Trademarks

Hello!
Instructor: Atty. Catherine
Hermoso
Module 2: Trademarks and
Tradenames
Email:
swu.learninglaw@gmail.com
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 1.
Definition of Terms
 A “mark” means 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. [Sec.
121.1, R.A. 8293]

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Examples of Philippine Trademarks

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 "Collective mark" means
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
[Sec. 121.2]

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Examples of Collective Marks

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 Certification Mark - are
usually given for compliance
with defined standards, but
are not confined to any
membership. They may be
used by anyone who can
certify that the products
involved meet certain
established standards.

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Examples of Certification marks

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Geographical Indicators - A
geographical indication (GI)
is a sign used on products
that have a specific
geographical origin and
possess qualities or a
reputation that are due to
that origin. E.g. Wagyu beef;
Bordeaux wine; Cebu
Lechon, Carcar Chicharon

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GI granted for Guimaras Mangoes

Source: https://mb.com.ph/2017/05/20/guimaras-mangoes-earn-geographical-
branding/

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 Tradename - means the
name or designation
identifying or distinguishing
an enterprise [Sec. 121.2]
e.g. San Miguel Corporation,
Jollibee Foods Corporation

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> The 8 Philippine-listed companies which made
it to the Forbes list include:
• SM Investments Corporation
• BDO Unibank Incorporated
• JG Summit Holdings Incorporated
• Ayala Corporation
• Top Frontier Investment Holdings
Incorporated
• Metropolitan Bank & Trust Company
(Metrobank)
• Aboitiz Equity Ventures
• Manila Electric Company (Meralco)
• (Source:
https://rappler.com/business/philippine-
companies-forbes-list-world-largest-listed-
firms)

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Trademark
Law in
Philippine
History
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Source: https://www.wipo.int/wipo_magazine/en/2005/02/article_0002.html

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1. Spanish Law on
Intellectual
property
- Came in force in
1880

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 Act No. 666
> Trademark &
Tradename Law
of the Philippine
Islands
> Enacted in 1903

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 R.A. 166
> Approved on June
20, 1947 and
enforced in the
Philippines until
December 31,
1997

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 R.A. 8293
> Intellectual
Property Code of
the Philippines
> Took effect on
January 1, 1998

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 R.A. 10372
> Contained several
material
amendments to
the IPC
> Enacted in 2012

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TRADEMARK INTERNATIONAL
TREATIES & CONVENTIONS

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 Trademark Conventions, Treaties and
Agreements

1. Convention Establishing the World Intellectual Property

Organization [Philippines: 14 July 1980]
2. Paris Convention for the Protection of Industrial Property
[Philippines: 27 Sept 1965]
3. Agreement on Trade-Related Aspects of Intellectual Property
Rights [TRIPS Agreement] [Philippines: 1 January 1995]
4. Madrid Protocol [Philippines; 25 July 2012]
5. Nice Trademark Classification Agreement
Source; https://www.ipophil.gov.ph/reference/philippine-
acceded-intellectual-property-treaties/]

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Fundamental Concepts
and Principles in
Trademark Law

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Purpose of the Trademark Law
"The purpose of the law
protecting a trademark cannot be
overemphasized. They are to
point out distinctly the origin
or ownership of the article to
which it is affixed, to secure to
him, who has been instrumental
in bringing into market a superior
article of merchandise, the fruit
of his industry and skill, and to
prevent fraud and imposition."
(Etepha v. Director of Patents, 16
SCRA 495)
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 Functions of a Trademark
1. Economic function – 2. Source – indicating
trademarks serve as an function – to indicate the
essential means of source or origin of the goods
distinguishing the products on which it is used.
of one manufacturer or
dealer from those or others.

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 Functions of a Tradmark
4. Advertisement Function –
3. Guarantee Function- the ability of a trademark to
trademarks also serve as a indicate the source or origin of
guarantee that the product the product on which it is used
to which they are affixed and ensure that the product
comes up to a certain comes up to the quality or
standard of quality. standard that consumers have
come to expect from it combine to
give effect to the advertising
function of trade-mark among
consumers.

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 Trademark vs Tradenames
TRADEMARK TRADENAME
> Any mark which > Trade name or business
distinguishes a product name which identifies
from another product or distinguishes an
> Registered with the enterprise
Bureau of > Registered with the
TRADEMARKS Department of Trade
and Industry

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Who is the owner of a
Trademark?

Any natural or juridical

person can own a
trademark after trademark
application and issuance of
a certificate of registration
as issued by the IPO.

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 Unno first registered
All Montana Flour in
Unno vs. the Philippines but was
General not the true owner of
Milling the trademark "All
Case Montana" but merely
an importer.
-General Milling was
authorized/licensed by
Centennial Mills (U.S.)
to use its trademark

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How is a mark acquired?

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 Acquisition of Trademark
1. Trademark 2. Actual Use without
Registration Registration
- Sec. 122, 124.1; 124.1 - Read the case of Puma
of IPC Sportsschuhgabriken vs
IAC (1988)
- See attached Trademark
Application Form

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Registrable Marks

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- Common words, names,
symbols, logos, designs
can be made a subject of
trademark application

- Generic words are

generally not registrable
unless they are
“suggestive marks”

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Marks that CANNOT
be registered
- Sec. 123 of IPC
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Unregistrable Marks
 Immoral, Deceptive or
Scandalous Matter
 Flag/coat of
arms/insignia of the
Philippines or any of
its political
subdivisions or of any
foreign nation

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 Name/Portrait/
Signature identifying a
particular living
individual (except by
his written consent)
 Name/signature/
portrait of a deceased
president of the
Philippines (unless
widow consents)

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 Identical with an
existing registered
mark, in respect of:
 Same goods or services
 Closely related goods
or services
 Likely to deceive or
cause confusion

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 Identical/confusingly
similar/translation of a
“well known mark” in
similar goods or
services

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 Identical/confusingly
similar/translation of a
“well known mark” in
dissimilar goods or
services if interests of
owner is likely to be
damaged

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 Likely to mislead the
public as to the nature,
quality, characteristics or
geographical origin of
goods or services
 Consists exclusively of
signs that are generic for
the goods or services they
seek to identify

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 Consists exclusively of
signs or indications
that have become
customary or usual to
designated the goods
or services in everyday
language

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 Registered marks that have become generic
> Band-aid > Polaroid
> Cellophane > Post-it
> Xerox > PowerPoint
> Velcro > Scotch Tape
> Jacuzzi > SuperGlue
> Jet Ski > Thermos

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 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;

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 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;
 Consists of color alone,
unless defined by a
given form
 Contrary to public order
or morality

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 -CFC Corpo applied for
registration of its “FLAVOR
Societe des MASTER” trademark
Produits -Societe des Produits
Nestle Inc. opposed on the
Nestle, SA grounds that they have an
vs CA existing registration for
“Master Roast” and
(2010) “Master Blend”
-CFC’s TM application was
cancelled

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Self Assessment
Questions
> What are generic
marks?
> Can generic
marks be
registered as a
trademark?
> Enumerate at least
ten marks that are
NOT registrable
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Case Analysis Question No. 1
Destileria Limtuaco, Inc. applied for trademark application for the
use of the names of historical figures and places to use on its
alcoholic drinks, namely:
1. Rizal
2. GomBurZa
3. Intramuros
4. Banaue
5. Laguna
6. Vigan

Are the stated trademarks registrable? Why or why not? Briefly

discuss citing legal reasons

Email your answers at: swu.learninglaw@gmail.com

Case Analysis Question No. 2
 Café de Manila Corp filed an application to use the marketing
slogan “The Frap Bar Everyone Deserves and Designs” on its
coffee products.
 Starbucks Corporation filed an opposition to the registration of
“Frap” in the marketing slogan on grounds that it owns the
trademark to “Frappucino”.
 Does the opposition of Starbucks have legal merit? Why or why
not? Briefly discuss stating legal reasons.
  
Email your answers at: swu.learninglaw@gmail.com
What are the rights of a
trademark owner?

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 Rights of a trademark owner
> 1. In case of a registered
trademarks, the owner
has the exclusive right
to use the mark and to
prevent all third parties
from using an identical
or similar mark in
similar goods or
services
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> 2. If a mark is classified
as a “well known mark”
this right to exclusive
use extends even to
prevent the use of an
identical or similar mark
in goods or services
which are not similar in
respect to those which
the mark is registered.
 How to determine
trademark infringement?

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 Doctrinal Tests to Determine Trademark
Infringement
Dominancy Test Holistic Test Doctrine of
- Focuses on the - Considers the Secondary
similarity of entirety of the Meaning
prevalent or marks including the - a word or phrase
dominant features packaging to originally incapable
of competing determine of being registered
trademark that confusing similarity but because of long
might cause and exclusive use in
confusion in the the market has
mind of the already been
consumer identified in the
mind of the
consumer as his
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product
Cases Applying
the Dominancy
Test
1. Dermaline Inc vs
Myra Pharmaceuticals
2. Phil. Nut Industry vs.
Standard
3 Asia Brewery Inc. vs.
CA, G.R. No. 103543,
July 5, 1993

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Cases Applying
the Holistic Test
1. American Cyanamid
Co. vs. Director of
Patents
2. Del Monte Corp. vs.
CA, (1990)
3. Phillip Morris vs
Fortune Tobacco

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 SECONDARY
MEANING
CASES:
1. Ang vs Teodoro (74
Phil 50 (1942)
2. Arce Sons and Co. vs.
Selecta Biscuits, (1961)
3. Phil. Nut Industry vs.
Standard (1975)

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Self Assessment
Questions
> What are the three
(3) doctrinal tests
used to determine
the presence or
absence of
trademark
infringement?

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Other Considerations in
TM infringement cases

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 Other considerations in TM infringement
cases:
> Related goods > Phonetic > Likelihood of
theory Similarity of confusion
Dissimilarity

> Colorable > Well known

Imitation marks

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Remedies Against
trademark
infringement
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 Who is liable for
infringement?

- See Sec. 155 of IPC

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 Liability for Infringement

SEC. 155. Remedies; Infringement. - Any person who shall, without

the consent of the owner of the registered mark:
155.1. 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

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 Liability for Infringement Cont’d
> 155.2. 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 in a
civil action for infringement by the registrant for the remedies
hereinafter set forth: Provided, That the infringement takes place
at the moment any of the acts stated in Subsection 155.1 or this
subsection are committed regardless of whether there is actual sale
of goods or services using the infringing material. (Sec. 22, R.A.
No 166a)
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Civil Remedies for TM
infringement
> 1. Recovery of Damages
> 2. Impounding Sales
Invoices and Documents
> 3. Double Damages

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4. Injunction

5. Destruction of
Infringing materials

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Limitations to Actions
for Infringement
- Sec. 159 IPC

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 Limitations to Actions For Infringement
(Sec. 159)
 1. PRIOR USER: > 2. INNOCENT > Remedy is only
Trademark INFRINGER (Sec. to enjoin future
registration has no 159.2 159.3) printing
effect on a person - Applies to
in good faith who businesses engaged
has been using the solely in the
mark for purpose business of printing
of his business or marks
enterprise before
> Also applies in Ads
the filing
date/priority date in Newspapers,
of the TM (Sec. Magazines,
159.1) periodicals,
electronic
communications,
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Zuneca Pharmaceutical vs
Natrapharm, Inc. 2020
Case
> “Zynaps” vs
“Zynapse”
> Right of a “prior user
in good faith”
> – a registered mark
shall have no effect
against any person
who was using the
mark in good faith
before the filing date
or priority date for the
purpose/s of his
business or enterprise
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 Rights of Foreign
Corporations to Sue in
Trademark of Service
- Sec. 160 of IPC
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 Right of Foreign Corporation To Sue
> SECTION 160.Right of Foreign Corporation to Sue in
Trademark or Service Mark Enforcement Action. — Any
foreign national or juridical person who meets the
requirements of Section 3 of this Act and does not engage in
business in the Philippines may bring a civil or administrative
action hereunder for opposition, cancellation, infringement,
unfair competition, or false designation of origin and false
description, whether or not it is licensed to do business in the
Philippines under existing laws.

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Cancellation of
Trademarks

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Who can file a case
for cancellation of
Trademarks?
-Sec. 151 of IPC

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Who can file for cancellation of Trademark
 Any person who > Petition for > At any time
believes he is or cancellation filed Mark has
will be damaged with the Bureau of become generic,
by the registration Legal Affairs (BLA) abandoned, or
of the mark within five (5) years was obtained
from the date of the fraudulently or
TM registration contrary to the
provisions of
this act

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 Cancellation of TM (cont’d)
> 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 three (3) years or longer.

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 UNFAIR
COMPETITION

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 LEVI STRAUSS (PHILS), INC., G.R. 162311 (2008)

>  “Generally, unfair competition consists in employing

deception or any other means contrary to good faith by
which any person 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 goodwill, or
committing any acts calculated to produce such result.”

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 UNFAIR COMPETITION VS
TRADEMANRK INFRINGEMENT
UNFAIR TM Infringement
COMPETITION 1. Unauthorized use of
1. Passing off one’s a registered
goods as those of trademark
another 2. Fraudulent intent is
2. Fraudulent intent is not necessary
an essential element 3. TM must be
3. Prior registration of registered to
a TM is not constitute
necessary infringement
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RECAP SELF
ASSESSMENT
TESTS
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 Self Assessment Question: Was there
Trademark Infringement? What Doctrinal Test
was Applied?

- “MacJoy”

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 Self Assessment Question: Was there
Trademark Infringement? What Doctrinal Test
was Applied?

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Was There Trademark Infringement? What
Doctrinal Test was Applied?

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Was There Trademark Infringement? What
Doctrinal Test Was Applied?

- “LIONPAS”

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Was There Trademark Infringement? What
Doctrinal Test Was Applied?

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Was There Trademark Infringement? What
Doctrinal Test Was Applied?

“DYNAFLEX” FOR
ELECTRICAL CABLES

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 Was There Trademark Infringement? What
Doctrinal Test Was Applied?
> “Master Roast” and > “Flavor Master”
“Master Blend” applied for by CFC
previously registered for its instant coffee
by Societe des product
Produits, Nestle for
its coffee products

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 Was there Trademark Ifnringement? What
Doctrinal Test was Applied?
> IFP Manufacturing
> Mang Inasal Corporation
Philippines, Inc. > “OK HOTDOG INASAL
CHEESE HOTDOG
FLAVOR”

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 The End of Module 2

Any questions?
Email me at
swu.learninaglaw@gmail.c
om

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