Legal Research and Thesis Writing

Research Exercise No. 1

For Group 3

The field of law involved in the client’s case is intellectual property

law. Black’s Law Dictionary defined intellectual property as “a category of
intangible rights protecting commercially valuable products of the human
intellect. The category comprises primarily trademark, copyright, and patent
rights, but also includes trade- secret rights, publicity rights, moral rights,
and rights against unfair competition.” The case’s main concern is the
violation of the intellectual property law because of the unauthorized use of
San Miguel Brewery’s trademark by an oil company.

The oil company evidently violated Sections 147.1 and 147.2 in

relation to Subsection 123.1(e) of the Intellectual Property Code. For
clarification, the following statutes are enumerated below:

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 [emphasis added]. In case of the use, of an
identical sign for identical goods or services, a likelihood of confusion
shall be presumed. [1]
 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
[2]
registered mark are likely to be damaged by such use.

Section 123. Registrability. -

123.1. A mark cannot be registered if it:
xxxx
(e) Is identical with, or confusingly similar to, or constitutes a
translation of a mark which is considered by the competent authority
of the Philippines to be well-known internationally and in the
Philippines [emphasis added], 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; [3]

The oil company violated Section 147.1 by using the client’s

registered trademark “Oktoberfest” without their (the client’s) consent. Even
if the oil company eventually used “Oktoberblast” in subsequent
advertisements, it still constitutes a violation of the Intellectual Property
Code. Under the same provision, third parties cannot use a registered mark
without the owner’s consent if “such use would result in a likelihood of
confusion.” Since “Oktoberblast” sounds almost identically like
“Oktoberfest”, a likelihood of confusion must be presumed.

In the case of Prosource International Inc. v. Horphang Research

Management, the Supreme Court used the Dominancy Test and the
Holistic or Totality Test. The former focuses on the similarity of the prevalent
features of the competing trademarks that might cause confusion and
deception, thus constituting infringement. If the competing trademark
contains the main, essential and dominant features of another, and
confusion or deception is likely to result, infringement takes place. [4]

The latter, on the other hand. entails a consideration of the entirety of

the marks as applied to the products, including the labels and packaging, in
determining confusing similarity. The discerning eye of the observer must
focus not only on the predominant words but also on the other features
appearing on both labels in order that the observer may draw his
[5]
conclusion whether one is confusingly similar to the other.

In the present case, both tests may be used to determine the

presence of trademark infringement. Both trademarks have the prefix Okto-
and when pronounced, may be perceived as similar. Although both words
have different prefixes, they are confusingly similar as they are presumably
the same products since the one advertised by “Oktoberblast” is a direct
competitor of the client.
 Furthermore, the case Dermaline Inc. v. Myra Pharmaceuticals Inc.
stressed that there are two (2) types of confusion. First is the confusion of
goods, where the ordinarily prudent purchaser would be induced to
[cite]
purchase one product in the belief that he was purchasing the other and
second, the confusion of business, where although the goods of the
parties are different, the product, the mark of which registration is applied
for by one party, is such as might reasonably be assumed to originate with
the registrant of an earlier product, and the public would then be deceived
either into that belief or into the belief that there is some connection
[6]
between the two parties, though inexistent.

In the present case, confusion of goods is present. Since the client

and its competitor presumably are selling the same product, the similarity
between the way they are advertised may induce a purchaser to purchase
one product in belief that he was purchasing the other.

In conclusion, the oil company cannot be allowed to continue to use

“Oktoberblast” in the print advertisments for the client’s competitor’s
product since it is contrary to prevailing laws and jurisprudence.

[1]
Rep. Act No. 8293 (1998) sec. 147.1
[2]
Ibid., sec. 147.2
[3]
Ibid., sec. 123.1(e),
[4]
Prosource International Inc. v. Horphang Research Management, G.R.
No. 180073, November 25, 2009
[5]
Ibid.
[6]
Dermaline Inc. v. Myra Pharmaceuticals Inc., G.R. 190065, August 16,
2010
Mallari, Justine Victoria M.
1A – JD4