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TRADEMARK, TRADENAME &

UNFAIR COMPETITION
Trademarks

A “mark” means any visible sign capable of distinguishing the goods


(trademark) or services (service mark) of an enterprise and shall include a
stamped or marked container of goods. (Sec. 121.1)

Visible Sign
“visible”
 Words  Colors
 Letters  Logos
 Numerals  Three dimensional objects
 Figures/Pictures  Combinations
 Shapes
Colors or shapes
Colors or shapes
Three dimensional objects
Three dimensional objects
Not “visible”
 Sounds
 Smell
 Touch…

…called “non-traditional marks”


Trademarks

A “mark” means any visible sign capable of distinguishing the goods


(trademark) or services (service mark) of an enterprise and shall include a
stamped or marked container of goods. (Sec. 121.1)

Visible Sign

Distinctive
Distinctiveness of a mark: A spectrum
Types of Marks

 Trademarks vs. Service marks


 Collective marks
 Geographical Indications
 Certification marks

 Well known marks


Types of Trademarks

 Service marks
Types of Trademarks
 Collective marks
"Collective mark" means any visible sign
designated as such in the application for
registration and capable of distinguishing the
origin or any other common characteristic,
including the quality of goods or services of
different enterprises which use the sign under the
control of the registered owner of the collective
mark
Types of Trademarks

 Well known marks


Well-Known Marks
Sec. 123. A mark cannot be registered if it... (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, 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; (Sec. 123)
Well-Known Marks
(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; (Sec. 123)
Well-Known Marks
Section 147. Rights Conferred. - 147.1…

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 registered mark are likely to be
damaged by such use.
Well-Known Marks: Factors
Rule 18, A.M. No. 10-3-10-SC

SEC. 2. Well-known mark. – 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.
Well-Known Marks: Factors
Criteria - any combination
a) the duration, extent and geographical area of any use of the mark;
b) the market share, in the Philippines and in other countries,
c) the degree of the inherent or acquired distinction of the mark;
d) the quality-image or reputation acquired by the mark;
e) the extent to which the mark has been registered in the world;
f) the exclusivity of registration attained by the mark in the world;
g) the extent to which the mark has been used in the world;
h) the exclusivity of use attained by the mark in the world
Well-Known Marks: Factors
Criteria or any combination thereof
i) the commercial value attributed to the mark in the world;
j) the record of successful protection of the rights in the mark;
k) the outcome of litigations dealing with the issue of whether the mark
is a well-known mark; and
l) the presence or absence of identical or similar marks validly registered
for or used on identical or similar goods or services and owned by
persons other than the person claiming that his mark is a well-known
mark.
Ownership of a mark
 How Marks are Acquired. - The rights in a mark shall be acquired
through registration made validly in accordance with the provisions of
this law. (Sec. 122)
 159.1. Notwithstanding the provisions of Section 155 hereof, a registered
mark shall have no effect against any person who, in good faith, before the
filing date or the priority date, was using the mark for the purposes of his
business or enterprise.

 TM rights are acquired through valid registration!


 BUT see Berris v. Abyadang and E.Y. Industrial v. Shen Dar – ownership is
acquired based on prior use.
Ownership of a mark
Non-registrable marks:
- Immoral, deceptive, or scandalous matters
- Matter which may disparage or falsely suggest a connection with
persons, etc.
- Contrary to public order or morality
[Note: Sec. 123, rearranged according to nature]
Ownership of a mark

Non-registrable marks:
- Flags/coat of arms of nations
- Names, portraits or signature of living persons
- Exception: with consent
- Names, portraits or signature of a deceased President of the
Philippines
- Exception: with written consent of his/her living widow
Ownership of a mark

Non-registrable marks:
- Identical or confusingly similar with existing registered or
earlier filed application trademarks (first-to-file rule) including
well-known marks
Ownership of a mark
Non-registrable marks:
- Generic terms
- Descriptive terms
- Color by itself;
- Shapes dictated by technical factors
- Identical or confusingly similar with existing registered or earlier filed
application trademarks (first-to-file rule) including well-known marks
Secondary Meaning
 123.2. As regards signs or devices mentioned in paragraphs (j), (k), and
(l), nothing shall prevent the registration of any such sign or device
which has become distinctive in relation to the goods for which
registration is requested as a result of the use that have been made of it
in commerce in the Philippines. The Office may accept as prima facie
evidence that the mark has become distinctive, as used in connection
with the applicant's goods or services in commerce, proof of
substantially exclusive and continuous use thereof by the applicant
in commerce in the Philippines for five (5) years before the date on
which the claim of distinctiveness is made.
Ownership of a mark
 Registration
- Prior use is not a requirement but there must be actual use after application
- Declaration of Actual Use – within three (3) years from filing of the application
 Protection:
- Ten (10) years from registration
- renewable for periods of ten (10) years each – indefinite – provided a declaration of
use is filed within 1 year from filing and from the 5th year of registration
Rights of a Trademark Owner
 Right to exclusive use of the mark in connection with one’s own goods
or services resulting in likelihood of confusion

 Right to prevent others from use of an identical mark for the same,
similar or related goods or services. (Sec. 147)
Rights of a Trademark Owner
 Will trademark registration abroad be valid and binding
here in the Philippines?
- No.
- Principle of Territoriality
- Exception: Well-known marks
- Exception: Bad Faith
Trademark Infringement
Unauthorized use of a registered trademark, or of a
colorable imitation of the same, for similar or related
goods in which such use is likely to cause confusion or
mistake, or to deceive.

 Governed by section 155, IPC


Trademark Infringement
Elements:
1. Ownership of a trademark through registration
2. That the trademark is reproduced, counterfeited, copied, or colourably
imitated by another
3. No consent by the trademark owner or assignee
4. Use in connection with the sale, offering for sale, or advertising of any such
goods, business or services or those related thereto
5. Likelihood of Confusion
Trademark Infringement
Element 1:
1. Ownership of a trademark
 R.A. 166 (Old trademark law): Prior user
 R.A. 8293 (IPC): Registration
Trademark Infringement
Element 2:
2. That the trademark is reproduced, counterfeited, copied, or
colourably imitated by the infringer;
Trademark Infringement
Element 2:
2. That the trademark is reproduced, counterfeited, copied,
or colourably imitated by another without consent;
 Exact reproduction/counterfeiting/copying of the mark
 Use of a colorable imitation thereof
• “Colorable imitation” denotes such a close or ingenious imitation as to
be calculated to deceive ordinary persons, or such a resemblance to the
original as to deceive an ordinary purchaser giving such attention as a
purchaser usually gives, as to cause him to purchase the one supposing
it to be the other. (Rule 18, Section 4, AM No. 10-3-10-SC)
Trademark Infringement
Element 2:
2. That the trademark is reproduced, counterfeited, copied,
or colourably imitated by another without consent;
 Exact reproduction/counterfeiting/copying of the mark
 Use of a colorable imitation thereof
• “Colorable imitation” denotes such a close or ingenious imitation as to
be calculated to deceive ordinary persons, or such a resemblance to the
original as to deceive an ordinary purchaser giving such attention as a
purchaser usually gives, as to cause him to purchase the one supposing
it to be the other. (Rule 18, Section 4, AM No. 10-3-10-SC)
Counterfeiting Colorable Imitation
Trademark Infringement
Elements 3 and 4:
3. Unauthorized Use in connection with the sale, offering for sale, or
advertising of any such goods, business or services, or those that
are related thereto
Trademark Infringement
Elements 3 and 4:
3. Unauthorized use in connection with the sale, offering for sale, or
advertising of any such goods, business or services or those that
are related thereto
 Use of identical or similar mark for non-identical, dissimilar or
non-related goods = No infringement
• Exception 1: Internationally Well-Known Marks
• Exception 2: Dilution of Mark
Trademark Infringement

Elements 5:
4. Likelihood of confusion
4. Is actual confusion necessary?
Trademark Infringement
Element 5:
4. Likelihood of confusion

 Types of confusion:
• As to the goods themselves (“Confusion of goods”)
• As to the source or origin of such goods (“Confusion of business”)
Trademark Infringement
Element 5:
4. Likelihood of confusion

 Types of confusion:
• As to the goods themselves (“Confusion of goods”)
◼ Same or competing goods
• As to the source or origin of such goods (“Confusion of business”)
Trademark Infringement
Element 5:
4. Likelihood of confusion

 Types of confusion:
• As to the goods themselves (“Confusion of goods”)
• As to the source or origin of such goods (“Confusion of business”)
◼ Wherein the goods of the parties are different but the defendant’s
product can reasonably be assumed to originate from the plaintiff
thereby deceiving the public into believing that there is some
connection between the plaintiff and defendant, which in fact, does
not exist (Mighty Corporation vs. EJ Gallo, 434 SCRA 473, [2004]])
Trademark Infringement
Element 5:
Likelihood of confusion
 Whose perspective?
 Tests of confusion:
• Dominancy Test
• Holistic Test
Trademark Infringement
Element 5:
Likelihood of confusion
 Tests of confusion:
• Dominancy Test
◼ Prevalent features of a product
Trademark Infringement
Element 5:
Likelihood of confusion
 Tests of confusion:
• Dominancy Test
◼ Prevalent features of a product
Trademark Infringement
Element 5:
Likelihood of confusion
 Tests of confusion:
• Dominancy Test
◼ Prevalent features of a product

NS D-10 PLUS D-10 80 WP


Trademark Infringement
Element 5:
Likelihood of confusion
 Tests of confusion:
• Holistic Test
◼ Marks compared in their entirety
Emerald v. CA, G.R. 100098 (1995)

 “LEE” v. "STYLISTIC MR. LEE" both for jeans or pants


Trademark Infringement
Element 5:
Likelihood of confusion
 Other factors:
• Idem Sonans Rule – aural effects of the words and letters contained in the marks
are also considered in determining the issue of confusing similarity
◼ Examples:
◼ “Pycogenol” vs. “PCO-GENOL” (Prosource vs. Horphag)
◼ “Dermaline” vs. “Dermalin” (Dermaline Inc. vs. Myra Pharmaceuticals)
◼ “Nanny” vs. “Nan” (Societe Produits Nestle S.A. vs. Dy Jr.)
Recap: Trademark Infringement
Elements:
1. Ownership of a trademark, i.e. registration
2. That the trademark is reproduced, counterfeited, copied, or colorably imitated
by the infringer
3. No consent by the trademark owner or assignee
4. Use in connection with the sale, offering for sale, or advertising of any goods,
business or services, or those that are related thereto
5. Likelihood of Confusion
Trademark Fair 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.
Tradename Infringement
 Same protection as for trademark
 Section 165.3 in relation to Section 153 to 156, IPC
 Only (but big) difference: registration is NOT a requirement
for ownership of a tradename
 Section 165.2 (a), IPC:
“Notwithstanding any laws or regulations providing for any obligation to
register trade names, such names shall be protected, even prior to or
without registration, against any unlawful act committed by third parties.”
In Coffee Partners, Inc. vs. San Francisco Coffee & Roastery, Inc. (G.R. No.
169504, 3 March 2010), the SC squarely ruled upon the issue of
whether petitioner’s use of the trademark "SAN FRANCISCO
COFFEE" constitutes infringement of respondent’s trade name
"SAN FRANCISCO COFFEE & ROASTERY, INC.," even if the
trade name is not registered with the Intellectual Property
Office (IPO).
The Supreme Court held that a trade name need not be registered
with the IPO before an infringement suit may be filed by its owner
against the owner of an infringing trademark. All that is required is
that the trade name is previously used in trade or commerce in the
Philippines.
Tradename Infringement
 Section 165.2 (b), IPC

In particular, any subsequent use of the trade name by a third party,


whether as a trade name or a mark or collective mark, or any
such use of a similar trade name or mark, likely to mislead the
public, shall be deemed unlawful.
Tradename Infringement
Elements:
1. Ownership of a tradename; registration with IPO is not required.
2. That the tradename is reproduced, counterfeited, copied, or colorably imitated
by the infringer;
3. Use in connection with the sale, offering for sale, or advertising of any goods,
business or services, or those that are related thereto
4. No consent by the tradename owner
5. Likelihood of Confusion
Unfair Competition
 Governed by Section 168, IPC
 Premise: Protection of one’s goodwill for his/her
products/services
Unfair Competition
 Unfair competition has been defined as the passing off (or
palming off) or attempting to pass off upon the public of the
goods or business of one person as the goods or business of
another with the end and probable effect of deceiving the public.
(Superior Commercial Enterprises vs. Kunnan, G.R. 169974
[2010])

 Is“hoarding” of softdrink or beer bottles to stifle supply a form of


unfair competition under the IP Code?
Unfair Competition
 Elements:
1. Confusing similarity in the general appearance of the goods;
2. Intent to deceive the public and defraud a competitor

 “True test" of unfair competition:


 whether the acts of the defendant have the intent of deceiving or are
calculated to deceive the ordinary buyer making his purchases under
the ordinary conditions of the particular trade to which the
controversy relates
Distinctions
“The distinctions between suits for trademark infringement and
unfair competition prove useful: (a) the former is the unauthorized
use of a trademark, whereas the latter is the passing off of one's
goods as those of another; (b) fraudulent intent is unnecessary in the
former, while it is essential in the latter; and (c) in the former, prior
registration of the trademark is a pre-requisite to the action, while it
is not necessary in the latter.”||| (Co v. Spouses Yeung, G.R. No.
212705 (Resolution), [September 10, 2014])
Distinctions
Trademark infringement Tradename Unfair Competition
infringement

Legal basis 155 165 168

Registration a Yes No No
requirement?

Acts prohibited Unauthorized Unauthorized Passing off of one’s goods


use/reproduction/counter use/reproduction/ giving them the general
feiting/copying of a counterfeiting/copying of appearance of the goods
trademark or colorable a tradename of another
imitation thereof

Is fraud an element? No No Yes


False Designation of Origin
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:
(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
False Designation of Origin

(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.

Example: Ambush marketing


Causes of Action

 Trademark or Tradename Infringement


 Unfair Competition
 False Designation of Origin
Remedies and Jurisdiction

 Administrative action – IPO-BLA, concurrent with RTC-SCCs


 Civil Action, RTC-SCC concurrent with IPO-BLA
 Criminal Action, exclusive with RTC-SCC
 2-5years imprisonment
 P50,000-P200,000 in fine
Reliefs
Section 156. Actions, and Damages and Injunction for Infringement. - 156.1. The owner of
a registered mark may recover damages from any person who infringes his rights,
and the measure of the damages suffered shall be either the reasonable profit which
the complaining party would have made, had the defendant not infringed his rights,
or the profit which the defendant actually made out of the infringement, or in the
event such measure of damages cannot be readily ascertained with reasonable
certainty, then the court may award as damages 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 in the infringement of the
rights of the complaining party.
156.2. On application of the complainant, the court may impound during the
pendency of the action, sales invoices and other documents evidencing sales.
156.3. In cases 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.
156.4. The complainant, upon proper showing, may also be granted injunction.
Reliefs
Section 157. Power of Court to Order Infringing Material Destroyed. - 157.1 In any
action arising under this Act, in which a violation of any right of the owner
of the registered mark is established, the court may order that goods found
to be infringing be, without compensation of any sort, disposed of outside
the channels of commerce in such a manner as to avoid any harm caused to
the right holder, or destroyed; and all labels, signs, prints, packages, wrappers,
receptacles and advertisements in the possession of the defendant, bearing
the registered mark or trade name or any reproduction, counterfeit, copy or
colorable imitation thereof, all plates, molds, matrices and other means of
making the same, shall be delivered up and destroyed.
157.2. In regard to counterfeit goods, the simple removal of the trademark
affixed shall not be sufficient other than in exceptional cases which shall be
determined by the Regulations, to permit the release of the goods into the
channels of commerce.
Reliefs
Section 158. Damages; Requirement of Notice. - In any suit for
infringement, the owner of the registered mark shall not be entitled to
recover profits or damages unless the acts have been committed with
knowledge that such imitation is likely to cause confusion, or to cause
mistake, or to deceive. Such knowledge is presumed if the registrant
gives notice that his mark is registered by displaying with the mark the
words '"Registered Mark" or the letter R within a circle or if the
defendant had otherwise actual notice of the registration.
Reliefs
Section 159. Limitations to Actions for Infringement. - Notwithstanding any other
provision of this Act, the remedies given to the owner of a right infringed
under this Act shall be limited as follows:
159.1. Notwithstanding the provisions of Section 155 hereof, a registered
mark shall have no effect against any person who, in good faith, before the
filing date or the priority date, was using the mark for the purposes of his
business or enterprise: Provided, That his right may only be transferred or
assigned together with his enterprise or business or with that part of his
enterprise or business in which the mark is used.
159.2. Where an infringer who is engaged solely in the business of printing
the mark or other infringing materials for others is an innocent infringer, the
owner of the right infringed shall be entitled as against such infringer only to
an injunction against future printing.
Reliefs
Section 159. Limitations to Actions for Infringement. - Notwithstanding any other provision of this Act, the
remedies given to the owner of a right infringed under this Act shall be limited as follows:

159.3. Where the infringement complained of is contained in or is part of paid advertisement in a
newspaper, magazine, or other similar periodical or in an electronic communication, the remedies of the
owner of the right infringed as against the publisher or distributor of such newspaper, magazine, or other
similar periodical or electronic communication shall be limited to an injunction against the presentation of
such advertising matter in future issues of such newspapers, magazines, or other similar periodicals or in
future transmissions of such electronic communications. The limitations of this subparagraph shall apply
only to innocent infringers: Provided, That such injunctive relief shall not be available to the owner of the
right infringed with respect to an issue of a newspaper, magazine, or other similar periodical or an
electronic communication containing infringing matter where restraining the dissemination of such
infringing matter in any particular issue of such periodical or in an electronic communication would delay
the delivery of such issue or transmission of such electronic communication is customarily conducted in
accordance with the sound business practice, and not due to any method or device adopted to evade this
section or to prevent or delay the issuance of an injunction or restraining order with respect to such
infringing matter.