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Required Use As Condition For Registration

 
SECTION 124.2. The applicant or the registrant
shall file a declaration of actual use of the mark with
evidence to that effect, as prescribed by the
Regulations within three (3) years from the filing
date of the application. Otherwise, the application
shall be refused or the mark shall be removed from
the Register by the Director.
Declaration must specify the goods and outlets
where they are sold

Adoption alone of a trademark would not vest


exclusive right upon the proprietor

Trademark is a creation of use


Required Use As Condition For Maintenance

Section 145. * * * the registrant shall file a


declaration of actual use and evidence to that effect,
or shall show valid reasons based on the existence of
obstacles to such use, as prescribed by the
regulations, within one (1) year from the fifth
anniversary of the date of registration of the mark.
Otherwise, the mark shall be removed from the
Register by the Office. 
Pearl & Dean (Phil.), Incorporated vs. Shoemart,
Incorporated and North Edsa Marketing,
Incorporated, G.R. No. 148222, August 15, 2003

Issue: TM infringement, Class of Goods


Facts:
1. P&D manufactures advertising display units or
light boxes, which utilize specially printed posters
sandwiched between plastic sheets and illuminated
with back lights.
2. It secured a TM registration for "Poster Ads"
which petitioner's president said was a contraction
of "poster advertising."
3. But the goods covered by the registration were
were "stationeries such as letterheads, envelopes,
calling cards and newsletters," which P&D did not
actually manufacture.

The SC held:
1. Under ruling in Faberge Inc. vs. Intermediate
Appellate Court, involving Section 20 of the old
Trademark Law, "the certificate of registration
issued by the Director of Patents can confer (upon
petitioner) the exclusive right to use its own
symbol only to those goods specified in the
certificate, subject to any conditions and
limitations specified in the certificate . . . . One who
has adopted and used a trademark on his goods does
not prevent the adoption and use of the same
trademark by others for products which are of a
different description." Faberge, Inc. was correct and
was in fact recently reiterated in Canon Kabushiki
Kaisha vs. Court of Appeals.
2. Assuming arguendo that "Poster Ads" could validly
qualify as a trademark, the failure of P & D to secure
a trademark registration for light boxes meant that
there could not have been any trademark
infringement since registration was an essential
element thereof.
3. Note Sec. 147, “identical or similar”
Canon Kabushiki Kaisha vs. Court of Appeals and
NSR Rubber Corporation, G.R. No. 120900. July 20,
2000
Issue: Related Goods Doctrine

Facts:
1. NSR Rubber Corporation (private respondent)
filed an application with the BPTTT for registration
of the mark CANON for sandals.
2. Canon Kabushiki Kaisha opposed the application.
3. Canon’s certificates of registration for the mark.
CANON in the Philippines and other countries
covering goods in class 2 (paints, chemical products,
toner, and dye stuff).
4. BPTT and CA dismissed the opposition.
5. Before the SC, Canon claims that its use of
CANON on paints, chemical products, toner, and
dye stuff, which are used as shoe polisher and
polishing agents justified the rejection of NSR’s
application for CANON for sandals.
The SC held:
1. Ordinarily, a trademark is a a property right
that is protected by law.
2. But when a trademark is used by another on
product in which the opposer does not deal, the
use of the same trademark on the latter's product
cannot be validly objected to.
3. Related Goods Doctrine: There is a world of
difference between the paints, chemical products,
toner, and dyestuff of petitioner and the sandals
of private respondent.
4. Natural Expansion of Business Doctrine:
It would be taxing one's credibility to aver at this
point that the production of sandals could be
considered as a possible "natural or normal
expansion" of its business operation".
5. In Faberge, Incorporated vs. Intermediate
Appellate Court, the Director of patents allowed the
junior user to use the trademark of the senior user
on the ground that the briefs manufactured by the
junior user, the product for which the trademark
BRUTE was sought to be registered, was unrelated
and non-competing with the products of the senior
user consisting of after shave lotion, shaving cream,
deodorant, talcum powder, and toilet soap.
6. Paris Convention Claim: "A tradename 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.“
7. Kabushi Kaisha Isetan vs. Intermediate Appellate
Court : "Regarding the applicability of Article 8
of the Paris Convention, this Office believes that
there is no automatic protection afforded an entity
whose tradename is alleged to have been infringed
through the use of that name as a trademark by a
local entity.
Excused Non-Uses

SECTION 152. Non-use of a Mark When


Excused. - 152.1. Non-use of a mark may be
excused if caused by circumstances arising
independently of the will of the trademark
owner. Lack of funds shall not excuse non-use of
a mark.
152.2.The use of the mark in a form different
from the form in which it is registered, which
does not alter its distinctive character, shall not
be ground for cancellation or removal of the
mark and shall not diminish the protection
granted to the mark.
152.3.The use of a mark in connection with one
or more of the goods or services belonging to
the class in respect of which the mark is
registered shall prevent its cancellation or
removal in respect of all other goods or services
of the same class.
Uses by Related Companies

152.4.The use of a mark by a company related with


the registrant or applicant shall inure to the latter's
benefit, and such use shall not affect the validity of
such mark or of its registration: Provided, That such
mark is not used in such manner as to deceive the
public. If use of a mark by a person is controlled by
the registrant or applicant with respect to the nature
and quality of the goods or services, such use shall
inure to the benefit of the registrant or applicant. (n)
Administrative Actions for TM Enforcement

(i) Opposition
(ii) Cancellation
(iii)Administrative actions before the Bureau of
Legal Affairs
(iv) Bureau of Customs Border Control

Civil Actions for TM Enforcement

(i) Trademark infringement


(ii) Unfair competition
(iii)False designation of Origin
(iv) Criminal Actions
Rights of Registered Owner

SECTION 147. Rights Conferred. - 147.1. The


owner of a registered mark shall have the exclusive
right to prevent all third parties not having the
owner's consent from using in the course of trade
identical or similar signs or containers for goods or
services which are identical or similar to those in
respect of which the trademark is registered where
such use would result in a likelihood of confusion. In
case of the use of an identical sign for identical goods
or services, a likelihood of confusion shall be
presumed.
147.2.The exclusive right of the owner of a well-
known mark defined in Subsection 123.1(e) which is
registered in the Philippines, shall extend to goods
and services which are not similar to those in respect
of which the mark is registered: Provided, That use
of that mark in relation to those goods or services
would indicate a connection between those goods or
services and the owner of the registered mark:
Provided further, That the interests of the owner of
the registered mark are likely to be damaged by such
use. (n)
Non-actionable Use
SECTION 148. Use of Indications by Third
Parties for Purposes Other than those for which the
Mark is Used. - Registration of the mark shall not
confer on the registered owner the right to preclude
third parties from using bona fide their names,
addresses, pseudonyms, a geographical name, or
exact indications concerning the kind, quality,
quantity, destination, value, place of origin, or time
of production or of supply, of their goods or
services: Provided, That such use is confined to the
purposes of mere identification or information and
cannot mislead the public as to the source of the
goods or services. (n)
Section 151. Cancellation - * * *
Section 151.2. Notwithstanding the foregoing
provisions, the court or the administrative agency
vested with jurisdiction to hear and adjudicate any
action to enforce the rights to a registered mark shall
likewise exercise jurisdiction to determine whether
the registration of said mark may be cancelled in
accordance with this Act. The filing of a suit to
enforce the registered mark with the proper court or
agency shall exclude any other court or agency from
assuming jurisdiction over a subsequently filed
petition to cancel the same mark.
On the other hand, the earlier filing of 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.
Section 134 Opposition

(1) any person who may be damaged by


registration; may be a registrant or user of an
identical or similar mark
(2) opposition shall be in writing and verified by
the oppositor or by any person on his behalf
who knows the facts
(3) specify the grounds on which it is based and
include a statement of the facts relied upon
(4) certificates of registration of marks
registered in other countries or other
supporting documents mentioned in the
opposition shall be filed
(5) within thirty days from publication in the
OG, extendible up to 120 days
Section 151,Cancellation

(1) any person who believes that he is or will be


damaged by the registration
(2) Period for filing:
(a)Within five (5) years from the date of the
registration of the mark under this Act
(b)At any time, if the registered mark becomes
the generic name for the goods or services, or
a portion thereof, for which it is registered, or
has been abandoned, or its registration was
obtained fraudulently or contrary to the
provisions of this Act, or if the registered
mark is being used by, or with the permission
of, the registrant so as to misrepresent the
source of the goods or services on or in
connection with which the mark is used
The primary significance of the registered mark
to the relevant public rather than purchaser
motivation shall be the test for determining
whether the registered mark has become the
generic name of goods or services on or in
connection with which it has been used
(c) 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.
TRADEMARK INFRINGEMENT
SECTION 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
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.
Elements of infringement:
1. Use of registered trademark or colorable
imitation thereof or its dominant feature
(i) for the sale, distribution or advertising of
goods and services and other preparatory
steps, or
(ii) on labels, signs, prints, packages, wrappers,
receptacles or advertisements
2. Without the consent of the owner
3. Such use is likely to cause confusion, or to
cause mistake, or to deceive
Exact imitation is not required
(i) Dominant feature test
(ii) Holistic test

Actual sale is not required, preparatory steps are


sufficient

Actual confusion is not necessary, likelihood is


enough
(i) Confusion as to goods
(ii) Confusion as to origin
Section 147.2 on well-known mark speaks of
“connection” with and “damage” to owner of the
mark arising from the use of the mark on
dissimilar goods
Axion vs. Kitchenmate
Emerald Garment Manufacturing Corp. vs. Court of Appeals docketed as G.R. No. 100098, promulgated by the Supreme Court on December 29,
1995 was a litigation between H.D. Lee Company, Inc. of Delaware, USA and a Philippine company, Emerald Garment, whereby private
respondent H.D. Lee Company, as registrant of the trademark "LEE" in the Philippines sought cancellation of the trademark "STYLISTIC MR.
LEE" from the Supplemental Register in the name of the Philippine company.
The Bureau of Patents and Trademarks declared that STYLISTIC MR. LEE confusingly similar to MR. LEE on the basis of the dominant-feature
test. The word mark LEE is the dominant feature of both marks the use of which is likely to confuse consumers.
On the other hand, the HOLISTIC TEST mandates that the entirely of the marks in question must be considered in determining confusing
similarity. (ibid) Quoting Fruit of the Loom, Inc. vs. Court of Appeals, 133 SCRA 405 (1984), the Supreme Court advanced that " (I)n
determining whether the marks are confusingly similar, a comparison of the words is not the only determinant factor. The trademarks in their
entirely as they appear in their respective labels or hang tags must also be considered in relation to the goods to which they are attached. The
discerning eye of the observer must focus not only on the predominant words but also on the other features appearing in both labels in order that
they may draw his conclusion whether one is confusingly similar to the other."

Section 155.1 on infringement now speaks of “colorable


imitation of a registered mark … or a dominant feature
thereof.”
Del Monte Corporation vs. Court of Appeals G.R.
No. L-78325, January 25, 1990
(i) Side-by-side comparison is not the final test of
similarity
(ii) general confusion made by the article upon the
eye of the casual purchaser who is unsuspicious
(iii)consumer must depend upon his recollection of
the appearance of the product which he
intends to purchase
(iv)consider the mark as a whole and not as
dissected
(v) age, training and education of the usual
purchaser, the nature and cost of the article,
whether the article is bought for immediate
consumption and also the conditions under which
it is usually purchased
AMIGO MANUFACTURING, Inc. vs. CLUETT PEABODY CO.,
INC. G.R. No. 139300. March 14, 2001
Peabody:
1. GOLD TOE, under Certificate of Registration No. 6797 dated
September 22, 1958;
2. DEVICE, representation of a sock and magnifying glass on the
toe of a sock, under Certificate of Registration No. 13465 dated
January 25, 1968;
3. DEVICE, consisting of a 'plurality of gold colored lines
arranged in parallel relation within a triangular area of toe of the
stocking and spread from each other by lines of contrasting color
of the major part of the stocking' under Certificate of Registration
No. 13887 dated May 9, 1968; and
4. LINENIZED, under Certificate of Registration No. 15440 dated
April 13, 1970.
Amigo: 'GOLD TOP, Linenized for Extra Wear.' It has the
dominant color 'white' at the center and a 'blackish brown'
background with a magnified design of the sock's garter, and is
labeled 'Amigo Manufacturing Inc., Mandaluyong, Metro
Manila, Made in the Philippines'.

Bureau of Patents & Trademarks and Court of Appeals


declared the marks confusingly similar. The Supreme Court
affirmed.

a] Peabody presented Bureau registrations indicating the dates


of first use in the Philippines of the trademark and the devices as
follows: a) March 16, 1954, Gold Toe; b) February 1, 1952, the
Representation of a Sock and a Magnifying Glass; c) January
30, 1932, the Gold Toe Representation; and February 28, 1952,
"Linenized."
b] The registration of the above marks in favor of respondent
constitutes prima facie evidence, which petitioner failed to
overturn satisfactorily, of respondent's ownership of those marks,
the dates of appropriation and the validity of other pertinent facts
stated therein.

c] Moreover, the validity of the Certificates of Registration was not


questioned.

d] Amigo failed to present proof of the date of alleged first use of


the trademark "Gold Top and Device". Thus, even assuming that
Peabody started using it only on May 15, 1962, we can make no
finding that Amigo started using it ahead of Peabody.

e] While pronunciations of the two marks do create confusion,


respondent’s mark is a combination of the abovementioned
trademarks registered separately by the petitioner in the
Philippines and the United States.
f] The difference in sound occurs only in the final letter at the end
of the marks. 'GOLD TOE' and 'GOLD TOP' are printed in
identical lettering. Both show [a] representation of a man's foot
wearing a sock. 'GOLD TOP' blatantly incorporates petitioner's
'LINENIZED' which by itself is a registered mark."

g] The similarities are of such degree, number and quality that the
overall impression given is that the two brands of socks are
deceptively the same, or at least very similar to each another.

SC rejected respondent’s argument that Peabody did not present


evidence of first use to be entitled to protection. Since Peabody
registered its trademarks under the principal register, the
requirement of prior use had already been fulfilled. There exists a
prima facie presumption of the correctness of the contents of the
certificates, including the date of first use. Petitioner has failed to
rebut this presumption.
PEARL & DEAN (PHIL.), INCORPORATED vs.
SHOEMART, INCORPORATED, and NORTH
EDSA MARKETING, INCORPORATED, G.R. No.
148222, August 15, 2003
Issue: TM infringement
Facts:
1. P&D manufactures advertising display units or
light boxes, which utilize specially printed posters
sandwiched between plastic sheets and illuminated
with back lights.
2. It secured a TM registration for "Poster Ads"
which petitioner's president said was a contraction
of "poster advertising." But the goods specified
3. But the goods covered were "stationeries such as
letterheads, envelopes, calling cards and
newsletters," which P&D did not actually
manufacture.

The SC held:
1. Under ruling in Faberge Inc. vs. Intermediate
Appellate Court, involving Section 20 of the old
Trademark Law, "the certificate of registration
issued by the Director of Patents can confer (upon
petitioner) the exclusive right to use its own
symbol only to those goods specified in the
certificate, subject to any conditions and
limitations specified in the certificate . . . . One who
has adopted and used a trademark on his goods does
not prevent the adoption and use of the same
trademark by others for products which are of a
different description." Faberge, Inc. was correct and
was in fact recently reiterated in Canon Kabushiki
Kaisha vs. Court of Appeals.
2. Assuming arguendo that "Poster Ads" could validly
qualify as a trademark, the failure of P & D to secure
a trademark registration for specific use on the light
boxes meant that there could not have been any
trademark infringement since registration was an
essential element thereof.
Word- Analysis Approach and Sound Alikes
(i) “SALONPAS” and “LIONPAS,” TEXTWOOD
and DEXWOOD – likely to cause confusion
(ii) "WRANGLER" and "WRANCO," not likely to
cause confusion
Nature of the Goods and Channels of Trade
(i) “ESSO” for petroleum and for cigarettes
Purchasers’ Attitude
Mcdonald’s Corporation and McGeorge Food
Industries, Inc. vs. L.C. Big Mak Burger, Inc et
al,G.R. No. 143993, August 18, 2004

1. Remedial law; Petition for Review on Certiorari


2. Trademark infringement; unfair competition;
review of factual findings
(a) nature of business
(b) kind of goods sold
(c ) use of “Big Mak” as corporate name
(d) holistic test
(e) dominant-feature test
(f) passing off
(g) trademark use
3. Trademark infringement; cause of action and
elements
a] The cause of action based on the first part of Section 22
Elements
b] Generic and descriptive character
c] Prior users of trademark
d] Element of confusion: confusion as to goods and confusion
as to origin
e] Market consideration and price differences
f] Dominant-feature test vs. Holistic test

4. Unfair competition; elements


a] elements of an action for unfair competition
b] dissimilarities in the packaging

5. Remedies
Mighty Corporation, Et Al. V. E&J Gallo Winery, et
al. SC G.R. No. 154342, July 14, 2004

1. Petition for certiorari; questions of fact and questions of


law
2. Applicable law at the time the case was filed
(a) Section 239
(b) Curative statute
3. Article 6bis of the Paris Convention: elements of trademark
infringement
4. First use of trademarks
(a) PX stores
(b) Affidavit of non-use
5. Distinctions between trademark infringement
and unfair competition : Del Monte case
 
(a) Elements under Section 22
(b) wines and cigarettes are related goods
(c) Product indicated in the certificate of registration
(d) Types of confusion : goods vs. origin: The Supreme
Court adopted these two-part analysis inn Sterling
Products International, Incorporated v. Farbenfabriken
Bayer Aktiengesellschaft, et al., and in the recent decision
in McDonald’s Corporation McGeorge Food Industries,
Inc. vs. L.C. Big Mak Burger, Inc., G.R. No. 143993,
August 18, 200
(e) Dominant Feature Test vs. Holistic Test
(f) McDonald’s Corporation McGeorge Food Industries, Inc.
vs. L.C. Big Mak Burger, Inc., G.R. No. 143993, August
18, 2004, demonstrated that the application of one test
excludes the other. Here the Supreme Court applied the
test of dominancy and rejected the holistic test
Societe Des Produits Nestlé, S.A. v. Court of Appeals, where the
Court explicitly rejected the holistic test in this wise:
 
[T]he totality or holistic test is contrary to the
elementary postulate of the law on trademarks and
unfair competition that confusing similarity is to
be determined on the basis of visual, aural,
connotative comparisons and overall
impressions engendered by the marks in
controversy as they are encountered in the
realities of the marketplace. (Emphasis
supplied)
Trademark Conflicts and Prior Use
SECTION 168. Unfair Competition, Rights,
Regulation and Remedies. - 168.1. 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.
168.2.Any person who shall employ 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,
shall be guilty of unfair competition, and shall be
subject to an action therefor.
168.3.In particular, and without in any way limiting
the scope of protection against unfair competition, the
following shall be deemed guilty of unfair
competition:
(a) Any person, who is selling his goods and gives
them the general appearance of goods of another
manufacturer or dealer, either as to the goods
themselves or in the wrapping of the packages in which
they are contained, or the devices or words thereon, or
in any other feature of their appearance, which would
be likely to influence purchasers to believe that the
goods offered are those of a manufacturer or dealer,
other than the actual manufacturer or dealer, or who
otherwise clothes the goods with such appearance as
shall deceive the public and defraud another of his
legitimate trade, or any subsequent vendor of such
goods or any agent of any vendor engaged in selling
such goods with a like purpose;
(b) Any person who by any artifice, or device, or
who employs any other means calculated to induce
the false belief that such person is offering the
services of another who has identified such services
in the mind of the public; or
(c) Any person who shall make any false
statement in the course of trade or who shall commit
any other act contrary to good faith of a nature
calculated to discredit the goods, business or services
of another.
168.4.The remedies provided by Sections 156, 157
and 161 shall apply mutatis mutandis. (Sec. 29, R.A.
No. 166a)
Unfair Competition

(i) No registration of mark is required in unfair


competition
(ii) Defendant shall have given to his goods the
general appearance of the goods of the
complaining party, either in the wrapping of the
packages in which they are contained, or the
devices or words thereon or in any other feature
of their appearance which would be likely to
influence purchasers to believe that the goods
offered are those of the complaining party;
(iii) the defendant should have clothed the goods
with such appearance for the purpose of deceiving
the public and defrauding the complaining party of
his legitimate trade

(iv)Unfair competition usually arises in cases of


trade dress imitation

(v)Plaintiff in an unfair competition action must


show that his goods have acquired goodwill and
reputation among consumers
(vi) The true test of unfair competition is
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

(vii)Fraudulent intent on the part of defendant


to pass off his goods or business as or for that of
plaintiff is necessary
Section 168.2 subjects to liability for unfair
competition “any person who shall make any
false statement in the course of trade or who
shall commit any other act contrary to good
faith of a nature calculated to discredit the
goods, business or services of another

This is called disparaging use of marks or trade


libel in other jurisdiction
Examples: Genital Electric for panties – General
Electric; Inutel Inside – Intel Inside; Where
There’s Bugs, There’s Life for insecticides –
Where There’s Life, There’s Bud
SECTION 169. False Designations of Origin;
False Description or Representation. - 169.1. Any
person who, on or in connection with any goods
or services, or any container for goods, uses in
commerce any word, term, name, symbol, or
device, or any combination thereof, or any false
designation of origin, false or misleading
description of fact, or false or misleading
representation of fact, which:
Section 169.1 False Designation of Origin … any
false designation of origin, false or
misleading description of fact, or false or
misleading representation of fact, which:
(a) Is likely to cause confusion, or to cause
mistake, or to deceive as to the affiliation,
connection, or association of such person
with another person, or as to the origin,
sponsorship, or approval of his or her goods,
services, or commercial activities by another
person; or
(b) In commercial advertising or promotion,
misrepresents the nature, characteristics,
qualities, or geographic origin of his or her or
another person's goods, services, or commercial
activities, shall be liable to a civil action for
damages and injunction provided in Sections
156 and 157 of this Act by any person who
believes that he or she is or is likely to be
damaged by such act.
169.2.Any goods marked or labeled in
contravention of the provisions of this Section
shall not be imported into the Philippines or
admitted entry at any customhouse of the
Philippines. The owner, importer, or consignee
of goods refused entry at any customhouse
under this section may have any recourse under
the customs revenue laws or may have the
remedy given by this Act in cases involving
goods refused entry or seized. (Sec. 30, R.A. No.
166a)
Remedies and Reliefs In Unfair Competition

SECTION 156. Actions, and Damages and


Injunction for Infringement.
(1) damages suffered shall be either
(i) the reasonable profit which the complaining
party would have made, had the defendant
not infringed his rights, or
(ii) the profit which the defendant actually
made out of the infringement; or
(iii) if not ascertainable, a reasonable percentage
based upon the amount of gross sales of the
defendant or the value of the services in
connection with which the mark or trade name
was used
(2) impounding during the pendency of the
action, sales invoices and other documents
evidencing sales
(3) where actual intent to mislead the public or to
defraud the complainant is shown, in the
discretion of the court, the damages may be
doubled
(4) where actual intent to mislead the public or
to defraud the complainant is shown, in the
discretion of the court, the damages may be
doubled
(5) complainant, upon proper showing, may
also be granted injunction
(6) under Section 157, destruction of infringing
goods and materials used for infringement;
removal of infringing mark not enough to
justify release of goods
Search and seizure in civil cases now allowed under
Supreme Court circular A.M. NO. 02-1-06-SC

SEC. 2. The writ of search and seizure. – Where any


delay is likely to cause irreparable harm to the
intellectual property right holder or where there is
demonstrable risk of evidence being destroyed, the
intellectual property right holder or his duly
authorized representative in a pending civil action
for infringement or who intends to commence such
an action may apply ex parte for the issuance of a
writ of search and seizure directing the alleged
infringing defendant or expected adverse party to
admit into his premises the persons named in the
order and to allow the search, inspection, copying,
photographing, audio and audiovisual recording or
seizure of any document and article specified in the
order
Administrative Actions for TM Enforcement

Section 166, Goods Bearing Infringing Marks


or Trade Names may be barred from
commerce through customs exclusion
proceeding
Criminal Penalties for Counterfeiting

SECTION 170. Penalties. - Independent of the


civil and administrative sanctions imposed by
law, a criminal penalty of imprisonment from
two (2) years to five (5) years and a fine ranging
from Fifty thousand pesos (P50,000) to Two
hundred thousand pesos(P200,000), shall be
imposed on any person who is found guilty of
committing any of the acts mentioned in Section
155, Section 168 and Subsection 169.1. (Arts.
188 and 189, Revised Penal Code)
Trademarks Online

VeriSign, estimates that 70% of domain names


associated with top brands are not registered by
the true brand owner, prompting rights holders to
defensively register their marks as domain names

Trademark owners are also facing new types of


infringement, including user-traffic diversion
through keywords and meta tags, or unauthorized
linking and framing
Metatags

A 'meta tag' or 'meta data' is a keyword or


phrase embedded in a website's HTML
(hypertext markup language) code as a means
for Internet search engines to identify and
categorize the contents of the website
In the United States of America, in the case of
Brookfield Communications Inc. v. West Coast
Entertainment Corp, 50 U.S.P.Q. 2d 1545 (9th
Cir. 1999), the Court regarded the practice of
meta tagging as potential trademark
infringement, stating that such use might
suggest sponsorship or authorization by the
trademark owner, or that consumers looking
for the products of the trademark owner might
be misdirected and diverted to a competitor's
website and be at least initially confused in their
search for the trademarked goods
Sale of Trademarks as Keywords

Retailers, for example, have purchased keywords


so that their banner advertisements are displayed
whenever certain trademarked products are the
object of a search

Retailers, for example, have purchased keywords


so that their banner advertisements are displayed
whenever certain trademarked products are the
object of a search
In Playboy Enterprises Inc. v. Netscape
Communications Corporation, C.D. Calif., No. SA
CV 99-320 AHS (Eex) (June 24, 1999), the Court
denied preliminary relief stating that the 'Playboy'
and 'Playmate' keywords sold by the defendant
were used by searchers as common or generic
words, not the marks
Pop-Up Advertisements

Pop-up ads are used as marketing tools designed


to capture consumers' attention, and are based on
software designed to track users' online activity
and then deliver targeted advertising based on
their preferences

 
In American case of Washington Post Newsweek
Interactive Co. v. Gator Corp., Civil Action No.02-
909-A, July 16, 2002, the Court issued a
preliminary injunction that prohibited the
defendant from enabling third-party advertising to
appear on a user's computer screen while the user
was viewing websites owned or affiliated with the
plaintiffs, who were online news companies. The
Court found that the software violated the
plaintiffs' trademarks by causing pop-up
advertising to appear in proximity to them.