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From the book of Atty Ernesto Salao and class discussion on Intellectual Property Code
Significant innovations:
1. Rqt of prior use of the mark as a requisite for the filing of the trademark regis has been
removed
2. Use or regis in the Phil of well-known marks is no longer required for its protection to
similar goods. If the well-know marks are registered, such regis can protect its use even to
non-related products
3. Supplemental register has been abolished
Collective mark any visible sign designated as such in the app for regis and capable of
distinguishing the origin of any other common char, inc quality of goods of diff enterprises which
use the sign under the control of the regis owner of the collective mark.
Acquiring a Mark
The rights in a mark shall be obtained through registration.
If the applicant is not the owner of the mark, he has no right to apply for its registration.
Function of symbols:
1. To point out distinctly the origin or ownership of the goods where it is affixed
2. To assure the public that they procuring the genuine article
3. Advertise the articles they symbolize
Today, TM is not merely a symbol of origin and goodwill; it is often the most effective agent of
actual creation and protection of goodwill. It imprints upon the public mind and anonymous and
impersonal guaranty of satisfaction, creating a desire for further satisfaction.
Non-registrable marks marks is registrable as long as it does not fall under the category
mentioned in Sec 123.
1. Consist of immoral, deceptive and scandalous matter
2. Consists of the flag, coat of arms, insignia of the Phil, of its pol subd, or of any foreign
nation
3. Identical with a registered mark belonging to a diff proprietor
4. Identical or confusingly similar to or constitutes a translation a mark well-known
internationally whether regis here or not
5. Likely to mislead to public as to is quality, char and geographical origin
6. Consists exclusively of signs that are generic for the goods
7. Consists of color alone
8. Contrary to public order or morality
2 kinds of confusion:
1. Confusion of goods an otherwise prudent purchaser is induced to purchase one product in
the belief that he is purchasing another
2. Confusion of business assuming to originate from the same company
ASIA BREWERY v. CA
There is absolutely no similarity in the dominant features of both TMs. Infringement is determined
by the test of dominancy rather than difference of variations in the details of one Tm and of
another. Similarity in size, form, and color, while relevant is not conclusive.
2. Holistic Test entails a consideration of the entirety of the marks as applied to the
products, the labels and packaging, in determining confusing similarity.
Use of a mark identical with or confusingly similar with a well-known mark even if such well-known
mark is not registered in the Phil is disallowed!
If the well-known mark is registered in the Phil, prohibition to the use of mark extends to non-
related goods or services!
Under Phil Law, a trade name of a national of a State that is a party to the Paris Convention,
whether or not the trade name forms part of the trademark, is protected with the oblig of filing
or registration. Harvard Case
Criteria to determine when a mark is well-known knowledge of relevant sector of the public,
rather than of the public at large
Generic terms those which constitute the common descriptive term of an article, or comprise the
genus of which the particular product is a species
ASIA BREWERY v. CA
Pale Pilsen is a descriptive term. Hence, non-registrable and not appropriable by any beer
manufacturer.
Question: Is the mark the name of the place from which the goods actually come? If yes, then the
geographic term is probably used in a descriptive sense, and secondary meaning is required for
protection.
Procedure:
Application applicant may be a natural or juridical person; all must be named
Declaration of actual use registrant shall file a dec of actual use if the mark with evidence within
3 yrs from the filling date. Otherwise, the reg shall be refused or removed from the Register.
**proof of use in commerce in the processing of TM app is not required.
Filing date First to file rule. Date which all the reqt are submitted:
-express/ implicit indication that regis is sought
-identity of applicant
-contract info of applicant
-a reproduction of the mark sought to be registered
-list of goods/ services for which regis is sought
-payment of fee
Reciprocity any national, domiciled in a country which is a party to any convention, treaty relating
to intellectual prop rights or the repression of UC, to which the Phil is a party, or extends
reciprocal rights to nationals of the Phil by law, shall be entitled to benefits to extent necessary to
give effect to conventions, treaty or reciprocal law, in addition to rights bestowed by the IPC.
Examination procedure check compliance to reqt of filing date (if denied, 4 mos to amend app),
publishing
Issuance of Cert no opposition, opposition denied by the Dir of BLA, paid fee
Duration of Cert of Reg 10 yrs provided that applicant shall file a dec of actual use
Rights Conferred exclusive right to prevent all third parties not having the owners consent from
using the course of trade identical or similar signs or containers for goods or services which are
identical to those in respect to which the registered where such use would result to the likelihood
of confusion (Dermaline v. Myra Pharmaceuticals).
Limitation on Trademarks involving medicines (RA 9502) aims to bring down prices of medicines
There shall be no infringement of TM or trade names of incorporated or sold patented drugs and
medicines allowed of this Act, as well as imported or sold off-patent drugs and medicines: Provided,
That, said drugs and medicines bear the registered marks that have not been tampered, unlawfully
modified, or infringed upon.
Law allows third person the right to import the medicines. The unqualified right of private third
parties such as petitioners to import or possess unregistered imported drugs in the Phil is further
confirmed by the IRR of RA 9502.
Rights conferred to owner of well-known mark extend to goods and services which are not similar
to those in respect of which mark is registered
Cancellation of Registration filed at the BLA within 5 yrs from the date of registration of the
mark
Grounds:
1. Mark becomes generic name for the goods/ services
2. Mark has been abandoned
3. Mark was fraudulently obtained
4. Mark used to represent the source of goods/ services
5. Fails to use the mark for an uninterrupted period of 3 yrs or longer
Civil Remedies
1. Infringement
Elements of Infringement (Prosource v. Horphag)
1. TM being infringe is regis in the IPO
2. TM is reproduce, counterfeited, copied or colorably imitated by the infringer
3. Infringing mark is used in connection with the sale, offering for sale or advertising
4. Use of application of the infringing mark is likely to cause confusion or mistake or deceive
purchasers
5. It is without the consent of the TM owner
Trademark dilution lessening of the capacity of a famous mark to identify and distinguish goods or
services, regardless of the presence or absence of competition or likelihood of confusion, mistake
or deception
2. Injunction
LEVI STRAUSS v. CLINTON APPARELLE -
To be eligible for protection from dilution, there has to be a finding that:
1. TM sought to be protected is famous and distinctive
2. Use of respondent of Paddocks and Design began after petitioners mark became famous
3. Such subsequent use defames petitioners mark
UNFAIR COMPETITION
Law thus holds any person who shall employ deception or any other means contrary to GF by which
he shall pass of 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 results, guilty of unfair competition, and shall be subject to an action therefor.
Scope of UC
1. Any person, who is selling his goods and GIVES THE APPEARANCE of another
manufacturer, either in the goods themselves of the wrapping of the package, which could
likely to influence purchasers to believe that the goods offered are those of the
manufacturer, other than the actual manufacturer
2. Any person, who by artifice or device, INDUCE THE FALSE BELIEF that such person
offers the services of another who has identified such service in the mind of the public
3. Any person, who SHALL MAKE FALSE STATEMENT in course of trade to discredit to
business, goods or service of another
The essential elements of an action for UC are (1) confusing similarity in the general appearance of
the goods, and (2) intent to deceive the public and defraud the competitor (McDonalds v. L.C. Big
Mak).
UC is broader than TM infringement and includes the passing off of good with or without trademark
infringement. TM infringement is a form of UC. TM infringement constitutes UC when there is not
merely likelihood of confusion, but also actual or probable deception on the public because of the
general appearance of the goods. There can be TM infringement without UC when the infringer
discloses on the labels containing the mark that he manufactures the goods thus preventing the
public from being deceive that the goods originate from the owner.
Infringement of TM vs. UC
Unauthorized use of TM Passing off of ones goods as those of another
Intent is unnecessary Fraudulent intent is essential
Prior registration of the mark is a prerequisites Registration not necessary
to the action
Willaware v. Jesichris
Petitioners hiring of former employees of respondent and petitioners act of copying the subject
plastic parts of respondents were tantamount to unfair competition.
Criminal Penalty
Independent of civil and administrative sanction is the criminal penalty of imprisonment and fine is
imposed by RA 8293.