of all material elements.

2) Doctrine of equivalents – [SUBSTANTIAL SIMILARITIES]

Infringement also occurs when a device appropriates a prior
invention by incorporating its innovative concept and, albeit with
some modification and change, performs substantially the same
function in substantially the same way to achieve substantially
the same result.

● RATIONALE: To permit the imitation of a patented invention

which does not copy any literal detail; would be to convert the
protection of the patent grant into a hollow and useless thing.
Such imitation would leave room for – indeed encourage – the
unscrupulous copyist to make unimportant and insubstantial
changes and substitutions in the patent which, though adding
nothing, would be enough to take the copied matter outside the
claim, hence outside the reach of the law.

● Minor modifications in a patented invention are sufficient to put

the item beyond the scope of literal infringement.

● Better to look at the elements rather than rely on the names of

things.

● The law protects a patentee against imitation of his patent by

other forms and proportions. If two devices do the same work in
substantially the same way, and accomplish substantially the
same result, they are the same, even though they differ in
name, form, or shape.

Remedies – Injunction

Maguan vs. CA
● Whether in an action for infringement, a court has jurisdiction to
determine the invalidity of patents which question of invalidity
was still pending before the patent office. (YES, because
according to RA 165, a patentee has exclusive right to make,
use, and sell the patented article and if his rights were violated,
he may file an action before the RTC and secure an injunction
for the protection of his rights.)
○ any patentee whose rights have been infringed upon
may bring an action before the proper CFI now (RTC)
and to secure an injunction for the protection of his
rights. (S42, RA 165)

○ REQUISITES:
■ Existence of clear and unmistakable right that
 must be protected
■ An urgent and paramount necessity for the writ
to prevent serious damage

Phil Pharma vs.

Pfizer (2010) Can an injunctive relief be issued based on an action of patent
infringement when the patent allegedly infringed has already
lapsed? (NO)
● Does Pfizer still have exclusive rights on the patent? (NO,
because the patent has already expired)

● A patentee shall have the exclusive right to make, use and sell
the patented machine, article or product, and to use the
patented process for the purpose of industry or commerce,
throughout the territory of the Philippines for the term of the
patent…(S37, RA 165)
○ the exclusive right of a patentee to make, use and sell a
patented product, article or process exists only during
the term of the patent.

Levi Strauss vs. ● GROUNDS FOR ISSUANCE OF WPI:

Clinton Apparelle
a) the applicant is entitled to the relief demanded, and
the whole or part of such relief consists in restraining
the commission or continuance of the act or acts
complained of, or in requiring the performance of an
act or acts, either for a limited period or perpetually

b) commission, continuance, or non-performance of the act

or acts complained of during the litigation would
probably work injustice to the applicant

c) a party, court, agency or a person is doing,

threatening, or is attempting to do, or is procuring
or suffering to be done, some act or acts probably
in violation of the rights of the applicant respecting
the subject of the action or proceeding, and tending to
render the judgment ineffectual.

● NOTE: There must be a clear and positive right especially

calling for judicial protection.

Industrial design

Brandir vs. Cascade Distinction between ID and WOPA - ribbon rack

Pacific
● Whether the ribbon rack (ITSELF) is copyrightable. (NO,
because the form of the rack is influenced in significant
measure by utilitarian concerns and thus any aesthetic
elements cannot be said to be conceptually separable from the
 utilitarian elements.)

● In this case, form and function are inextricably intertwined in the

rack, its ultimate design being as much the result of utilitarian
pressures as aesthetic choices. Indeed, the visually pleasing
proportions and symmetricality of the rack represent design
changes made in response to functional concerns.

● Denicola test – [ADOPTED] (based on a Denicola article,

“Applied Art and Industrial Design: A Suggested Approach to
Copyright in Useful Articles) → KD: Is the design interconnected
with the function/s of the product? Such that the design is an element
of the function? If YES - not copyrightable; if NO - copyrightable
○ If design elements reflect a merger of aesthetic and functional
considerations, the artistic aspects of a work cannot be said to
be conceptually separable from the utilitarian elements. →
NOT COPYRIGHTABLE

○ Conversely, where design elements can be identified as

reflecting the designer's artistic judgment exercised
independently of functional influences, conceptual
separability exists. → COPYRIGHTABLE

○ Examples supporting the Denicola test:

■ the artistic aspects of the belt buckles reflected
purely aesthetic choices, independent of the
buckles' function (Kielstein-Cord) -
Copyrightable - NO NEED TO REGISTER
● Connect na kahit di mo iregister, may
remedy ka kasi automatic ang copyright

■ The distinctive features of the torsos--the

accurate anatomical design and the sculpted
shirts and collars--showed clearly the influence
of functional concerns. Though the torsos bore
artistic features, it was evident that the designer
incorporated those features to further the
usefulness of the torsos as mannequins. (Carol
Barnhart Inc. v. Economy Cover Corp.) - not
copyrightable - SO IREREGISTER MO
● Connect na pag hindi mo niregister, wala
kang remedy

● A copyrighted work of art does not lose its protected status

merely because it subsequently is put to a functional use.
○ Had Brandir merely adopted one of the existing
sculptures as a bicycle rack, neither the application to a
utilitarian end nor commercialization of that use would
have caused the object to forfeit its copyrighted status.
Emzee Foods vs. Elars Lechon vs. Elarz/Elar
Elarfoods (2021)

Unfair Competition has been defined as the passing off or attempting

to pass off upon the public goods or business of one person as the
goods or business of another with the end and probable effect of
deceiving the public.

1. Confusing similarity in the appearance of the goods involved,

and
2. Intent to deceive the public and defraud a competitor.

● Here, petitioner's product is lechon which is also the product of

respondent. Since petitioner uses "ELARZ LECHON", "ELAR
LECHON", "PIG DEVICE", and "ON A BAMBOO TRAY" on
their packaging materials and signages in the same manner like
respondent uses "ELAR'S LECHON" mark on its lechon
products, petitioner has obviously clothed its product the
general appearance of respondent's product itself. More, there
is no notice to the buying public that "ELARZ LECHON" is not
respondent's product, albeit it is the latter that has the exclusive
right to the trademark "ELAR'S LECHON." There is indeed a
clear intent to deceive the public on petitioner's part.