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PROPERTY LAW
What are the State Policies relating to the protection of
intellectual property?
A: Section 13 The State shall protect and secure the exclusive
rights of scientists, inventors, artists, and other gifted citizens to
their intellectual property and creations, particularly when
beneficial to the people, for such period as may be provided by
law. (1987 Constitution);
SECTION 2 Declaration of State Policy The State recognizes that
an effective intellectual and industrial property system is vital to
the development of domestic and creative activity, facilitates
transfer of technology, attracts foreign investments, and ensures
market access for our products. It shall protect and secure the
exclusive rights of scientists, inventors, artists and other gifted
citizens to their intellectual property and creations, particularly
when beneficial to the people, for such periods as provided in this
Act. (R.A. 8293 Intellectual Property Law of 1997).
Collective Mark
b.1. Any visible sign designated as such in the application
for registration;
b.2. Capable of distinguishing the origin or any other
common characteristic, including the quality of goods
or services of different enterprises which use the sign;
b.3. Under the control of the registered owner of the
collective mark.
c.
Sources:
Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.
Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.
PAGE 1
COURSE/SUBJECT: INTELLECTUAL
Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.
PROPERTY LAW
and in the Philippines, whether or not it is registered here, as
being already the mark of a person other than the applicant for
registration, and used for identical or similar goods or services:
Provided, That in determining whether a mark is well-known,
account shall be taken of the knowledge of the relevant sector of
the public, rather than of the public at large, including knowledge
in the Philippines which has been obtained as a result of the
promotion of the mark;
f. Is identical with, or confusingly similar to, or constitutes a
translation of a mark considered well-known in accordance with
the preceding paragraph, which is registered in the Philippines
with respect to goods or services which are not similar to those
with respect to which registration is applied for: Provided, That
use of the 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;
g. Is likely to mislead the public, particularly as to the nature,
quality, characteristics or geographical origin of the goods or
services;
Berris was able to establish that it was using its mark D-10 80 WP
since June 20, 2002, even before it filed for its registration with the
IPO on November 29, 2002, the DAU, which was under oath and
notarized, bearing the stamp of the Bureau of Trademarks of teh
IPO x x x.
Dominancy Test
a. Focuses on the similarity of the prevalent or dominant
features of the competing trademarks that might casue
confusion, mistake and deception in the mind of the
purchasing public.
b. Duplication or immitation is not necessary;
c. Neither is it required that the mark sought to be registered
suggest an effort to immitate;
d. Given more consideration are the aurala and visual
impressions created by the marks on the buyers of the
goods, giving little weight to factors like prices, quality, sales
outlets, and market segments.
Sources:
Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.
PAGE 2
COURSE/SUBJECT: INTELLECTUAL
Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.
PROPERTY LAW
appearing on both labels so that the observer may draw
conclusion on whether one is confusingly similar to the
other.
Both Berris and Abyadangs makrs on their respective packages, x
x x x that both have a common component which is D-10 is the
dominant feature of the mark. The D-10 being at the beginning
of the mark is waht is most remembered of it.
Applying the Dominancy Test, it cannot be gainsaid that
Abyadangs NS D-10 PLUS is similar to Berris D-10 80 WP that
confusion or mistake is likely to occur. Undeniably, both marks
pertain to the same type of goods. They also belong to the same
classification of goods under R.A. 8293. Both depictions of D-10
as found in both marks, are similar in size, such that this prtion is
what catches the eye of the purhaser. Undeniably, the likelihood of
confusion is present.
The likelihood of confusion and mistake is made more manifest
when the Holistic Test is applied, taking into consideration the
packaging, for both use the ame type of material (foil type) and
have identical color schemes (red, green, white); and the marks are
both predominantly red in color with the same phrase, Broad
Spectrum Fungicide written underneath.
Predominantly, the D-10 buyers of both poducts, may be misled
into thinking that NS D-10 PLUS could be an upgraded
formulation of the D-10 80 WP.
DERMALINE , INC. vs. MYRA PHARMACEUTICALS, INC.
FACTS:
Dermaline, Inc. (Dermaline) filed before the IPO an application for
registration of the trademark DERMALINE DERMALINE, INC.
Few months thereafter, Myra Pharmaceuticals, Inc. (Myra) filed a
verified opposition, claiming that the dominant feature is the term
DERMALINE which is practically identical with its own
DERMALIN x x x.
It asserted that the mark DERMALINE DERMALINE, INC. is aurally
similar to its own mark such that the registration and use of
Dermalines applied mark will enable it to obtain benefit from
Myras reputation, goodwill and advertising and will lead the public
believing that Dermaline is, in any way, connected to Myra. That
even if the subject application was under classification 44 for
various skin treatments, it could still be connected to the
DERMALI mark under classification 5 for pharmaceutical
products, since ultimately, these goods are very closely related.
Dermaline countered that a simple comparison of the trademark
DERMALINE DERMALINE, INC vis-a-vis Myras DERMALIN
trademark would show that they have entirely different
featuresand distinctive presentation, thus it cannot result in
confusion, mistake or deception on the part of the puchasing
public.
The IPO Bureau of Legal Affairs rendered a decision sustaining
Myras opposition pursuant to Sec. 123.1 (d) of R.A. 8293. On
appeal to the Office of the Director General by Dermaline, the
appeal was dismissed for being filed out of time.
Sources:
Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.
PAGE 3
COURSE/SUBJECT: INTELLECTUAL
Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.
PROPERTY LAW
While, San Francisco Coffee & Roastery, Inc. (SFCRI) is a local
corporation engaged in the wholesale and retail sale of coffee and
with a registered business name with DTI as SAN FRANCISCO
COFFEE & ROASTERY, INC.
SFCRI discovered sometime that the CPI was about to open a
coffee shop under the name SAN FRANCISCO COFFEE in Libis, QC.
SFCRI therefore claims that CPIs shop (SAN FRANCISCO COFFEE)
caused confusion in the minds of the public as it bore a similar
name and it is also engaged in the business of selling coffee. It filed
a complaint with the BLA-IPO for infringement and/or unfair
competition with claim for damages.
CPI maintained that its marked could not be confused with
respondents trade name because of the notable distinctions in
their appearances and that it alleges that it filed an application for
registration of the mark SAN FRANCISCO COFFEE & DEVICE with
the IPO.
The BLA-IPO held that CPIs trademark infringed on respondents
trade name therefore, SFCRI must be protected from infringement
of its trade name since it would cause confusion because of the
exact similarity in sound, spelling, pronunciation, and commercial
impression of the words SAN FRANCISCO which is the dominant
portion of the SFCRIs trade name and CPIs trademark.
On appeal, the Office of the Director General ruled that CPIs use of
trademark SAN FRANCISCO COFFEE did not infringe on
respondents trade name since SFCRI stopped using its trade name
after it entered into a joint venture with Boyd Coffee USA in 1998.
On appeal with the CA, the latter set aside the decision of the
Office of the Director General and sustained the BLA-IPOs
decision.
ISSUE:
Whether CPIs use of the trademark SAN FRANCISCO COFFEE
constitutes infringement of SFCRIs trade name SAN FRANCISCO
COFFEE & ROASTERY, INC. evn if the trade name is not registered
with the IPO.
RULING:
Requisites for Infringement of Unregistered Trade Name:
a. The trademark being infringed is registered in the IPO;
however, in the infringement of trade name, the same need
not be registered.
b. The trademark or trade name is reproduced, counterfeited,
copied, or collorably imitated by the infringer.
c. The infringing mark or trade name is used in connection with
the sale, offering for sale, or advertising of any goods,
business, or services; or the infringing mark or trade name is
applied to labels, signs, prints, packages, wrappers,
receptacles or advertisements intended to be used upon or in
connection with such goods, business, or services.
d. The use or application of the infringing mark or trade name is
likely to cause confusion or mistake or to deceive purchasers
or others as to the goods or services themselves or as to the
Sources:
Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.
PAGE 4
COURSE/SUBJECT: INTELLECTUAL
Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.
PROPERTY LAW
ISSUE:
Whether the CA erred in affirming the ruling of the RTC that HRMs
PYGNOGENOLS was infringed by PIIs PCO-GENOLS, or not.
RULING:
HRMs complaint for trademark infringement against PII should be
decided in light of the provisions of R.A. 166 for acts committed
until Dec. 31, 1997 and R.A. 8293 for those committed from
January 1, 1998 until June 19, 2000.
Trademark any distinctive word, name, symbol, emblem, sign,
device, or any combination thereof, adopted and used by a
manufacturer or merchant on his goods to identify and distinguish
them from those manufactured, sold, or dealt by others.
A trademark deserves protection.
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. (Sec. 22, R.A.
No 166a)
It is the element of likelihood of confusion that is the gravamen
of trademark infringment.
The trial court and the appellate court applied the Dominancy Test.
Both affirmed that: PYCNOGENOLS and PCOGENOLS have the same
suffix x x x when the two words are pronounced, the sound effects
are confusingly similar not to mention that they are both decribed
by their manufacturers as food supplements.
Although there were dissimilarities in the trademark due to the
differences in the packaging and its prints, purchasers could be
misled into believing that they are the same and/or originates from
a common source and manufacturer. The Court agrees to such
finding of the RTC and CA. Therefore, the issue of trademark
infringement is factual for being meritorious.
Sources:
Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.
PAGE 5
COURSE/SUBJECT: INTELLECTUAL
Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.
PROPERTY LAW
predominant features such as the M, Mc, and Mac appearing
in the marks of both parties easily attracks the attention of the
would-be cstomers.
Even non-regular customers of both fastfood restaurants would
readily notice the predominance of the M design, Mc/Mac
prefixes shown in both marks, such that the common awareness or
perception of customers that both trademarks are one and the
same, or an affilitate, or under the sponsorship of the other is not
far-fetched.
Since McDonalds marks were registered successively, it is clear
that it ahs duly established its ownership of the mark/s.
When one applies for registration of a trademark or label which is
almost the same or that very closely, or resembles one already
used and registered by another, THE APPLICATION SHOULD BE
REJECTED AND DISMISSED OUTRIGHT even without any opposition
on the part of the owner and user of a previously registered label
or trademark.
McDONALDS CORPORATION and MCGEORGE FOOD INDUSTIRES,
INC. vs. MACJOY L.C. BIG MAK BURGER, INC., et. al.
FACTS:
McDonalds own a family of trademarks, including Big Mac mark
for its double-decker hamburger sandwich and applied for the
registration of the same with then PBPTT (now IPO). Pending the
approval of teh application, it introduced its Big Mac sandwiches
in the Philippines in Sept. 1981, PBPTT allowed the registration of
the Big Mac mark in the principal register based on its Home
Registration in the USA.
McGeorge Food Industries (McGeorge) is McDonalds Philippine
franchisee.
L.C. Big Mak Burger Inc. (L.C. Big Mak) applied for the registration
of teh Big Mak mark for its hamburger sandwiches. McDonalds
opposed on the ground that Big Mak was a colorable imitation of
its registered Big Mac mark for the same food products.
Having received no reply from the respondent Dy (Corp. Pres. Of
L.C. Big Mak), McDonalds sued respondents in the RTC for
trademark infringement and unfari competition.
The RTC ruled in favor of McDonalds where the respondent
corporation was liable for infringement and unfair competition.
On appeal with the CA by the respondents, the CA ruled
REVERSING the RTCs decision ordering McDonalds to pay
damages to L.C. Big Mak, ruling that by the definition of a
colorable title, it is not sufficient that a similarity exists in both
names.
ISSUES:
a) Whether L.C. Big Mak used the words Big Mak not only as
part of the corporate name but also as a trademark for their
hamburger products, and
b) Whether L.C. big Mak is laible for trademark infringment and
unfair competition.
Sources:
RULING:
a) The plastic wrappings and plastic bags used by the respondents
for their hamburger sandwiches bore the words Big Mak. The
other descriptive words burger and 100% pure beef were
set in smaller type, along with the locations of branches. Since
petitioners complaint was based on facts existing before and
during the hearings on the injunctive writ, the facts established
during those hearings are the proper factual bases for the
disposition of the issues raised herein.
b) CONFUSION OF GOODS vis-a-vis CONFUSION OF BUSINESS
Confusion of Goods (a.k.a. Product Confusion)
- An ordinary prudent purchaser will be induced to purchase
one product in the belief that he was purchasing the other.
Confusion of Business (a.k.a Origin Confusion)
- Though the goods of the other party is different from the
other, the defendants (L.C. Big Mak) products might
reasonably be assumed to originate with the plaintiff
(McDonalds), and the public would then be deceived either
into that belief or into the belief that there is some connection
between the plaintiff (McDonalds) and the defendant (L.C. Big
Mak), which in fact, does not exist.
- This type exists when the products are NOT competing BUT
related enough to produce confusion or affiliation.
L.C. Big Mak used their Big Mak mark on hamburgers, the same
food product that petitioners sell with the use of their registered
mark Big Mac. Whether a hamburger is single, double, or tripledeker, and whether wrapped in plastic or styrofoam, it reamins the
sae hamburger food product. Even respondents use of the Big
Mak mark on non-hamburger food products CANNOT excuse theri
infringement of petitioners registered mark; otherwise, registered
marks will lose their protection under the law.
The totality or holistic test is contrary to the elementary postulate
of 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
marketplace.
Applying the dominancy test, respondents use of Big Mak mark
resulted into likelihood of confusion.
Aurally, the two marks are the same, therefore, respondents have
adopted Big Mak not only the dominant but also almost all
features of Big Mac.
McDonalds lack of proof of actual confusion does not negate their
claim of trademark infringement. While proof of actual confusion
is the best evidence of infringement, its absence is
inconsequential.
SOCIETE DES PRODUITS NESTLE, S.A. and NESTLE PHILIPPINES,
INC. vs. COURT OF APPEALS and CFC CORPORATION
FACTS:
Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.
PAGE 6
COURSE/SUBJECT: INTELLECTUAL
Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.
PROPERTY LAW
Private respondent CFC Corporation filed with the BPTTT an
application for the registration of the trademark "FLAVOR
MASTER" for instant coffee.
That while the contending marks depict the same product, the
glaring dissimilarities in their presentation far outweigh and dispel
any aspect of similitude. CFCs and appellees labels are entirely
different in size, background, colors, contents and pictorial
arrangement.
ISSUE:
Whether the trademark FLAVOR MASTER is a colorable imitation of
the trademarks MASTER ROAST and MASTER BLEND.
RULING:
Why it should have chosen a mark that had long been employed
by [plaintiff] and had become known to the trade instead of
adopting some other means of identifying its goods is hard to see
unless there was a deliberate purpose to obtain some advantage
from the trade that [plaintiff] had built up. Indeed, it is generally
true that, as soon as we see that a second comer in a market has,
for no reason that he can assign, plagiarized the "make-up" of an
earlier comer, we need no more; . . . [W]e feel bound to compel
him to exercise his ingenuity in quarters further afield.
H.D. Lee Co., Inc., a foreign corporation organized under the laws
of Delaware, U.S.A., filed with the BPTTT a Petition for Cancellation
of Registration for the trademark "STYLISTIC MR. LEE" issued in the
name of petitioner Emerald Garment Manufacturing Corporation, a
domestic corporation organized and existing under Philippine laws.
["so closely resembled H.D. Lees own trademark, 'LEE' as
previously registered and used in the Philippines, and not
abandoned. x x x ]
H.D. Lee averred that Emeralds trademark "so closely resembled
its own trademark, 'LEE' as previously registered and used in the
Philippines, and not abandoned, x x x to cause confusion, mistake
and deception on the part of the purchasing public as to the origin
of the goods."
Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.
PAGE 7
COURSE/SUBJECT: INTELLECTUAL
Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.
PROPERTY LAW
Emerald contended that its trademark was entirely and
unmistakably different from that of private respondent and that its
certificate of registration was legally and validly granted.
Director of Patents found private respondent to be the prior
registrant of the trademark "LEE" in the Philippines and that it had
been using said mark in the Philippines; and in using the test of
dominancy, declared that petitioner's trademark was confusingly
similar to private respondent's mark because "it is the word 'Lee'
which draws the attention of the buyer and leads him to conclude
that the goods originated from the same manufacturer.
On appeal by Emerald, the Court of Appeals promulgated its
decision affirming the decision of the Director of Patents in all
respects.
ISSUE:
Whether or not Emeralds trademark "STYLISTIC MR. LEE" is
confusingly similar with the H.D. Lees trademarks "LEE or
LEERIDERS, LEE-LEENS and LEE-SURES.
RULING:
COLORABLE IMITATION refers to such similarity in form, content,
words, sound, meaning, special arrangement, or general
appearance of the trademark or tradename with that of the other
mark or tradename in their over-all presentation or in their
essential, substantive and distinctive parts as would likely mislead
or confuse persons in the ordinary course of purchasing the
genuine article. It does not mean such similitude as amounts to
identity. Nor does it require that all the details be literally copied.
Applying the tests to the present controversy x x x, the Court
considered the trademarks involved as a whole and rule that
Emerlads "STYLISTIC MR. LEE" is not confusingly similar to private
H.D. Lees "LEE" trademark.
The products involved are various kinds of jeans. These are not
your ordinary household items. Accordingly, the casual buyer is
predisposed to be more cautious and discriminating in and would
prefer to mull over his purchase. Confusion and deception, then, is
less likely.
As a general rule, an ordinary buyer does not exercise as much
prudence in buying an article for which he pays a few centavos as
he does in purchasing a more valuable thing. Expensive and
valuable items are normally bought only after deliberate,
comparative and analytical investigation. But mass products, low
priced articles in wide use, and matters of everyday purchase
requiring frequent replacement are bought by the casual consumer
without great care. . . .
ORDINARY PURCHASER is the "ordinarily intelligent buyer"
considering the type of product involved.
He is one "accustomed to buy, and therefore to some extent
familiar with, the goods in question.
The test is not found in the deception, or the possibility of
deception, of the person who knows nothing about the design
which has been counterfeited, and who must be indifferent
Sources:
Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.
PAGE 8
COURSE/SUBJECT: INTELLECTUAL
Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.
PROPERTY LAW
Whether ABI infringes SMC's trademark: San Miguel Pale Pilsen
with Rectangular Hops and Malt Design, and thereby commits
unfair competition against the latter.
RULING:
This definition of infringement implies that only registered
trademarks, trade names and service marks are protected against
infringement or unauthorized use by another or others. The use of
someone else's registered trademark, trade name or service mark
is unauthorized, hence, actionable, if it is done "without the
consent of the registrant."
Infringement is determined by the "test of dominancy" rather than
by differences or variations in the details of one trademark and of
another. It is "similarity in the dominant features of the
trademarks."Similarity in size, form and color, while relevant, is not
conclusive.
If the competing trademark contains the main or essential or
dominant features of another, and confusion and deception is
likely to result, infringement takes place. Duplication or imitation is
not necessary; nor is it necessary that the infringing label should
suggest an effort to imitate.
The trial court perceptively observed that the word "BEER" does
not appear in SMC's trademark, just as the words "SAN MIGUEL"
do not appear in ABI's trademark. Hence, there is absolutely no
similarity in the dominant features of both trademarks.
Neither in sound, spelling or appearance can BEER PALE PILSEN be
said to be confusingly similar to SAN MIGUEL PALE PILSEN. No one
who purchases.
BEER PALE PILSEN can possibly be deceived that it is SAN MIGUEL
PALE PILSEN. No evidence whatsoever was presented by SMC
proving otherwise.
Besides the dissimilarity in their names, they have other
dissimilarities in the trade dress or appearance of the competing
products:
xxx
xxx
xxx
xxx
xxx
(5) The back of the SAN MIGUEL PALE PILSEN bottle carries the
SMC logo, whereas the BEER PALE PILSEN bottle has no logo.
xxx
xxx
xxx
Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.
PAGE 9
COURSE/SUBJECT: INTELLECTUAL
Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.
PROPERTY LAW
Petitioner filed before the lower court, a complaint for
infringement of trademark and unfair competition against the
herein private respondent principally alleging that private
respondent's trademark FRUIT FOR EVE is confusingly similar to its
trademark FRUIT OF THE LOOM used also on women's panties and
other textile products. Furthermore, that the color get-up and
general appearance of private respondent's hang tag consisting of
a big red apple is a colorable imitation to the hang tag of
petitioner.
ISSUE:
Whether or not private respondent's trademark FRUIT FOR EVE and
its hang tag are confusingly similar to petitioner's trademark FRUIT
OF THE LOOM and its hang tag so as to constitute an infringement
of the latter's trademark rights and justify the cancellation of the
former.
RULING:
By mere pronouncing the two marks, it could hardly be said that it
will provoke confusion, as to mistake one for the other. Standing
by itself, FRUIT OF THE LOOM is wholly different from FRUIT FOR
EVE.
a) GOLD TOE;
b) DEVICE, representation of a sock and magnifying glass on the toe
of a sock;
c) 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; and
d) LINENIZED
The Court do not agree with petitioner that the dominant feature
of both trademarks is the word FRUIT for even in the printing of
the trademark in both hang tags, the word FRUIT is not at all made
dominant over the other words.
As to the design and coloring scheme of the hang tags, the Court
believes that while there are similarities in the two marks like the
red apple at the center of each mark, the Court also fond
differences or dissimilarities which are glaring and striking to the
eye:
In the Patent Office, the decision under appeal, this was adversely
against the respondent, Amigo Manufacturing, Inc. On appeal, the
CA, agreed with the Director of Patents that there is hardly any
variance in the appearance of the marks 'GOLD TOP' and 'GOLD
TOE' since both show a representation of a man's foot wearing a
sock, and the marks are printed in identical lettering.
ISSUE:
Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.
PAGE 10
COURSE/SUBJECT: INTELLECTUAL
Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.
PROPERTY LAW
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 (Section 20, R.A. 166).
Petitioner points out that the director of patents erred in its
application of the idem sonans rule. It avers that since the words
gold and toe are generic, respondent has no right to their exclusive
use.
The Bureau of Patents, however, did not rely on the idem sonans
test alone in arriving at its conclusion.
Applying the tests of idem sonans, the mark 'GOLD TOP & DEVICE'
is confusingly similar with the mark 'GOLD TOE'. The difference in
sound occurs only in the final letter at the end of the marks. For
the same reason, hardly is there any variance in their appearance.
'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." The Bureau considered the drawings
and the labels, the appearance of the labels, the lettering, and the
representation of a man's foot wearing a sock. Obviously, its
conclusion is based on the totality of the similarities between the
parties' trademarks and not on their sounds alone.
In the present case, a resort to either the Dominancy Test or the
Holistic Test shows that colorable imitation exists between
respondent's "Gold Toe" and petitioner's "Gold Top." A glance at
petitioner's mark shows that it definitely has a lot of similarities
and in fact looks like a combination of the trademark and devices
that respondent has already registered; namely, "Gold Toe,"
therepresentation of a sock with a magnifying glass, the "Gold Toe"
representation and "linenized."
Petitioner cannot therefore ignore the fact that, when compared,
most of the features of its trademark are strikingly similar to those
of respondent.
As to the third issue, respondent registered its trademarks under
the principal register, which means that the requirement of prior
use had already been fulfilled. Since the trademark was
successfully registered, there exists a prima facie presumption of
the correctness of the contents thereof, including the date of first
use. Petitioner has failed to rebut this presumption.
SKECHERS, U.S.A., INC. vs. INTER PACIFIC INDUSTRIAL TRADING
CORP., et. al.
FACTS:
Skechers filed with RTC of Manila an application for the issuance of
search warrants against an outlet and warehouse operated by Inter
Pacific for infringement of trademark under Section 155, in relation
to Section 170 of Republic Act No. 8293.
Two search warrants were issued by the RTC and were served on
the premises of respondents. As a result of the raid, more than
6,000 pairs of shoes bearing the "S" logo were seized, which was
later on countered through a motion to quash by the respondent.
Sources:
FACTS:
The Department of Justice filed two informations in the RTC
charging Diaz with violation of Section 155, in relation to Section
170, of Republic Act No. 8293 where the abovenamed accused,
with criminal intent to defraud Levis Strauss (Phil.) Inc.
(hereinafter referred to as LEVIS), intentionally engaged in
commerce by reproducing, counterfeiting, copying and colorably
Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.
PAGE 11
COURSE/SUBJECT: INTELLECTUAL
Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.
PROPERTY LAW
imitating Levis registered trademarks or dominant features, which
likely caused confusion, mistake, and /or deceived the general
consuming public, without the consent, permit or authority of the
registered owner, LEVIS.
Diaz stated that he did not manufacture Levis jeans, and that he
used the label "LS Jeans Tailoring" in the jeans that he made and
sold; that the label "LS Jeans Tailoring" was registered with the
Intellectual Property Office; x x x; that the jeans he produced were
easily recognizable because the label "LS Jeans Tailoring"; and that
the leather patch on his jeans had two buffaloes, not two horses.
RTC rendered its decision finding Diaz guilty as charged. Diaz
appealed, but the CA dismissed the appeal on July 17, 2007 on the
ground that Diaz had not filed his appellants brief on time despite
being granted his requested several extension periods.
ISSUE:
Whether the CA properly dismissed the appeal of Diaz due to the
late filing of his appellants brief.
RULING:
The records reveal that Diazs counsel thrice sought an extension of
the period to file the appellants brief. Notwithstanding the
liberality of the CA, the counsel did not literally comply, filing the
appellants brief 18 days beyond the third extension period. The
failure to file the appellants brief on time rightly deserved the
outright rejection of the appeal.
Despite the CA being probably right in dismissing the excuses of
oversight and excusable negligence tendered by Diazs counsel to
justify the belated filing of the appellants brief as unworthy of
serious consideration, Diaz should not be made to suffer the dire
consequence.
The elements of the offense of trademark infringement under the
Intellectual Property Code are, therefore, the following:
1. The trademark being infringed is registered in the Intellectual
Property Office;
2. The trademark is reproduced, counterfeited, copied, or colorably
imitated by the infringer;
3. The infringing mark is used in connection with the sale, offering
for sale, or advertising of any goods, business or services; or the
infringing mark is applied to labels, signs, prints, packages,
wrappers, receptacles or advertisements intended to be used upon
or in connection with such goods, business or services;
4. The use or application of the infringing mark is likely to cause
confusion or mistake or to deceive purchasers or others as to the
goods or services themselves or as to the source or origin of such
goods or services or the identity of such business; and
5. The use or application of the infringing mark is without the
consent of the trademark owner or the assignee thereof.
The holistic test is applicable here considering that the herein
criminal cases also involved trademark infringement in relation to
jeans products.
Sources:
The consuming public knew that the original LEVIS 501 jeans were
under a foreign brand and quite expensive. Such jeans could be
purchased only in malls or boutiques as ready-to-wear items, and
were not available in tailoring shops like those of Diazs as well as
not acquired on a "made-to-order" basis. Under the circumstances,
the consuming public could easily discern if the jeans were original
or fake LEVIS 501, or were manufactured by other brands of jeans.
Confusion and deception were remote.
Diaz used the trademark "LS JEANS TAILORING" for the jeans he
produced and sold in his tailoring shops. His trademark was visually
and aurally different from the trademark "LEVI STRAUSS & CO"
appearing on the patch of original jeans under the trademark
LEVIS 501.
The customers of the private complainant are mall goers belonging
to class A and B market group while that of the accused are those
who belong to class D and E market who can only afford Php 300
for a pair of made-toorder pants.
LS JEANS TAILORING" was a registered trademark of Diaz. He had
registered his trademark prior to the filing of the present cases.
The Intellectual Property Office would certainly not have allowed
the registration had Diazs trademark been confusingly similar with
the registered trademark for LEVIS 501 jeans.
IDENTICAL OR RELATED GOODS AND CONFUSION OF BUSINESS:
MIGHTY CORPORATION and LA CAMPANA FABRICA DE TABACO,
INC. vs. E. & J. GALLO WINERY and THE ANDRESONS GROUP, INC.
FACTS:
Gallo Winery is a foreign corporation not doing business in the
Philippines but organized and existing under the laws of California,
USA, where all its wineries are located, under different registered
trademarks, including the GALLO and ERNEST & JULIO GALLO wine
trademarks.
Mighty Corporation and La Campana and their sister company,
Tobacco Industries of the Philippines (Tobacco Industries), are
engaged in tobacco products for which they have been using the
GALLO cigarette trademark.
Subsequently, La Campana authorized Mighty Corporation to
manufacture and sell cigarettes bearing the GALLO trademark.
Respondents sued petitioners in the Makati RTC for trademark and
tradename infringement and unfair competition, and charged
petitioners with violating Article 6 of the Paris Convention for the
Protection of Industrial Property and RA 166 (Trademark Law),
specifically, Sections 22, 23, 20, 29, 30, and 37; that petitioners
adopted the GALLO trademark to ride on GALLO and ERNEST &
JULIO GALLO trademarks established reputation and popularity.
The Makati RTC denied, for lack of merit, respondents prayer for
the issuance of a writ of preliminary injunction; that respondents
wines and petitioners cigarettes were not related goods. On
appeal, the CA affirmed the Makati RTCs denial.
the Makati RTC, subsequently held petitioners liable for
committing trademark infringement and unfair competition with
Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.
PAGE 12
COURSE/SUBJECT: INTELLECTUAL
Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.
PROPERTY LAW
respect to the GALLO trademark. On appeal, the CA affirmed the
Makati RTC decision.
ISSUE:
[b] Whether or not GALLO cigarettes and GALLO wines were
identical, similar or related goods;
[d] Whether or not petitioners were liable for trademark
infringement and unfair competition, and damages.
RULING:
DISTINCTIONS BETWEEN
UNFAIR COMPETITION:
TRADEMARK
INFRINGEMENT
AND
TRADEMARK INFRINGEMENT
UNFAIR COMPETITION
A person shall not be permitted to misrepresent his goods or
his business as the goods or business of another.
More limited;
Broader and more inclusive.
The unauthorized use of a
trademark;
Fraudulent
unnecessary;
Fraudulent
essential;
intent
Registration
necessary.
is
intent
is
is
not
b.
Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.
PAGE 13
COURSE/SUBJECT: INTELLECTUAL
Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.
PROPERTY LAW
petitioners and respondents. Obviously, wines and cigarettes are
not identical or competing products. Neither do they belong to the
same class of goods.
Here, the products involved are so unrelated that the public will
not be misled that there is the slightest nexus between petitioner
and the goods of private respondent.
Sources:
Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.
PAGE 14
COURSE/SUBJECT: INTELLECTUAL
Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.
PROPERTY LAW
Under the Intellectual Property Law:
Sec. 11. Issuance and contents of the certificate. contain the x x
x, the particular goods or services for which it is registered, x x x.
Sec. 20. Certificate of registration prima facie evidence of validity.
A certificate of registration of a mark or trade-name shall be
prima facie evidence x x x of the registrant's exclusive right to use
the same in connection with the goods, business or services
specified in the certificate x x x.
Thus, Co Beng Kay may be permitted to register the trademark
"BRUTE" for briefs produced by it notwithstanding petitioner's
vehement protestations of unfair dealings in marketing its own set
of items which are limited to: after-shave lotion, shaving cream,
deodorant, talcum powder and toilet soap. In as much as petitioner
has not ventured in the production of briefs, an item which is not
listed in its certificate of registration, petitioner can not and should
not be allowed to feign that private respondent had invaded
petitioner's exclusive domain.
Withal, judging from the physical attributes of petitioner's and
private respondent's products, there can be no doubt that
confusion or the likelihood of deception to the average purchaser
is unlikely since the goods are non-competing and unrelated.
The glaring discrepancies between the two products had been
amply portrayed to such an extent that indeed, "a purchaser who is
out in the market for the purpose of buying respondent's BRUTE
brief would definitely be not mistaken or misled into buying BRUT
after shave lotion or deodorant" x x x.
PHILIPPINE REFINING CO., INC. vs. NG SAM and THE DIRECTOR OF
PATENTS
FACTS:
The trademark "CAMIA" was first used ill the Philippines by
petitioner on its products in 1922. In 1949, petitioner caused the
registration of said trademark with the Philippine Patent Office,
covering covers vegetable and animal fats, particularly lard, butter
and cooking oil, all classified under Class 47.
On November 25, 1960, respondent Ng Sam, filed an application
with the Philippine Patent office for registration of the Identical
trademark "CAMIA" for his product, ham, which likewise falls
under Class 47. Alleged date of first use of the trademark by
respondent was on February 10, 1959.
RULING:
Sources:
Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.
PAGE 15
COURSE/SUBJECT: INTELLECTUAL
Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.
PROPERTY LAW
"Emphasis should be on the similarity of the products involved and
not on the arbitrary classification or general description of their
properties or characteristics."
And that "the mere fact that one person has adopted and used a
trademark on his goods does not prevent the adoption and use of
the same trademark by others on unrelated articles of a different
kind."
ESSO STANDARD EASTERN, INC. vs. COURT OF APPEALS and
UNITED CIGARETTE CORPORATION
FACTS:
Petitioner Esso Standard Eastern, Inc. is engaged in the sale of
petroleum products identified with its trademark ESSO. Private
respondent in turn is engaged in the manufacture and sale of
cigarettes, and acquired the use of the trademark ESSO on its
cigarettes, for which a permit had been duly granted by the Bureau
of Internal Revenue.
Barely had respondent as such successor started manufacturing
cigarettes with the trademark ESSO, petitioner commenced a case
for trademark infringement in the Court of First Instance of Manila.
Petitioner asserted that the continued use by private respondent
of the same trademark ESSO on its cigarettes was being carried out
for the purpose of deceiving the public as to its quality and origin
to the detriment and disadvantage of its own products.
The trial court decided in favor of petitioner and ruled that
respondent was guilty of infringement of trademark. On appeal
with the CA, the latter found that there was no trademark
infringement and dismissed the complaint.
ISSUE:
RULING:
RULING:
The Court finds no ground for granting the petition.
It is undisputed that the goods on which petitioner uses the
trademark ESSO, petroleum products, and the product of
respondent, cigarettes, are non-competing.
b.
c.
In the situation before us, the goods are obviously different from
each other with "absolutely no iota of similitude" as stressed in
respondent court's judgment. They are so foreign to each other as
to make it unlikely that purchasers would think that petitioner is
the manufacturer of respondent's goods.
The public knows too well that petitioner deals solely with
petroleum products that there is no possibility that cigarettes with
ESSO brand will be associated with whatever good name
petitioner's ESSO trademark may have generated.
d.
e.
Sources:
Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.
PAGE 16
COURSE/SUBJECT: INTELLECTUAL
Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.
PROPERTY LAW
infringement of a trademark is to be determined by the test of
dominancy.
Moreover, the totality or holistic test is contrary to the elementary
postulate of the law on trademarks and unfair competition, for
such test only relies on visual comparison between two trademarks
whereas the dominancy test relies not only on the visual but also
on the aural and connotative comparisons and overall impressions
between the two trademarks.
Applying the dominancy test in the present case, the Court finds
that "NANNY" is confusingly similar to "NAN." "NAN" is the
prevalent feature of Nestles line of infant powdered milk products.
It is written in bold letters and used in all products. The line
consists of PRE-NAN, NAN-H.A., NAN-1, and NAN-2. Clearly,
"NANNY" contains the prevalent feature "NAN." The first three
letters of "NANNY" are exactly the same as the letters of "NAN."
When "NAN" and "NANNY" are pronounced, the aural effect is
confusingly similar.
NANNY and NAN have the same classification, descriptive
properties and physical attributes. Both are classified under Class
6, both are milk products, and both are in powder form. Also,
NANNY and NAN are displayed in the same section of stores the
milk section.
The Court agrees with the lower courts that there are differences
between NAN and NANNY. However, as the registered owner of
the "NN" mark, Nestle should be free to use his mark on the same
or similar products, in different segments of the market, and at
different price levels depending on variations of the products for
specific segments of the market. The Court has recognized that the
registered trademark owner enjoys protection in product and
market areas that are the normal potential expansion of his
business.
Certificates of Registration. shall be a prima facie evidence of
validity of the registration, the registrants ownership of the mark,
and of the registrants exclusive right to use the same in
connection with the goods or services and those that are related
thereto specified in the certificate.
PHILIP MORRIS, INC., vs. FORTUNE TOBACCO CORPORATION
FACTS:
Philip Morris, Inc., a corporation organized under the laws of the
State of Virginia, USA, is, per Certificate of Registration No. 18723
issued, the registered owner of the trademark "MARK VII" for
cigarettes. Benson & Hedges (Canada) Inc., a subsidiary, is the
registered owner of the trademark "MARK TEN" for cigarettes as
evidenced by PPO Certificate of Registration. Another subsidiary
Fabriques de Tabac Reunies, S.A., is the assignee of the trademark
"LARK". Fortune Tobacco Corporation, a company organized in the
Philippines, manufactures and sells cigarettes using the trademark
"MARK."
Complaint for Infringement of Trademark and Damages against
respondent Fortune Tobacco Corporation was filed by petitioners,
in the Regional Trial Court, invoking the provisions of the Paris
Convention for the Protection of Industrial and Intellectual
Sources:
Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.
PAGE 17
COURSE/SUBJECT: INTELLECTUAL
Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.
PROPERTY LAW
complaint for infringement and the concomitant plea for damages
must be affirmed.
DEL MONTE CORPORATION vs. COURT OF APPEALS and
SUNSHINE SAUCE MANUFACTURING INDUSTRIES
FACTS:
Del Monte Corporation is a foreign company not engaged in
business in the Philippines. Philippine Packing Corporation
(Philpack) is a domestic corporation duly organized under the laws
of the Philippines. Del Monte granted Philpack the right to
manufacture, distribute and sell in the Philippines under the Del
Monte trademark and logo, and authorized Philpack to register the
Del Monte catsup bottle configuration, for which it was granted
the Certificate.
Sunshine Sauce Manufacturing Industries was issued a Certificate
of Registration by the Bureau of Domestic Trade to engage in the
manufacture, packing, distribution and sale of various kinds of
sauce, identified by the logo Sunshine Fruit Catsup contained in
various kinds of bottles, including the Del Monte bottle, which the
private respondent bought from the junk shops for recycling.
Philpack and Del Monte filed a complaint against the private
respondent for infringement of trademark and unfair competition,
with a prayer for damages and the issuance of a writ of preliminary
injunction.
Regional Trial Court dismissed the complaint. It held that there
were substantial differences between the logos or trademarks of
the parties. On appeal, decision was affirmed in toto by the
respondent court.
ISSUE:
Whether the general confusion made by the article upon the eye of
the casual purchaser who is unsuspicious and off his guard, is such
as to likely result in his confounding it with the original.
RULING:
TRADEMARK INFRINGEMENT
unauthorized use of a
trademark
fraudulent intent unnecessary
prior registration of the
trademark is a prerequisite to
the action
UNFAIR COMPETITION
passing off of one's goods as
those of another.
fraudulent intent is essential.
registration is not necessary.
The reason is that the configuration of the said bottle was merely
registered in the Supplemental Register.
PRINCIPAL REGISTER
Gives rise to a presumption of
the validity of the registration,
the registrant's ownership of
the mark and his right to the
exclusive use thereof.
Limited to the actual owner of
the trademark and proceedings therein on the issue
of ownership which may be
contested through opposition
or interference proceedings
or, after registration, in a
petition for cancellation.
A constructive notice of the
registrant's claim of ownership.
Basis for an action for
infringement.
Publication of the application
is necessary.
SUPPLEMENTAL REGISTER
There is no such presumption
in the registration
Though Del Monte has actual use of the bottle's configuration, the
petitioners cannot claim exclusive use thereof because it has not
been registered in the Principal Register. However, we find that
Sunshine, despite the many choices available to it and
notwithstanding that the caution "Del Monte Corporation, Not to
be Refilled" was embossed on the bottle, still opted to use the
petitioners' bottle to market its product which Philpack also
produces. This clearly shows the private respondent's bad faith and
its intention to capitalize on the latter's reputation and goodwill
and pass off its own product as that of Del Monte.
As Sunshine's label is an infringement of the Del Monte's
trademark, calls for the cancellation of the private respondent's
registration and withdrawal of all its products bearing the
questioned label from the market. With regard to the use of Del
Monte's bottle, the same constitutes unfair competition; hence,
the respondent should be permanently enjoined from the use of
such bottles.
CONVERSE RUBBER CORPORATION vs. UNIVERSAL RUBBER
PRODUCTS, INC.
FACTS:
Respondent Universal Rubber Products, Inc. filed an application
with the Philippine Patent office for registration of the trademark
Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.
PAGE 18
COURSE/SUBJECT: INTELLECTUAL
Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.
PROPERTY LAW
"UNIVERSAL CONVERSE AND DEVICE" used on rubber shoes and
rubber slippers.
a.
b.
Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.
PAGE 19
COURSE/SUBJECT: INTELLECTUAL
Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.
PROPERTY LAW
deals in, his business or services from those of others, whether or
not a 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."
Unfair Competition "any acts" calculated to result in the passing
off of other goods "for those of the one having established such
goodwill."
Absent is a requirement that the goodwill sought to be protected
in an action for unfair competition must have been established in
an actual competitive situation. Nor does the law require that the
deception or other means contrary to good faith or any acts
calculated to pass off other goods for those of one who has
established a goodwill must have been committed in an actual
competitive situation.
Plaintiffs-appellees have a established goodwill. This goodwill, the
trial court found, defendants-appellants have pirated in clear bad
faith to their unjust enrichment.
REMEDIES:
KABUSHI KAISHA ISETAN, (ISETAN CO.,LTD.) vs. INTERMEDIATE
APPELLATE COURT, DIRECTOR OF PATENTS, and ISETANN
DEPARTMENT STORE, INC.
FACTS:
Petitioner Kabushi Kaisha Isetan is a foreign corporation organized
and existing under the laws of Japan, and the owner of the
trademark "Isetan" and the "Young Leaves Design". Private
respondent, Isetann Department Store, on the other hand, is a
domestic corporation organized and existing under the laws of the
Philippines.
The private respondent registered "Isetann Department Store, Inc."
and Isetann and Flower Design in the Philippine Patent Office as
well as with the Bureau of Domestic Trade. The petitioner filed
with the Phil. Patent Office two petitions for the cancellation of
Certificates of Supplemental Registration.
The Director of Patents ruled in favour of the private respondent.
The petitioner appealed to the Intermediate Appellate Court and
the latter, dismissed the appeal on the ground that it was filed out
of time.
ISSUE:
RULING:
There is no dispute and the petitioner does not question the fact
that the appeal was filed out of time. Not only was the appeal filed
late in the Court of Appeals, the petition for review was also filed
late with the SC. In common parlance, the petitioner's case is
"twice dead" and may no longer be reviewed. The Court of Appeals
correctly rejected the appeal on the sole ground of late filing.
Sources:
Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.
PAGE 20
COURSE/SUBJECT: INTELLECTUAL
Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.
PROPERTY LAW
Cristobal, Jr. had rendered a Decision in Appeal finding petitioners
guilty of unfair competition.
ISSUE:
FACTS:
RULING:
The petition has no merit.
The Court has invariably ruled that perfection of an appeal within
the statutory or reglementary period is not only mandatory but
also jurisdictional; failure to do so renders the questioned
decision/final order final and executory, and deprives the appellate
court of jurisdiction to alter the judgment or final order, much less
to entertain the appeal. True, this rule had been relaxed but only in
highly meritorious cases to prevent a grave injustice from being
done. Such does not obtain in this case.
ISSUES:
2.
RULING:
Rule 102:
(a) the duration, extent and geographical area of any use of the
mark, in particular, the duration, extent and geographical
area of any promotion of the mark, including publicity and
the presentation at fairs or exhibitions, of the goods and/or
services to which the mark applies;
xxxx
(d) the quality image or reputation acquired by the mark
The fact that respondents marks are neither registered nor used in
the Philippines is of no moment. The scope of protection initially
afforded by Article 6 of the Paris Convention has been expanded in
the 1999 Joint Recommendation Concerning Provisions on the
Protection of Well-Known Marks, wherein the World Intellectual
Property Organization (WIPO) General Assembly and the Paris
Union agreed to a nonbinding recommendation that a well-known
mark should be protected in a country even if the mark is neither
registered nor used in that country.
Sources:
1.
Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.
PAGE 21
COURSE/SUBJECT: INTELLECTUAL
Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.
PROPERTY LAW
If prosecution follows after the completion of the preliminary
investigation being conducted by the Special Prosecutor the
information shall be in the name of the People of the Philippines
and no longer the petitioner which is only an aggrieved party since
a criminal offense is essentially an act against the State. It is the
state which is principally the injured party although there is a
private right violated.
FACTS:
Petitioner, a foreign corporation, and the manufacturer and
producer of "PUMA PRODUCTS," filed a complaint for infringement
of patent or trademark with a prayer for the issuance of a writ of
preliminary injunction against the private respondent.
Prior to the filing of the said civil suit, three cases were pending
before the Philippine Patent Office.
The trial court issued a temporary restraining order. Private
respondent filed a motion to dismiss on the grounds that the
petitioners' complaint states no cause of action, petitioner has no
legal personality to sue, and litis pendentia.
The trial court denied the motion to dismiss and at the same time
granted the petitioner's application for a writ of injunction. On
appeal, the Court of Appeals reversed the order of the trial court
and ordered the respondent judge to dismiss the civil case filed by
the petitioner. With regard to the petitioner's legal capacity to sue,
the Court of Appeals likewise held that it had no such capacity
because it failed to allege reciprocity in its complaint.
ISSUE:
FACTS:
RULING:
The Court agrees.
Thus, in Western Equipment and Supply Co. v. Reyes (51 Phil. 115) ,
this Court held that a foreign corporation which has never done
any business in the Philippines and which is unlicensed and
unregistered to do business here, but is widely and favorably
known in the Philippines through the use therein of its products
bearing its corporate and trade name, has a legal right to maintain
an action in the Philippines to restrain the residents and
inhabitants thereof from organizing a corporation therein bearing
the same name as the foreign corporation, when it appears that
Sources:
Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.
PAGE 22
COURSE/SUBJECT: INTELLECTUAL
Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.
PROPERTY LAW
injunction order. The CA issued a TRO enjoining the trial court from
implementing its injunction order and from further proceeding
with the case.
ISSUE:
Whether San Miguel is entitled to the writ of preliminary injunction
granted by the trial court as affirmed by the CA.
RULING:
The Court holds that the CA committed a reversible error.
A preliminary injunction is a provisional remedy for the protection
of substantive rights and interests. It is not a cause of action in
itself but merely an adjunct to the main case.
Before an injunctive writ is issued, it is essential that the following
requisites are present:
(1) the existence of a right to be protected and
(2) the acts against which the injunction is directed are violative of
the right.
In this case, a cloud of doubt exists over San Miguels exclusive
right relating to the word Ginebra. San Miguels claim to the
exclusive use of the word Ginebra is clearly still in dispute
because of Tanduays claim that it has, as others have, also
registered the word Ginebra for its gin products.
We find that San Miguels right to injunctive relief has not been
clearly and unmistakably demonstrated. The right to the exclusive
use of the word Ginebra has yet to be determined in the main
case. The trial courts grant of the writ of preliminary injunction in
favor of San Miguel, despite the lack of a clear and unmistakable
right on its part, constitutes grave abuse of discretion amounting to
lack of jurisdiction.
Based on the affidavits and market survey report submitted during
the injunction hearings, San Miguel has failed to prove the
probability of irreparable injury which it will stand to suffer if the
sale of Ginebra Kapitan is not enjoined. San Miguel has not
presented proof of damages incapable of pecuniary estimation.
Without the submission of proof that the damage is irreparable
and incapable of pecuniary estimation, San Miguels claim cannot
be the basis for a valid writ of preliminary injunction.
LEVI STRAUSS & CO., & LEVI STRAUSS (PHILS.) INC. vs. CLINTON
APPARELLE, INC.,
FACTS:
LS & Co., a foreign corporation and engaged in the apparel
business, is the owner by prior adoption and use since 1986 of the
internationally famous Dockers and Design trademark evidenced
by its valid and existing registrations in various member countries
of the Paris Convention. In the Philippines, it has a Certificate of
Registration No. 46619 in the Principal Register for use of said
trademark.
Based on their information and belief, they added, Clinton
Apparelle manufactured and continues to manufacture such
Paddocks jeans and other apparel.
Sources:
Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.
PAGE 23
COURSE/SUBJECT: INTELLECTUAL
Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.
PROPERTY LAW
issuance of an injunctive writ. Neither were petitioners able to
show any urgent and permanent necessity for the writ to prevent
serious damage.
Trademark Dilution is the lessening of the capacity of a famous
mark to identify and distinguish goods or services, regardless of the
presence or absence of:
(1) competition between the owner of the famous mark and
other parties; or
(2) likelihood of confusion, mistake or deception.
Subject to the principles of equity, the owner of a famous mark is
entitled to an injunction against another persons commercial use
in commerce of a mark or trade name, if such use begins after the
mark has become famous and causes dilution of the distinctive
quality of the mark.
This is intended to protect famous marks from subsequent uses
that blur distinctiveness of the mark or tarnish or disparage it.
In the case at bar, petitioners have yet to establish whether
Dockers and Design has acquired a strong degree of
distinctiveness and whether the other two elements are present
for their cause to fall within the ambit of the invoked protection.
SUPERIOR COMMERCIAL ENTERPRISES, INC. vs. KUNNAN
ENTERPRISES LTD. AND SPORTS CONCEPT & DISTRIBUTOR, INC.
FACTS:
SUPERIOR filed a complaint for trademark infringement and unfair
competition with preliminary injunction against KUNNAN and
SPORTS CONCEPT with the RTC.
Prior to and during the pendency of the infringement and unfair
competition case before the RTC, KUNNAN filed with the now
defunct Bureau of Patents, Trademarks and Technology Transfer
separate Petitions for the Cancellation of Registration Trademark,
Partes, as well as Opposition to Application (Consolidated Petitions
for Cancellation) involving the KENNEX and PRO KENNEX
trademarks.
KUNNAN filed the Petition for Cancellation and Opposition on the
ground that SUPERIOR fraudulently registered and appropriated
the disputed trademarks; as mere distributor and not as lawful
owner, it obtained the registrations and assignments of the
disputed trademarks in violation of the terms of the Distributorship
Agreement and Sections 2-A and 17 of Republic Act No. 166, as
amended.
Upon the termination of its distributorship agreement with
SUPERIOR, KUNNAN appointed SPORTS CONCEPT as its new
distributor.
The RTC held KUNNAN liable for trademark infringement and unfair
competition. CA issued its decision, reversing and setting aside the
RTCs decision.
ISSUE:
Whether or not the CA erred in reversing and setting aside the
decision of the RTC, lifting the preliminary injunction issued against
respondents Kunnan and sports concept and dismissing the
Sources:
Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.
PAGE 24
COURSE/SUBJECT: INTELLECTUAL
Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.
PROPERTY LAW
"S" logo in the patent offices in different countries around the
world.
The petitioners filed with the BPTTT a petition, praying for the
cancellation of the registration of the "ShangriLa" mark and "S"
logo issued to respondent They also filed in the same office an
Inter Partes Case, praying for the registration of the same mark and
logo in their own names.
Respondent DGCI filed a complaint for Infringement and Damages
with the RTC against the herein petitioners, alleging that DGCI has,
for the last eight (8) years, been the prior exclusive user in the
Philippines of the mark and logo in question and the registered
owner thereof for its restaurant and allied services.
The trial court came out with its decision rendering judgment for
DGCI, as to the issue of infringement. Petitioners went on appeal to
the CA, and affirmed that of the lower court with the modification.
ISSUE:
Whether the issues posed by petitioners are purely factual in nature
hence improper for resolution in the instant petition for review on
certiorari.
RULING:
DGCI claims that the present petition for review should be
dismissed outright for certain procedural defects, to wit: an
insufficient certification against forum shopping and raising pure
questions of fact. On both counts, we find the instant petition
formally and substantially sound.
While the present law on trademarks has dispensed with the
requirement of prior actual use at the time of registration, the law
in force at the time of registration must be applied, and thereunder
it was held that as a condition precedent to registration of
trademark, trade name or service mark, the same must have been
in actual use in the Philippines before the filing of the application
for registration.
The word or name "Shangri-la" and the S-logo, are not uncommon.
ISSUE:
This point is further bolstered by the fact that under either Section
17 of R.A. No. 166, or Section 151 of R.A. No. 8293, or Article 6bis
(3) of the Paris Convention, no time limit is fixed for the
cancellation of marks registered or used in bad faith.
For, while Section 2 of R.A. 166, Section 2-A, on the other hand,
sets out how ownership is acquired. These are two distinct
concepts.
Section 2 of R.A. 166
provides
for
what
registrable;
Sources:
is
Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.
PAGE 25
COURSE/SUBJECT: INTELLECTUAL
Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.
PROPERTY LAW
of the goods bearing the trademark, trade name, service mark, or
other mark of ownership, unless such importer is actually the
owner thereof in the country from which the goods are imported.
A local importer, however, may make application for the
registration of a foreign trademark, trade name or service mark if
he is duly authorized by the actual owner of the name or other
mark of ownership.
In the case at bar, the evidence showed that the trademark "All
Montana" was owned and registered in the name of Centennial
Mills, Inc. which later transferred it to respondent General Milling
Corporation by way of a deed of assignment. The Deed of
Assignment itself constitutes sufficient proof of its ownership of
the trademark "All Montana," all of which were assigned by it to
respondent General Milling Corporation.
Registration merely creates a prima facie presumption of the
validity of the registration, of the registrant's ownership of the
trademark and of the exclusive right to the use thereof.
Registration does not perfect a trademark right. In the case at bar,
the Director of Patents found that "ample evidence was presented
in the record that Centennial Mills, Inc. was the owner and prior
user in the Philippines of the trademark 'All Montana' through a
local importer and broker. Use of a trademark by a mere importer,
indentor or exporter (the Senior Party herein) inures to the benefit
of the foreign manufacturer whose goods are identified by the
trademark.
REGISTRATION PROCESS:
ii)
Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.
PAGE 26
COURSE/SUBJECT: INTELLECTUAL
PROPERTY LAW
Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.
each color, of the principal parts of the mark which are in that
color;
(h) Where the mark is a three-dimensional mark, a statement to
that effect;
(i) One or more reproductions of the mark, as prescribed in the
Regulations;
(j) A transliteration or translation of the mark or of some parts of
the mark, as prescribed in the Regulations;
(k) The names of the goods or services for which the registration is
sought, grouped according to the classes of the Nice
Classification, together with the number of the class of the said
Classification to which each group of goods or services belongs;
and
(l) A signature by, or other self-identification of, the applicant or his
representative.
124.3. One (1) application may relate to several goods and/or
services, whether they belong to one (1) class or to several
classes of the Nice Classification.
RIGHT OF REGISTRANT
The owner of a registered trademark shall have the exclusive right
to prevent all third parties not having the owners consent from
using in the course of trade, identical or similar signs, 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 into likelihood of confusion.
The exclusive right of an owner of a well-known mark under Sec.
123.1 (e), which is registered in the Philippines, extends to goods
or services which are not similar to those in respect of which the
mark is registered.
Sources:
Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.
PAGE 27