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Trademark:


A. Respondent-Applicant’s mark ____________ is confusingly similar with Opposer-
Appellee’s trademark _________________
B. The goods on which the subject marks are closely-related, if not identical

 A "trademark" is defined under R.A. 166, the Trademark Law, as including "any word, name,
symbol, emblem, sign or device or any combination thereof adopted and used by a manufacturer
or merchant to identify his goods and distinguish them from those manufactured, sold or dealt in
by others." This definition has been simplified in R.A. No. 8293, the Intellectual Property Code of
the Philippines, which defines a "trademark" as "any visible sign capable of distinguishing goods."
In Philippine jurisprudence, the function of a trademark is to point out distinctly the origin or
ownership of the goods to which it is affixed; to secure to him, who has been instrumental in bringing
into the market a superior article of merchandise, the fruit of his industry and skill; to assure the
public that they are procuring the genuine article; to prevent fraud and imposition; and to protect
the manufacturer against substitution and sale of an inferior and different article as his product. 1

 Aptly, Section 123.1 (d) of Republic Act No. 8293, also known as the Intellectual Property Code of
the Philippines (“IP Code”), as amended, proscribes the registration of a mark which is identical as
would likely cause confusion, mistake, or deception among the consuming public. The said
expressly provides that:

Sec. 123. Registrability. – 123.1. A mark cannot be registered if - xxx


(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. Closely related goods or services, or
iii. If it nearly resembles such a mark as to be likely to deceive or cause confusion;

 Confusing similarity exists when there is such a close or ingenuous imitation as to be calculated
to deceive ordinary person, or such resemblance to the original as to deceive ordinary
purchaser as to cause him to purchase the one supposing it to be the other. 2

 The phonetic similarity of the marks may become basis of finding of confusing similarity. Marks
may sound the same to the ear, even though they may be readily distinguishable to the eye. In fact,
even their similarity in sound is taken into consideration, where the marks refer to merchandise of
the same descriptive properties, for the reason that trade idem sonans constitutes a violation of
trade mark patents.”3
 Also, because of the similarities in the letters and syllables and their arrangement, the aural effect
of the marks is also confusing. The aural effects of the words and letters contained in the marks
are also taken into account in determining the issue of confusing similarity. 4

1
Pribdhas v. Court of Appeals, G. R. No. 114508. 19 November 1999.
2
Societes Des Produits S. A. v. Court of Appeals, G. R. No. 112012, April 4, 2001.
3
Sapolin Co., Inc. v. Balmaceda, G.R. No. L-45502, May 2, 1939.
4
Prosource International Inc. v. Hrophag Research Management S. A., G.R. No. 180073, November 25, 2009.
 is a fanciful and coined word,

 The phrase "colorable imitation" denotes such a "close or ingenious imitation as to be calculated
to deceive ordinary persons, or such a resemblance to the original as to deceive an ordinary
purchaser, giving such attention as a purchaser usually gives, and to cause him to purchase the
one supposing it to be the other."5
 Moreover, the marks are intended for related gods thereby increasing the possibility of
mistake or confusion.
 Goods are related when they belong to the same class or have the same descriptive
properties; when they possess the same physical attributes or essential characteristics with
reference to their form, composition, texture or quality. They may also be related because
they serve the same purpose or are sold in grocery store.6
 The protection of trademarks as intellectual property is intended not only to preserve the
goodwill and reputation of the business established on the goods bearing the mark through
actual use over a period of time, but also to safeguard the public as consumers against
confusion on these goods.7
 The determinative factor in a contest involving registration of trade mark is not whether the
challenged mark would actually cause confusion or deception of the purchasers but whether the
use of such mark would likely cause confusion or mistake on the part of the buying public. In short,
to constitute an infringement of an existing trademark patent and warrant a denial of an
application for registration, the law does not require that the competing trademarks must be so
identical as to produce actual error or mistake; it would be sufficient, for purposes of the law, that
the similarity between the two labels is such that there is a possibility or likelihood of the
purchaser of the older brand mistaking the newer brand for it.8

Sample case of well-known status


I. Opposer-Appellant has presented clear and convincing evidence to establish the well-known
status and international renown of its XXX mark.
II. The Honorable Adjudication Officer failed to consider the clear and convincing evidence
presented by the Opposer-Appellant to establish the well-known status and international renown
of its XXX mark.
III. The Respondent-Appellee is not entitled to the registration of the XXX mark.

Firstly, the Opposer-Appellant is the prior user and registered owner of the mark “XXX” well-known in
different countries, registered for nearly thirty (30) jurisdictions and has been existing for twenty-two
(22) years already. It has been first used in the Philippines as early as 1992 and elsewhere around
the world since 1974.

5
Etepha A.G. v. Director of Patents, G. R. No. L-20635, March 31, 1996.
6
G.R. No. L-29971, August 31, 1982.
7
Skechers, U.S.A. v. Inter Pacific Industrial Trading Corp.; Trendworks International Corporation v. Inter Pacific
Industrial Trading Corp., G.R. No. 164321, March 28, 2011.
8
American Wire & Cable Company v. Director of Patents, G.R. No. L-26557, February 18, 1970.
The Opposer-Appellant and Respondent-Appellee are engaged in the same business. The likelihood
of confusion is higher in cases where the business of one corporation is the same or substantially the
same as that of another corporation. In this case, the consuming public will likely be confused as to
the source of the goods used for printing.9

The likelihood of confusion would, therefore, subsets not only on the purchaser’s perception of goods
but on the origins thereof, to wit:

“Callman notes two types of confusion. The first is the confusion of goods in which event the
ordinarily prudent purchaser would be induced to purchase one product in the belief that he was
purchasing the other. In which case, defendant’s goods are then bought as the plaintiffs, and the
poorer quality of the former reflects adversely on the plaintiff’s reputation. The other is the confusion
of business: Here though the goods of the parties are different, the defendants product is such as
might reasonably be assumed to originate with the plaintiff, and the public would then be deceived
either into that belief or into the belief that there is some connection between the plaintiff and
defendant which, in fact, does not exist.”10

“XXX” is not only just the former’s trademark, but also its trade name which, by virtue of
Paris Convention for the Protection of Industrial Property (Paris Convention) where both
Philippines and United States of America are signatories, affords protection of the trade
name even without filling or registration

ARTICLE 8
A trade name shall be protected in all the countries of the Union without the obligation of filing or
registration, whether or not it forms part of a trademark. (Emphasis supplied)

Thus, Philippines is obligated to assure nationals of countries of the Paris Convention that they are
afforded an effective protection against violation of their intellectual property rights in the Philippines
in the same way that their own countries are obligated to accord similar protection to Philippine
nationals. (*)

Under the Philippine 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 a trademark, is protected without the obligation of
filing or registration.11

Settling this issue, the Supreme Court in the case of Philip Morris, Inc., Benson & Hedges (Canada)
and Fabriques de Tabac Reunies, S. A. v. Fortune Tobacco Corporation 12 has rules that:
“x x x where the complainant is a national of a Paris-Convention-adhering country, that it is suing
under said Section 21-A of Republic Act (R.A.) No. 166, as amended, or the Trademark Law, but also
by Article 2 of the Paris Convention for the Protection of Industrial Property, otherwise known as the
Paris Convention would suffice, because the reciprocal agreement between the two countries is
embodied and supplied by the Paris Convention which, being considered part of Philippine municipal
laws, can be taken judicial notice of in infringement suits”

9
Coffee Partners, Inc. v. San Francisco Coffee & Roastery, Inc,, G.R. No. 169504, 3 March 2010.
10
Societe Des Produits Nestle S. A. v. Dy, G.R. No. 172776, 8 August 2010.
11
Converse Rubber Corporation v. Universal Rubber Products, Inc., G.R. No. L-27906. 8 January 1987.
12
G.R. No. 158589, 27 June 2006.