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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
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
(i) Opposition
(ii) Cancellation
(iii)Administrative actions before the Bureau of
Legal Affairs
(iv) Bureau of Customs Border Control
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.
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
5. Remedies
Mighty Corporation, Et Al. V. E&J Gallo Winery, et
al. SC G.R. No. 154342, July 14, 2004
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.