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WHAT IS A TRADEMARK? WHY IS IT IMPORTANT?

Generic marks are names of products they seek to identify. For instance, KAP KEYK for cupcakes, CAFFE for coffee and
MAKINAH for machines.

A trademark is a tool used that differentiates goods and services from each other. It is a very important marketing tool that
makes the public identify goods and services. A trademark can be one word, a group of words, sign, symbol, logo, or a
combination of any of these. Generally, a trademark refers to both trademark and service mark, although a service mark is
used to identify those marks used for services only.

Marks and indications that have become common in everyday language or usage can not be registered. They no longer
distinguish the goods and services because they are used so often to refer to the goods and services. Example of this is
VCO for virgin coconut oil, DIAMOND PEEL for services involving cosmetic procedure.

Trademark is a very effective tool that makes the public remember the quality of goods and services. Once a trademark
becomes known, the public will keep on patronizing the products and services.

Contrary to Public Order or Morality

Utilized properly, a trademark can become the most valuable business asset of an enterprise. In addition to making goods
and services distinctive, the owner of a mark may earn revenues from the use of the mark by licensing its use by another or
though franchising agreements.

Marks that are against the common standard of morality. An example is PRO-TERRORISM for clothing.
CONSISTS OF NAMES, PORTRAITS OF PERSONS, MAPS, FLAGS AND OTHER POLITICAL SYMBOLS

HOW CAN YOU PROTECT YOUR MARK?

Marks that contain names or portraits of living individuals may be rejected unless the individual gives written consent. For
instance, no one can use the picture of Manny Pacquiao as a trademark unless he is Mr. Pacquiao himself or he was duly
authorized by Mr. Pacquiao.

In the Philippines, a trademark can be protected through registration. Registration gives the trademark owner the exclusive
right to use the mark and to prevent others from using the same or similar marks on identical or related goods and services.

SHAPE AND COLOR


Shapes must be distinctive from the usual shape of goods or containers of the goods, in order to be considered a trademark.
One classic example is the COKE BOTTLE.

The right to a trademark is granted to the one who first files a trademark application with the IP Philippines. Before applying
for trademark registration, it would help if you conduct a search in the trademarks database to determine if there are
identical or similar marks that would prevent the registration of your mark. This is to prevent future conflicts with marks that
are already registered or with earlier filing dates.

Color alone is not accepted unless it is defined by a given form.


MARKS THAT MAY CAUSE CONFUSION

The trademark protection granted by IP Philippines protects your mark only in the Philippines. If you want your mark
protected outside the country, you will need to file applications in the countries where you want your mark registered.
What may be registered?

Your mark cannot be registered if it is identical with or similar to a registered mark or a mark with earlier filing date for goods
and services that are exactly the same or for goods and services that are related. Consumers should not confuse your mark
with the marks of others.

Your mark should be able to distinguish your goods or services from those of others. Your mark should also meet the
requirements for registrability of marks under Sec. 123.1 of the Intellectual Property Code.

Identical with, or confusingly similar to WELL-KNOWN MARKS

Your mark will not be registered if it is:

Marks that are identical with or similar to marks that are known internationally and in the Philippines will be refused
registration.

DESCRIPTIVE

What are the requirements to apply for registration?

These are marks that describe the characteristics of the goods or services. Examples are DURABLE for shoes (describes
the quality), A LITER for cooking oil (quantity), and so is KITCHEN for cooking utensils (intended purpose).

1. A duly filled out trademark application form [there should be a link here]
2. Drawing of the mark
3. Payment of fees

MISLEADING

Sec 121. Definitions. As used in part III, the following terms have the following meanings:
121.1. 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 of goods;
121.2. COLLECTIVE MARK any visible sign designated as such in the application for registration and capable of
distinguishing the origin or any other common characteristics, 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;
121.3. TRADE NAME the name or designation identifying or distinguishing an enterprise;
121.4. BUREAU the Bureau of Trademarks;

Marks that are likely to deceive or have the tendency to misinform the consumers about the actual characteristics of the
goods or services like BOLPENS for pencils, COLA for alcoholic beverages, BULAKAN for sweets not originating from
or produced in Bulacan.
GENERIC and customary to trade

121.5. DIRECTOR the Director of Trademarks;


121.6. REGULATIONS the rules of practice in Trademarks and service marks formulated by the Director of trademarks and
approved by the director general; and
121.7. EXAMINER the trademark examiner.

mark has become distinctive, as used in connection with the applicants 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.

Sec 122. HOW TRADEMARKS ARE ACQUIRED the rights in a trademark shall be acquired through registration made
validly in accordance with the provisions of this law.

Sec 123.3. The nature of the goods to which the mark is applied will not constitute an obstacle to registration.
CASES:
QUALITEX v JACOBSON, 514 US 159

Sec 123. REGISTRABILITY


Sec 123.1. A mark cannot be registered if it:

Consists of immoral, deceptive or scandalous matter, or matter which may disparage (mock) or falsely suggest a
connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or
disrepute;

Consists of the flag or coat of arms or other insignia of the Philippines or any of its political subdivisions, or of any
foreign nation, or any simulation thereof;

Consists of a name, portrait or signature identifying a particular living individual except by his written consent, or
the name, signature, or portrait of a deceased President of the Philippines, during the life of his widow, if any,
except with written consent of the widow;

Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date,
in respect of:
1. The same goods and services, or
2. Closely related goods or services, or
3. If it nearly resembles such a mark as to be likely to deceive or cause confusion;

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;

Is identical with, or confusingly similar to, or constitutes a transition 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 interest of the owner of the registered mark are likely to be
managed by such use;

Is likely to mislead the public, particularly as to the nature, quality, characteristics or geographical origin of the
goods or services;

Consists exclusively of signs that are generic for the goods or services that they seek to identify;

Consists exclusively of signs or of indications that have become customary or usual to designate the goods or
services in everyday language or in bonafide and established trade practice;

Consists exclusively of signs or of indications that may serve in trade to designate the kind, quality, quantity,
intended purpose, value, geographical origin, time or production of the goods or rendering of the services, or
other characteristics of the goods or services;

Consists of shapes that may be necessitated by technical factors or by the nature of the goods themselves or
factors that affect their intrinsic value;

Consists of color alone, unless defined by a given form; or

Is contrary to public order or morality.


Sec 123.2. As regards signs and devices or devices mentioned in pp (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

SAMBAR v LEVIs STRAUSS, G.R. No. 132604, March 6, 2002


FACTS:
1. Venancio Sambar (doing business under the name and style of CVS garment enterprises CVSGE), petitioner,
files a petition for review for certiorari for the reversal of CA decision affirming the RTCs decision ordering him to
pay Lebis Strauss, private respondent damages.
2. Sometimes in September 1987, private respondent demanded the petitioner to desist from using their stitched
arcuate design on the europress jeans which petitioner advertised in the Manila Bulletin. However, petitioner
argued that such design was different from the design used by the private respondent. It also asserted that they
have copyright on such design. Thus, private respondent filed a complaint against the petitioner.
3. Private respondent alleged that being intertionationally known clothing manufacturer, owns the subject design
trademark and registered under US trademark and in the Principal Register of trademark with the Philippine
Patent Office. Also, it granted LSPI a non-exclusive license to use the arcuate trademark in its manufacture and
sale of Levis pants, jacket and shirts in the Philippines and appointed LSPI as its agent and attorney-in-fact to
protect its trademark in the Philippines and petitioner without the consent and authority of private respondents
and in infringement and unfair competition, sold and advertised, and despite demands to cease and desist,
continued to manufacture, sell and advertise denim pants under the brand name Europress with back pockets
bearing a design similar to the accurate trademark of private respondents, thereby causing confusion on the
buying public, prejudicial to private respondents goodwill and property right. It further claimed that the
backpocket design of Europress jeans, a double arc interesting in the in the middle was the same as Levis
mark, also a double arc interesting at the center. Althouugh the trial court found differences in the two
designs, these differences were not noticeable. Further, private respondents said, infringement of
trademark did not require exact similarity. Colorable imitation enough to cause confusion among the
public, was sufficient for a trademark to be infringed.
4. Petitioner, on the other hand, denied that there was infringement or unfair competition because the display
rooms of department stores where Levis and Europress jeans were sold, were distinctively segregated by
billboards and other modes of advertisements. It further avers that the public would not be confused on the
ownership of such known trademark and claimed that it had its own original arcuate design, as evidenced by
copyright registration which was different and distinct from levis design. Thus, prayed for actual, moral and
exemplary damages by way of counterclaim. ( In short, there is no infringement of the arcuate design because
there was no colourable imitation which deceived or confused the public). It further disagreed with the CA that
ther were confusing similarities between Levis and Europress arcaute designs, despite the trial courts
observation of differences in them. It further maintained that although the backpocket designs had
similarities, the public was not confused because Levis jeans had other marks not found in Europress
jeans. Further, Levis long history and popularity made its trademark easily identifiable by the public.
4. Petitioner denied that he was connected with CVSGIC and admitted that copyright was issued to him but he
denied using it. He also did authorize anyone to use the copyrighted design. He further counterclaimed for moral
and exemplary damages and payment of attorneys fees.
5. After hearing, the trial court issued a writ of preliminary injunction enjoining CVSGIC and petitioner from
manufacturing, advertising and selling pants with the arcuate design on their back pockets. CVSGIC and petitioner
did not appear during hearings, when they were to present evidence. Consequently, the trial court ruled that they
waived their right to present evidence. Consequently, the trial court ruled that they waived their right to present
evidence.

6. Private respondent moved for a reconsideration praying for the cancellation of petitioners copyright. The trial
court granted reconsideration. Thus, petitioner appealed to the CA which decided in favour of private
respondents. Hence, this petition.
ISSUE:

1. The trademark being infringed is registered in the IPO; however, in infringement of trade name, the same need
not be registered;
2. The trademark or trade name is reproduced, counterfeited, copied, or colorably imitated by the infringer;
3. 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 infringing mark or trade 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 or trade name is likely to cause confusion or mistake or to deceive
purchaser 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. It is without the consent of the trademark or trade name owner or the assignee thereof.
- clearly, a trade name need not be registered with 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.
- Sec 165.2 (a) 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.
- (b) in particular, any subsequent use of a 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.
- in determining similarity and likelihood of confusion, our jurisprudence has developed two tests:
1. DOMINANCY TEST 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
occurs. Exact duplication or imitation is not required. The question is whether the use of the marks involved is
likely to cause confusion or mistaken in the mind of the public or to deceive consumers.
2. HOLISTIC TEST 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 marks in order that the observer may
draw his conclusion whether one is confusingly similar to the other.
- In applying above test, there is a clear infringement because the descriptive word SAN FRANCISCO COFFEE
arte precisely the dominant features of respondents trade name. they are both engaged in the same business of
selling coffee, whether wholesale or retail. The likelihood of confusion is higher in cases where the business of one
corporation is the same or substantially the same as that of another corporation.
WHEREFORE, the petition for review is denied.

Whether petitioner infringe on private respondents arcuate design.

RULING:
Yes.
The basic rule is that factual questions are beyond the province of the court in a petition for review. Although
there are exceptions to this rule, this case is not one of them. Hence, there is no reason to disturb the findings of
the CA that Europress use of the arcuate design was an infringement of the Levis design.
WHEREFORE, petition is denied.
PARK N FLY v DOLLAR PARK & FLY, 469 US 189
COFFEE PARTNERS v SAN FRANCISCO COFFEE, G.R. No. 169504, March 3, 2010
FACTS:
1. Coffee Partners, Inc., petitioner, is a local corporation engaged in the business of establishing and maintaining
coffee shops in the country. It is registered with SEC and had a franshise agreement with Coffee Partners Ltd.
(CPL), a business entity organized and existing under the laws of British Virgin Islands, for a non-exclsuive right to
operate coffee shops in the Philippines using trademarks designed by CPL such as San Francisco Coffee.
2. San Francisco Coffee & Roastery, Inc., respondent, a local corp. engaged in the wholesale and retail sale of
coffee. It is registered in the SEC with business name SFCRI. Further, it formed a joint venture company with
Boyd Coffee USA under the company name Boyd Coffee Company Philippines, INc. (BCCPI) which is engaged in
the processing, roasting, and wholesale selling of coffee.
3. Eventually, respondent discovered that petitioner was about to open a coffee shop under the name SAN
FRANCISCO COFFEE in Libis, QC. With the belief that it will cause confusion in the minds of the public as it bore
a similar name and it also engaged in the business of selling coffee. It demanded petitioner to stop such name.
Respondent filed a complaint before the intellectual Property Office for infringement and/or unfair competition
with claims for damages.
4. Petitioner denied the allegations and claimed that it filed a registration of the mark with IPO and further
maintained that its mark could not confused with respondents trade name because of the notable distinction in
their appearances. Furthermore, it argued that respondent stop operating under such trade name when it formed
a joint venture with Boyd Coffee USA.
5. Burea of Legal Affairs IPO held in favor of respondent and ruled that the right to the exclusive use of a trade
name with freedom from infringement by similarity is determined from priority of adoption. Since respondent
registered its business name with DTI in 1995 and petitioner registered its trademark with the IPO in 2001 in the
Philippines and in 1997 in other countries, then respondent must be protected from infringement of its name.
6. Parties appealed to the Office of the Director-IPO (ODG-IPO). The latter reversed Buruea;s decision on the
ground that respondent stopped using its trade name after it entered into a joint venture with Boyd Coffee USA in
1998 while petitioner continuously used the trademark since 2001 when it opened its first coffee shop in Libis, QC.
It further ruled that between subsequent user of a trade name in good faith and a prior user who had stopped
using such trade name, it would be inequitable to rule in favour of the latter. However, CA reinstated Bureaus
decision finding there is infringements. Hence, This petition.

Sec 124. REQUIREMENTS FOR APPLICATION


Sec 124.1. The application for registration of mark shall be in Filipino or in English and shall contain the following:
1. A request for registration;
2. The name and address of the applicant;
3. The name of a state of which the applicant is a national or where he has domicile; and the name of the state of where the
applicant has a real and effective industrial or commercial establishment, if any;
4. where the applicant is a juridical entity, the law under which it is organized and existing;
5. The appointment of an agent or representative, if the applicant is not domiciled in the Philippines;
6. Where the applicant claims the priority of an earlier application, an indication of:
i. the name of the state with those national office the earlier application was filed or it filed with an office other than a
national office, the name of that office,
ii. The date on which the earlier application was filed, and
iii. Where available, the application number of the earlier application;

ISSUE:
RULING:

Whether there is infringement respondents trade name SAN FRANCISCO COFFEE & ROASTERY, INC.
Yes.
The court laid down what constitutes infringement of an unregistered trade name, thus:

Sec 127.1 REQUIREMENTS. The filing date of an application shall be the date on which the office received the following
indications and elements in English or Filipino:
a. An express or implicit indication that the registration of a mark is sought;
b. The identity of the applicant;
c. Indications sufficient to contact the applicant or his representative, if any;
d. A reproduction of the mark whose registration is sought; and
e. The list of the goods or services for which the registration is sought.

7. Where the applicant claims color as a distinctive feature of the mark, a statement to that effect as well as the name or
names of the color or colors claimed and an indication, in respect of each color, of the principal parts of the mark which
are in that color;
8. Where the mark is a three-dimensional mark, a statement to that effect;
9. One or more reproductions of the mark, as prescribed in the regulations;
10. A transliteration or translation of the mark or of some parts of the mark, as prescribed in the regulations;
11. 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
12. A signature by, or other self-identification of, the applicant or his representative.

Sec 127.2. No filing date shall be accorded until the required fee is sought.
Sec 128. SINGLE REGISTRATION FOR GOODS AND/OR SERVICES. Where goods and/or services belonging to several
classes of the Nice classification have been included in one (1) application, such an application shall result in one
registration.

Sec 124.2. The applicant or the registrant shall file a declaration of actual use of the mark with evidence to that effect, as
prescribed by the regulations within three (3) years from the filing date of the application. Otherwise, the application shall be
refused or the mark shall be removed from the Register by the Director.

Sec 129. DIVISION OF APPLICATION.

Sec 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.

Sec 130. SIGNATURE AND OTHER MEANS OF SELF-IDENTIFICATION

Sec 124.4. If during the examination of the application, the office finds factual basis to reasonably doubt the veracity of any
indication or element in the application, it may require the applicant to submit sufficient evidence to remove the doubt.

Sec 131. PRIORITY RIGHT


Sec 131.1. An application for registration of a mark filed in the Philippines by a person referred to in section 3, and who
previously duly filed an application for registration of the same mark in one of those countries, shall be considered as filed as
of the day the application was first filed in the foreign country.
Sec 131.2. No registration of a mark in the Philippines by a reason described in this section shall be granted until such mark
has been registered in the country of origin of the applicant.
Sec 131.3 Nothing in this section shall entitle the owner of a registration granted under this section to sue for acts committed
prior to the date on which his mark was registered in this country:

CASE
ZATARINS INC. v OAK GROVE SMOKEHOUSE, 398 F.2d 786
Sec 126. DISCLAIMERS The office may allow or require the applicant to disclaim an unregistrable component of an
otherwise registrable mark but such disclaimer shall not prejudice or affect the applicants or owners rights then existing or
thereafter arising in the disclaimed matter, nor such shall disclaimer prejudice or affect the applicants or owners right on
another application of later date if the disclaimed matter became distinctive of the applicants or owners goods, business or
services.

Sec 131.4. In like manner and subject to the same conditions and requirements, the right provided in this section may be
based upon a subsequent regularly filed application in the same foreign country: provided, that any foreign application filed
prior to such subsequent application has been withdrawn, abandoned, or otherwise disposed of, without having been laid
open to public inspection and without leaving any rights outstanding, and has not served, nor thereafter shall serve, as a
basis for claiming a right of priority.

Sec 127. FILING DATE.