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Art. 188.

Subsisting and altering trademark, tradenames, or


service marks. The penalty of prision correccional in its
minimum period or a fine ranging from 50 to 2,000 pesos, or
both, shall be imposed upon:
1. Any person who shall substitute the trade name or
trade-mark of some other manufacturer or dealer or a
colorable imitation thereof, for the trademark of the
real manufacturer or dealer upon any article of
commerce and shall sell the same;
2. Any person who shall sell such articles of commerce
or offer the same for sale, knowing that the tradename or trade- mark has been fraudulently used in
such goods as described in the preceding subdivision;
3. Any person who, in the sale or advertising of his
services, shall use or substitute the service mark of
some other person, or a colorable imitation of such
mark; or
4. Any person who, knowing the purpose for which the
trade-name, trade-mark, or service mark of a person is
to be used, prints, lithographs, or in any way
reproduces such trade-name, trade-mark, or service
mark, or a colorable imitation thereof, for another
person, to enable that other person to fraudulently use
such trade-name, trade-mark, or service mark on his
own goods or in connection with the sale or advertising
of his services.
A trade-name or trade-mark as herein used is a word or
words, name, title, symbol, emblem, sign or device, or any
combination thereof used as an advertisement, sign, label,
poster, or otherwise, for the purpose of enabling the public
to distinguish the business of the person who owns and uses
said trade-name or trade-mark.
A service mark as herein used is a mark used in the sale or
advertising of services to identify the services of one person
and distinguish them from the services of others and
includes without limitation the marks, names, symbols,
titles, designations, slogans, character names, and
distinctive features of radio or other advertising.
Acts Punishable under Article 188: (SOUP)
1. By (1) substituting the tradename or trademark of some other
manufacturer or dealer, or a colorable imitation thereof, for
the trade name or trademark of the real manufacturer or
dealer upon any article of commerce, and (2) selling the same

2. By selling or by offering for sale such articles of commerce,


knowing that the tradename or trademark has been
fraudulently used
3. By using or substituting the service mark of some other
person, or a colorable imitation of such mark, in the sale or
advertising of his services
4. By printing, lithographing or reproducing tradename,
trademark or ser vice mark of one person, or a colorable
imitation thereof, to enable another person to fraudulently use
the same, knowing that the fraudulent purpose for which it is
to be used.
Art. 189. Unfair competition, fraudulent registration of
trade-mark, trade-name or service mark, fraudulent
designation of origin, and false description. The penalty
provided in the next proceeding article shall be imposed
upon:
1. Any person who, in unfair competition and for the
purposes of deceiving or defrauding another of his
legitimate trade or the public in general, shall sell his
goods giving 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 device or words
thereon or in any other features of their appearance
which would be likely to induce the public to believe
that the goods offered are those of a manufacturer or
dealer other than the actual manufacturer or dealer or
shall give other persons a chance or opportunity to do
the same with a like purpose
2. Any person who shall affix, apply, annex or use in
connection with any goods or services or any container
or containers for goods a false designation of origin or
any false description or representation and shall sell
such goods or services.
3. Any person who by means of false or fraudulent
representation or declarations orally or in writing or by
other fraudulent means shall procure from the patent
office or from any other office which may hereafter be
established by law for the purposes the registration of
a trade-name, trade-mark or service mark or of himself
as the owner of such trade-name, trade-mark or
service mark or an entry respecting a trade-name,
trade-mark or service mark
Acts Punishable under Article 189: (SAP)
1. By selling his good, giving them the general appearance of
the good aof another manufacturer or dealer. (Unfair
competition)

2. By (a) affixing to his good or using in connection with his


services a false designation of origin, or any false description
or representation, and (b) selling such goods or services.
(Fraudulent designation of origin; False description)
3. By procuring fraudulently from the patent office the
registration of tradename, trademark or service mark.
(Fraudulent registration)
R.A. 8293 Intellectual Property Code of the Philippines (IP Code)
Infringement committed by any person who shall, without
the consent of the owner of the registered mark:
o Use in commerce any counterfeit/reproduction of a
registered mark likely to cause confusion, or to cause
mistake, or to deceive. (Sec 155.1)
o Reproduce/counterfeit a registered mark likely to cause
confusion, or to cause mistake, or to deceive. (Sec
155.2)
Mark any visible sign capable of distinguishing the goods
(trademark) or services (service mark) of an enterprise and
shall include a stamped or marked container) (Sec. 121.1)
Tradename - the name or designation identifying or
distinguishing an enterprise (Sec 121.3)
Trademark vs Tradename Tradename is used in trade to
designate a particular business of certain individuals
considered as an entity, whereas, trademark is used to
indicate the origin or ownership of the good to which it is
affixed (US v Kyburz)
Objects of a trademark to point out distinctly the origin or
ownership of he article to which it is affixed (Etepha v Director
of Patents)
Elements of Trademark Infringement (VOU)
1. The validity of the plaintiffs mark
Must NOT be descriptive or generic
o Generic terms those common descriptive name of
an article or substance. Regarded as common
property:
Bubble gum (Am. Sweets Inc. v ORacca
Confectionery Co.)
Leather shoes (Masso Hermanos SA v
Director of Patents)
Wellington (Hend and Dee v Wellington Dept
Store)
o The exclusive right to an originally valid trademark or
tradename is lost, if for any reason it loses its
distinctiveness or has become publici juris
2. The plaintiffs ownership of the mark
Must be registered

3. The use of the mark or its colorable imitation by the alleged


infringer results in likelihood of confusion
A trademark used by offended need NOT be identical. A
colorable imitation is sufficient.
Test to determine infringement:
o Dominancy Test focuses on the similarity of the
prevalent features of the competing trademarks
which might cause confusion or deception, thus
infringement
More favored test by the SC
o Holistic test requires the entirety of the marks in
question be considered in resolving confusing
similariy. Comparison of words is NOT the only
determining factor
Differences must NOT be glaring/striking to constitute
infringement
o Although ALACTA and ALASKA have similarities in
spelling, appearance and sound, they have different
labels that are glaring and striking to the eye
therefore there is NO infringement (Mead Johnson Co
v Van Dorp)
Types of Confusion Arising from the use of similar or
colorable imitation marks
1. Confusion of goods (product confusion)
Products are competing
2. Confusion of business (source or origin confusion)
Products are NOT competing but related enough to
cause confusion or affiliation
Product classification is NOT a decisive factor in
the determination of whether the goods are
related.
E. Spinner & Co. v Hesslein Corporation
A corporation used the word Wigan to indicate the particular
quality pf its khai. Defendant, using a different trademark, stamped
the same word on the bolds of khaki of inferior grade sold by it.
Infringement of corporations registered trademark
Unfair Competition
Consists in employing deception or any other means contrary
to good faith by which he shall pass of 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.
Elements of Unfair Competition (CI)
1. Confusing similarity in the general appearance of goods

2. Intent to deceive the public or defraud ta competitor


Test of Unfair Competition
Whether goods have been clothed with an appearance which
is likely to deceive the ordinary purchases exercising ordinary
care
Trademark
Limited range
Offended party has identified a
peculiar symbol or mark with his
goods and thereby has acquired
a property right in such symbol
or mark
Offender uses the trademark or
tradename and sells his goods
on which the trademark is
affixed
Unauthorized use of trademark
Fraudulent intent is unnecessary
The prior registration of the
trademark is a prerequisite

Unfair Competition
Broader and more inclusive
Offended party has identified in
the mind of the public the goods
he manufactures or deals in from
those of others, whether or not a
mark or trade name is employed,
and has a property right in the
goodwill of said goods
Offender gives his goods the
general appearance of the goods
of another manufacturer or
dealer and sells the same
Passing off ones goods as those
of another
Fraudulent intent is essential
Registration is not necessary