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SOUTH WESTERN UNIVERSITY

COLLEGE OF LAW
TRADEMARK INFRINGEMENT & REMEDIES

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Rights conferred to an owner of a registered mark

Sec. 147 of R.A. 8293:

a. exclusive right to prevent all third parties not having the owners 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.

b. exclusive right of the owner of a well known mark 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 the interests of the owner of the registered mark are likely to
be damaged by such use.

What is infringement of a Trademark?

NB: It is the likelihood of confusion which is the touchstone of any


trademark infringement case.

There is TM infringement if any person who without consent of the owner of


the registered mark: (Sec. 155, R.A. 8293)

1. Uses in commerce any reproduction, counterfeit, copy, or colorable


imitation of a registered mark or the same container or a dominant feature
thereof in connection with the
sale, offering for sale, distribution, advertising of any goods or services
including other preparatory steps necessary to carry out the sale of any
goods or services on or in connection with which such use is likely to cause
confusion, or to cause mistake, or to deceive; or

2. Reproduce, counterfeit, copy or colorably imitate a registered mark or a


dominant feature thereof and apply such reproduction, counterfeit, copy or
colorable imitation to labels, signs, prints, packages, wrappers, receptacles
or advertisements intended to be used in commerce upon or in connection
with the sale, offering for sale, distribution, or advertising of goods or
services on or in connection with which such use is likely to cause confusion,
or to cause mistake, or to deceive.

CASE STUDY: McDonald's Corp vs. L.C. Big Mak:

To establish trademark infringement, the following elements must be


shown:
(1) the validity of plaintiffs mark;
(2) the plaintiffs ownership of the mark; and

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(3) the use of the mark or its colorable imitation by the alleged infringer
results in likelihood of confusion. Of these, it is the element of likelihood
of confusion that is the gravamen of trademark infringement.

REMEDIES FOR VIOLATION OF TRADEMARK RIGHTS:

I. ADMINISTRATIVE REMEDIES

A. Opposition to Registration of TM -Sec. 134

Elements:

a. filed by oppositor any person who believes he would be damaged by


the registration of a mark.
b. opposition must be in writing and verified
c. filed after first publication of a trademark sought to be registered in
accordance with Sec. 133
d. must be filed within 30 days of first publication

B. Cancellation of Trademark Certificate -

Note: A certificate of registration is valid for 10 years (Sec. 145)

Requisites of trademark cancellation (Sec. 151)

a. Petition of Cancellation filed by any person who believes he is or will be


damaged by the registration of the mark
b. filed via written petition within five (5) years from the date of registration
of the mark
c. filed with the Bureau of Legal Affairs
c. grounds for seeking cancellation: Sec. 151 (b)
c.1 mark becomes the generic name for the goods or services
c.2 abandonment
c.3 registration was obtained fraudulently
c.4 misrepresentation
c.5 non use of trademark

Other grounds for cancellation of trademark:


1.) failure to cause it to be used in the Philippines by virtue of a license
during an uninterrupted period of three (3) years or longer (Sec. 151 c)
22.) failure to file a Declaration of Actual Use (DAU) within 1 year from
fifth anniversary of the date of registration of mark (ec. 145)

C. Rules and Regulations for filing administrative complaints

1. 2001 Rules and Regulations on Administrative Complaints for


Violation of Law Involving Intellectual Property Rights.

Jurisdiction: Bureau of Legal Affairs with the IPO

Admin procedure:

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1) Must be verified by complainant
2) Must be filed within four (4) years from the date of the commission
of the violation ,or if date of violation is unknown must be filed within
four (4) years from the date of discovery of the violation
3) Total damages claimed are not less than PHP 200,000.
4) Respondent will receive Summons and Answer the Complaint within
ten (10) days from receipt thereof.
5) Motion to dismiss not allowed.
6.) Case decided by Bureau within thirty (30) days from submission of
the final pleading such as memorandum.

2. Administrative penalties imposable (Rule 12)

(a) Issuance of a cease and desist order which shall specify the acts
that the respondent shall cease and desist from and shall require him
to submit a compliance report within a reasonable time which shall be
fixed in the Order;
(b) The acceptance of a voluntary assurance of compliance or
discontinuance as may be imposed. Such voluntary assurance
may include one or more of the following:
(i) An assurance to comply with the provisions of the
Intellectual Property Law violated;
(ii) An assurance to refrain from engaging in unlawful and unfair
acts and practices subject of the formal investigations;
(iii) An assurance to recall, replace, repair or refund the money
value of defective goods distributed in commerce;
(iv) An assurance to reimburse the complainant the expenses
and costs incurred in prosecuting the case in the Bureau;
The Director may also require the respondent to submit
periodic compliance reports and file a bond to guarantee compliance of
his undertaking.
(c) The condemnation or seizure of products which are subject
of the offense. The goods seized hereunder shall be disposed of in
such manner as may be deemed appropriate by the Director, such as
by sale, donation to distressed local government units or to charitable
or relief institutions, exportation recycling into other goods, or any
combination thereof, under such guidelines as he may provide;
(d) The forfeiture of paraphernalia and all real and personal
properties which have been used in the commission of the offense;
(e) The imposition of administrative fines in such amount as
deemed reasonable by the Director, which shall in no case be less
than Five Thousand Pesos (P5,000.00) nor more than One
Hundred Fifty Thousand Pesos (P150,000.00). In addition, an
additional fine of not more than One Thousand Pesos
(P1,000.00) shall be imposed for each day of continuing
violation;
(f) The cancellation of any permit, license, authority, or
registration which may have been granted by the Office, or the
suspension of the validity thereof for such period of time as the
Director may deem reasonable which shall not exceed one (1) year;
(g) The withholding of any permit, license, authority or
registration which is being secured by the respondent from the
Office;
(h) The assessment and award of damages;
(i) Censure;

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(j) Other analogous penalties or sanctions such as those provided
under Section 216 of Republic Act No. 8293.

3. Where to appeal Decisions of Bureau of Legal Affairs in IPR


Cases?
- Appeal to the Director General of the IPO within fifteen (15) days of receipt
of the Order or a copy thereof. (Rule 14, Sec. 1)

4. Administrative case before the Department of Trade and


Industry pursuant to Department Administrative Order 01, Series of
2000, implementing E.O. 913 and Ministry Order No. 69.

DTI admin case for TM violation:

a.) Irrespective of amount of damages


b.) Filing of administrative complaint in one venue precludes the filing of the
same with other venues.

5.) AMENDMENT TO THE RULES AND REGULATIONS ON INTER PARTES


PROCEEDINGS (OFFICE ORDER NO. 99 SERIES OF 2011)

Rule 2, Sec 1 of OFFICE ORDER No, 99, Series of 2011:

"Section 1. What are the Inter Partes Cases.- The following are the Inter
Partes cases:

(a) Oppositions to applications for the registration of trademark or service


mark;
(b) Petitions to cancel the registrations of trademarks or service marks;
(c) Petitions to cancel invention patents, utility model registrations, industrial
design
registrations, or any claim or parts of a claim, and registrations of
topography or
layout design of integrated circuits based on Rule 402, paragraphs (a) and
(b) of the
Layout Design (Topography) of Integrated Circuits Regulations (Office Order
No. 19,
s. 2002), and
(d) Petitions for Compulsory Licensing."

II. Civil Remedies for Trademark Infringement

JURISDICTION: RTC (Samson vs Daway, G.R. Nos. 160054-55. July 21,


2004)

WHERE TO APPEAL : DECISIONS OF THE RTC COURT are appealable


to the Court of Appeals through a petition for review under Rule 43
of the Rules of Court.

1. CIVIL REMEDIES for trademark infringement under R.A. 8293

a.RECOVERY OF DAMAGES - Section 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

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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.
b.IMPOUNDING SALES INVOICES AND DOCUMENTS - 156.2. On
application of the complainant, the court may impound during the
pendency of the action, sales invoices and other documents evidencing
sales.
c.DOUBLE DAMAGES Section 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.
d.INJUNCTION Section 156.4. The complainant, upon proper showing,
may also be granted injunction.
e.DESTRUCTION OF INFRINGING MATERIALS Section 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.

2. S.C. issued A.M. 10-3-10 SC or the 2011 Rules of Procedure for


Intellectual Property Right Cases to set the procedure for civil cases
for IPR violation (Rules 2 to 9)

***effectivity date: 8 November 2011


a.) Jurisdiction: RTC courts designated as Intellectual Property Courts.
b.) All complaints must be verified
c.) Pleadings allowed: Complaints, compulsory counterclaims, cross-
claims, answer.
d.) Who may file:
i.) any IPR owner possessing any right, title or interest under claim of
ownership in any intellectual property right, whose right may have
been violated
ii.)resident foreign national or juridical person or has a real and
effective industrial establishment in a country which is a party to any
convention, treaty of agreement relating to intellectual property rights
or the repression of unfair competition, to which the Philippines is also
a party, or extends reciprocal rights to nationals of the Philippines by
law
iii.) even applies if foreign national or resident does not engage
business in the Philippines as long as they meet the requirement in
paragraph (b)
e. Prohibited pleadings:
1. Motion to dismiss;
2. Motion for a bill of particulars;
3. Motion for reconsideration of a final order or judgment,
except with regard to an order of destruction issued under
Rule 20 hereof;

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4. Reply;
5. Petition for relief from judgment;
6. Motion for extension of time to file pleadings or other written
submissions, except for the answer for meritorious reasons;
7. Motion for postponement intended for delay;
8. Third-party complaint;
9. Intervention;
10. Motion to hear affirmative defenses; and
11. Any pleading or motion which is similar to or of like effect as
any of the foregoing.
f. Usually just requires the filing of Position Papers within ten (10) days
from the termination of clarificatory hearing or hearings (trial only when
the court deems in necessary)
g. Court render judgment forty-five (45) days after pre-trial after the
receipt of the last position paper, affidavits, documentary and real
evidence, or the expiration of the period for filing the same.
h. Judgment immediately executory pending appeal (Sec. 5, Rule 8)

III. Criminal action for Trademark Infringement/violation

-trademark infringement; unfair competition; false designations of origin

1. Elements of Trademark Infringement under R.A. 8293

a. The trademark being infringed is registered in the Intellectual


Property Office; however, in infringement of trade name, the same need
not be registered;
b. The trademark or trade name is reproduced, counterfeited,
copied, or colorably imitated by the infringer;
c. 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 the
infringing mark or trade name 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;
d. The use or application of the infringing mark or trade name is likely to
cause confusion or mistake or to deceive purchasers 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
e. It is without the consent of the trademark or trade name owner
or the assignee thereof.

"Among the elements, the element of likelihood of confusion


is the gravamen of trademark infringement. There are two types of
confusion in trademark infringement: confusion of goods and
confusion of business. In Sterling Products International, Inc. v.
Farbenfabriken Bayer Aktiengesellschaft, the Court distinguished
the two types of confusion:

Callman notes two types of confusion. The first is the confusion


of goods in which event the ordinarily prudent purchaser would be
induced to purchase one product in the belief that he was
purchasing the other. In which case, defendants goods are then
bought as the plaintiffs, and the poorer quality of the former reflects
adversely on the plaintiffs reputation. The other is the confusion of
business: Here though the goods of the parties are different, the
defendants product is such as might reasonably be assumed to
originate with the plaintiff, and the public would then be deceived

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either into that belief or into the belief that there is some
connection between the plaintiff and defendant which, in fact, does
not exist."1

2. Unfair competition

- may be availed of even if trademark is NOT REGISTERED

-keywords here is deception; passing off one's goods for that of another

Sec. 168 of R.A. 8293:

1. The following shall be deemed guilty of unfair competition:

(a)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;
(b) 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; or
(c) 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.

McDonalds Corp vs. L.C. Big Mak2

The essential elements of an action for unfair competition are:


(1) confusing similarity in the general appearance of the goods, and
(2) intent to deceive the public and defraud a competitor.

"The confusing similarity may or may not result from similarity in the marks,
but may result from other external factors in the packaging or presentation
of the goods. The intent to deceive and defraud may be inferred from the
similarity of the appearance of the goods as offered for sale to the public.
Actual fraudulent intent need not be shown.

3. Differentiate: Unfair competition vs. trademark infringement

Read the case of :Coca Cola Bottlers, Inc. vs Gomez, G.R. No. 154491,
November 14, 2008.

1 SOCIETE DES PRODUITS VS MARTIN T. DY, JR. , G.R. No. 172276, August 8, 2010

2 McDonalds Corp vs. L.C. Big Mak, G.R. No. 143993, August 18, 2004

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ISSUE: Is the hoarding of a competitors product containers punishable as
unfair competition under the Intellectual Property Code (IP Code, Republic
Act No. 8293) that would entitle the aggrieved party to a search warrant
against the hoarder?

4. False Designations of Origin; False Description or Representation


-Sec 169

Sec. 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
(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.

169.2. 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.

5. Penalties for criminal violation - Sec. 170

Independent of the civil and administrative sanctions imposed by law, a


criminal penalty of imprisonment from two (2) years to five (5) years and
a fine ranging from Fifty thousand pesos (P50,000) to Two hundred
thousand pesos(P200,000), shall be imposed on any person who is found
guilty of committing any of the acts mentioned in Section 155, Section 168
and Subsection 169.1. (Arts. 188 and 189, Revised Penal Code)

6. Rules of Procedure in IPR Criminal Cases (Read A.M. 10-3-10 SC Rules 10


to 15)

a. Criminal complaints commenced by the filing of Information after a


prior verified complaint is filed with the prosecutor's office.
b. Jurisdiction: RTC court which has jurisdiction over the territory where
any elements of the offense occurred.
c. Warrant of arrest: Judge may issue warrant of arrest within ten (10)
days from the filing of Information and the personal evaluation of the
judge and the information that there is probable cause.
d. Prohibited Motions in Criminal IPR cases:
i. Motion to quash information exception: lack of jurisdiction
ii. Motion for extension of time to file affidavits and other papers
iii. Motion for postponement intended for delay.

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e. Preliminary Investigation - conducted within ten (10) days after the
filing of the private complaint.
f. Inquest, not PI if accused is lawfully arrested without warrant. But
accused may still ask for preliminary investigation within five (5) days
from the filing of the information or knowledge of the filing of
information.
g. Judgment promulgated within sixty (60) days from the time the case
is submitted for decision. A copy of the Judgment shall be furnished
with the IPO (Sec. 4, Rule 14 of the 2011 Rules of Procedure on
Intellectual Property Litigation.

TRADEMARK INFRINGEMENT VS UNFAIR COMPETITION

TRADEMARK UNFAIR COMPETITION


INFRINGEMENT
TM REGISTRATION WITH YES NOT NECESSARY
THE IPO (Bureau of TM)
ELEMENTS OF THE 1.) Use without consent, 1. Confusing
OFFENSE any reproduction, similarity in the
counterfeit, copy or general appearance of
colorable imitation of a the goods
REGISTERED trademark 2. intent to deceive
or tradename the public and
-Such use is likely to defraud a competitor
cause confusion or -proof of fraud and
mistake or to deceive intent to deceive is
purchasers essential.
2.) reproduce,
counterfeit, copy or
colorable imitate any
such registered
trademark or trade-
name and apply such
reproduced, counterfeit
copy to labels, signs,
prints, packages,
wrappers in other goods
and services

CASE STUDY: SUPERIOR COMMERCIAL ENTERPRISES INC. VS KUNNAN


ENTERPRISES LTD. ETC. G.R. No. 169974, 20 April 2010.

IV. Limitations to Actions for Infringement.

General rule, the following are not liable for TM infringement:


a.) prior user of trademark who in good faith has been using the said
trademark before the filing of the registered trademark;
b.) printing press; (but the printing press can be enjoined from further
printing)
c.) publishers of newspapers, magazines, etc. ; (newspaper can also be
enjoined from further printing future issues)

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Sec. 159 of RA 8293: - 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.
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.

V. Right of Foreign Corporation to Sue in Trademark or Service Mark


Enforcement action.

Sec. 160 of R.A. 8293. - Any foreign national or juridical person who
meets the requirements of Section 3 of this Act and does not engage in
business in the Philippines may bring a civil or administrative action
hereunder for opposition, cancellation, infringement, unfair competition, or
false designation of origin and false description, whether or not it is licensed
to do business in the Philippines under existing laws.

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