TRADEMARK INFRINGEMENT
- Committed by any person who shall, without the
consent of the owner of the registered mark, use in
commerce any R – C – C – CI of a registered mark or
the same container or a dominant feature thereof in
connection with the S – O – D – A of any goods or
services including other preparatory steps necessary
to carry out such sale and that is likely to cause
confusion, mistake, or deception.
- Committed also when there is reproduction,
counterfeiting or copying or COLORABLY imitating a
registered mark, or a dominant feature thereof and
apply such reproduction to labels, signs, prints, etc.
- Those who commit the said acts shall be liable in a
civil action for infringement by the registrant
- The infringement takes place at the moment of
the commission of the said acts regardless of
WON there is actual sale of goods or services using
the material.
- Close resemblance or colorable imitation is deemed
sufficient for an infringement.
IMITATION OF PRODUCT FEATURES
- a more insidious form of unfair competition where
the unauthorized user copies the features of the
product that attract consumers while employing a
distinguishable mark
FILTRATION APPROACH
- In actions for infringement or unfair competition, the
courts first filter or screen out the unregistrable
elements of trademarks before applying the tests in
determining confusing similarity of marks
- these elements of trademarks must be eliminated
because they are either non- distinctive or incapable
of exclusive appropriation
o GENERIC MARKS: free for all to use
o COLOR: will not determine WON unfair
competition has been committed by the
defendant
o ORDINARY WORDS: those used in their
dictionary sense
o DESCRIPTIVE MARKS: used by everyone to
describe the product adequately and cannot
be monopolized
o SUGGESTIVE: gives the hint as to the quality
or nature of product
- OTHER FACTORS:
o WORD-ANALYSIS and SOUND-ALIKES
o Nature of goods and channels of trade
o Purchaser’s attitude: intentionally clothed
with an appearance to deceive the ordinary
purchasing exercising ordinary care, and not
whether a certain limited class of
purchasers with special knowledge could
avoid mistake
o Even if belonging to diff. classes, if the
simultaneous use on them of identical or
closely similar trademarks, would be likely
to cause confusion as to origin, personal
source, of the second users goods.
UNFAIR COMPETITION
- passing off or attempting to pass off upon the public
the goods or business in such a manner that there is
either an express or implied representation to that
effect
- REMEDIES:
o A person who has identified in the mind of
the public the goods he manufactures or
deals in, his business or services from those
of others, whether or not a registered mark
is employed, has a property right in the
goodwill of the said goods, business or
services so identified, which will be
protected in the same manner as other
property rights.
o Any person who shall employ deception or
any other means contrary to good faith by
which he shall pass off the goods
manufactured by him or in which he deals,
or his business, or services for those of the
one having established such goodwill, or
who shall commit any acts calculated to
produce said result, shall be guilty of unfair
competition, and shall be subject to an
action therefor.
- ACTS:
o Any person, who is selling his goods and
gives them the general appearance of
goods of another manufacturer or
dealer, either as to the goods themselves
or in the wrapping of the packages in which
they are contained, or the devices or words
thereon, or in any other feature of their
appearance, which would be likely to
influence purchasers to believe that
the goods offered are those of a
manufacturer or dealer, other than the
actual manufacturer or dealer, or who
otherwise clothes the goods with such
appearance as shall deceive the public and
defraud another of his legitimate trade, or
any subsequent vendor of such goods or
any agent of any vendor engaged in selling
such goods with a like purpose
o Any person who by any artifice, or device, or
who employs any other means calculated
to induce the false belief that such
person is offering the services of
another who has identified such
services in the mind of the public;
o Any person who shall make any false
statement in the course of trade or who
shall commit any other act contrary to good
faith of a nature calculated to discredit
the goods, business or services of
another.
- A plaintiff in an unfair competition action must show
that his goods have acquired goodwill and
reputation among consumers. Goodwill is easily
damaged, and is easily vulnerable to assault, through
the brand that symbolizes it
- In order to prove a case of unfair competition, it is
sufficient to show that such deception will be the
natural and probable result of defendants acts.
- The true test of unfair completion is whether
certain goods have been intentionally clothed with an
appearance which is likely to deceive the ordinary
purchaser exercising ordinary care, and not whether
a certain limited class of purchasers with special
knowledge not possessed by the ordinary purchaser
could avoid mistake Blythe exercise of this special
knowledge
- The doctrine is invoked when there is an actual
market competition between the analogous
products of plaintiff and defendant and so it has
been natural enough to speak of it as the doctrine of
unfair competition
FALSE DESTINATION OF ORIGIN
- Committed by a person who 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:
o 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
o 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.
- Any goods marked or labelled in contravention
of the provisions of this Section shall not be
imported into the Philippines or admitted entry
at any customhouse of the Philippines. The
owner, importer, or consignee of goods refused entry
at any customhouse under this section may have any
recourse under the customs revenue laws or may
have the remedy given by this Act in cases involving
goods refused entry or seized.
SEARCH WARRANT IN CRIMINAL CASES
- Under the TRIPS Agreement, Members shall
provide for criminal procedures and penalties
to be applied at least in cases of willful
 trademark counterfeiting or copyright piracy on a
commercial scale.
- Remedies available shall include imprisonment
and/or monetary fines sufficient to provide a
deterrent, consistently with the level of penalties
applied for crimes of a corresponding gravity.
- Under the TRIPS Agreement, in order to create an
effective deterrent to infringement, the judicial
authorities shall have the authority to order that
goods that they have 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, unless this would be contrary to existing
constitutional requirements, destroyed.

SEARCH AND SEIZURE ORDER

- The Supreme Court’s issuance of a new circular
authorizing search and seizure of infringing products
in pending and intended civil cases may provide a
preferred provisional remedy.
- This is better than a writ of preliminary injunction,
which allows the defendant to retain possession of
the infringing products and only prohibits their
further distribution.
- the court may require the allegedly aggrieved
intellectual property rights holder to post a
bond, conditioned upon the payment of
damages which the defendant suffers as a result of
the issuance of the preliminary injunction should it
be eventually declared that the intellectual property
rights holder is not entitled to it.

COMPLAINT
- It is enough that foreign corporation are allowed
by law to seek redress in our courts under
certain conditions; the interpretation of the law
should not go so far as to include, in effect, an
inference that those conditions had been met from
the mere fact that the party suing is a foreign
corporation.
- Just prove elements of infringement or unfair
competition.

JURISDICTION
- RTC OR MTC DEPENDING ON THE AMOUNT

Ex parte TRO is to prevent immediate and irreparable harm to

the movant during the period required to prepare for and
conduct a hearing to determine whether a preliminary
injunction should issue.
- The exclusive right to a trademark or a trade name
should be protected by injunction.
- Ex parte injunctive relief is of paramount importance
since counterfeiters often employ evasive tactics to
frustrate enforcement efforts against them.
- They are in a position to remove quickly their
counterfeit goods or otherwise destroy the evidence
of their infringing activities before judicial
adjudication of infringement can be made and
appropriate relief ordered.
- In addition to establishing that he has a valid,
enforceable and exclusive right to use the
trademark, the proprietor must also show that the
defendant’s products infringe on his rights.