INTELLECTUAL PROPERTY LAW FINALS

TRADEMARK -The owner may be either an association of which those enterprises

What is a mark?
Any visible sign capable of distinguishing the goods (trademark) or
services (service mark) of an enterprise and shall include a stamped
or market container of goods. (Sec 121.1)
What is a trademark?
-word (wordmark) ex. GOOGLE, INSTAGRAM
-symbol or device (figurative mark) ex. LOGOS
-Composite mark (it has logo and the name of enterprise)
are members or any other entity, including a public institution or
cooperative.
-the owner of a collective mark is responsible for ensuring the
compliance with certain standards (usually fixed in the regulation
concerning the use of the collective mark) by its members. Thus, the
function of a collective mark is to inform the public about certain
particular features of the product for which the collective mark is
used. Most countries require that an application for collective mark
be accompanied by a copy of the regulation which govern the use of
collective mark.

-slogan ex. JUST DO IT

FUNCTIONS OF A MARK(Mirpuri vs CA)
-stamped/marked container (San Miguel Bottle)
-Differentiator
MARKS OF OWNERSHIP
-Source of Origin
-trademark
-Quality
-trade names- SM Department Store
-Advertising
-Service marks- the same as trademark but identifies the service
rather the product ‘It has been said that the protection of trademark is the law’s
recognition of PSYCHOLOGICAL FUNCTION of symbols. If it is true that
- they are sometimes confusing. For example, is Mcdonald’s we live by symbols, it is no less true that we purchase goods by them’
a service or product? Mcdonald’s the company is a service. Within
service- providing fast food- the company may have many products
that are also trademarked. The Big Mac is a trademarked product. Merchandising shortcut- a person is induced to select what he wants,
-Collective marks- any visible sign capable of distinguishing the or what he has been led to believe he wants.
origin, common characteristics, quality of goods or services of ‘Silent Salesman’
different enterprises under the control of the registered owner. (sec
121.2)

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When choosing a trademark….  Suggestive Mark

THE 5 CATEGORIES OF TRADEMARK o A suggestive mark implies something about the good
or service. A mark in this category typically qualifies
 Generic Mark
for protection without requiring a secondary
o A generic trademark actually doesn't qualify for a meaning.
trademark unless it includes more specific detail.
o The term "suggestive" means that the customer
One example of a generic mark is the phrase, "The
must use the imagination to figure out what services
Ice Cream Shop." Offering trademark protection on
or goods the company offers. One example is the
something this generic would restrict all other shops
luxury automotive brand, Jaguar. It suggests speed
that sell ice cream.
and agility, but doesn't immediately convey a car
o To qualify a generic mark for a trademark, it needs to manufacturer.
describe qualities, characteristics, or ingredients of
 Fanciful Mark
the good your business sells.
o A fanciful mark is a term, name, or logo that is
 Descriptive Mark
different from anything else that exists. This category
o A descriptive mark identifies one or more is the easiest for obtaining trademark protection
characteristics of a prodct or service and only serves because it typically doesn't compete with anything
to describe the product. It has unique elements that else or become too generic.
qualify it for protection under trademark laws such
o Examples of fanciful marks include Kodak, Nike, and
as it must have secondary meaning such as amount
Adidas. These words don't hold any meaning in
and manner of advertising, volume of sales, length
common language, so trademarking them doesn't
and manner of the mark's use, or results of consumer
infringe on the rights of other companies that offer
surveys to qualify. This means that consumers must
similar products.
recognize the mark and identify it with the brand.
 Arbitrary Mark
o To qualify as a descriptive mark, it should evolve
from what the brand represents to who the brand o An arbitrary mark might include a term or phrase
represents. with a well-known meaning, but the meaning in its
case is different. The best example of an arbitrary
mark is Apple, the computer and electronics
manufacturer. An apple is a familiar term, but in this

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case, the mark doesn't have anything to do with the
general meaning of the term.
HOW ARE RIGHTS TO A MARK ACQUIRED?
1. By USE ( SEC 124.2 of RA 8293)
BY the regulations within three years from the filing date of
application. Otherwise, the application shall be refused or the mark
shall be removed from the Registry by the Director.
2. BY REGISTRATION ( SEC 122 of RA 8293)
The rights in a mark shall be acquired through registration made
validly in accordance with the provisions of this law.
* within 3 three years from the filing date of application
Trademark and service mark rights arise through USE IN COMMERCE.
In sec 2 of RA 166, prior use in Philippine commerce was basis of
ownership. (UNNO COMMERCIAL vs GEN. MILLING CORP)
Case: UNNO COMMERCIAL vs GEN MILLINGS
The right to register trademark is based on ownership. When the
applicant is not the owner of the trademark being applied for, he has
no right to apply for the registration of the same. Under the
Trademark Law only the owner of the trademark, trade name or
service mark used to distinguish his goods, business or service from
the goods, business or service of others is entitled to register the
same.
An importer, broker, indentor or distributor acquires no rights to the
trademark of the goods he is dealing with in the absence of a valid
transfer or assignment of the trade mark.
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CASE: KABUSHI KAISHA ISETAN ISETAN CO., LTD., vs. IAC, ISETANN
DEPARTMENT STORE, INC.
-A fundamental principle of Philippine Trademarks Law is that actual
use in commerce in the Philippines is a prerequisite to the acquisition
of ownership over a trademark or a trade name. A prior registrant
cannot claim exclusive use of the trademark unless it uses it in
commerce.
The Paris Convention for the Protection of Industrial Property does
not automatically exclude all countries of the world that have signed
it from using a trade name which happens to be used in one country.
-Conditions which must exist before any trademark owner can claim
and be afforded rights:
1. the mark must be internationally known or well known;
2. the subject of the right must be a trademark, not a patent or
copyright or anything else;
3. the mark must be for use in the same or similar kinds of goods,
and
4. The person claiming must be the owner of the mark.
IS THE DOCTRINE OF ACTUAL USE STILL APPICABLE?
Yes. Sec 124,2 requires a declaration of actual use within 3 years from
filing date, otherwise the application shall be refused or the mark
removed from the register by the Director. Hence, to maintain the
validity of registration one has to use the mark. In other words, it is
the actual use of the mark or trade name which perfects the
ownership of the mark.
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SEC 145 requires a declaration of actual within one year from the 5th
anniversary of the date of registration otherwise the mark shall be
removed from the register.
DURATION OF A TRADEMARK
-Sec 145. DURATION
A certificate of registration shall remain in force for 10 years;
provided, that the registrant shall file a declaration of actual use and
evidence to that effect or shall show valid reasons based on the
existence of obstacles to such use, as prescribed by the Registration,
within 1 year from the 5th anniversary of the date of the registration
of the mark. Otherwise, the mark shall be removed from the Register
by the Office.
RENEWABLE EVERY 10 years.
DECLARATION OF ACTUAL USE
- The applicant or the registrant shall file a Declaration of actual use
of the mark with evidence to that effect within 3 years from the filing
date of the application. Otherwise, refused or removed from the
register.
5th Anniversary
The registrant shall file a declaration of actual use of the mark with
evidence to that effect within 1 year from the fifth anniversary of the
registration. Otherwise, removed from the register.
CONFUSION OF TRADEMARK
-In general, confusion of marks and trade name is the result of
confusing similarity between 2 marks or 2 trade names.
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Confusing similarity refers to resemblance between such mark or
trade name of a person and that of another as to likely, when applied
to or used on the respective goods, business or services.
KINDS OF CONFUSION
Confusion of goods
- a purchaser purchased a product in the belief that he/she is
purchasing that of the other
Confusion of Business
- exist when though the goods or services of the parties are different,
the defendant’s product is such as might reasonably be assumed to
originate with the plaintiff, and the public would be deceived either
into that belief or into the belief that there is connection between
the plaintiff and defendant when in fact such does not exist.
While there is confusion of goods when the products are competing,
confusion of business exist when the products are non-competing
but related thereto enough to produce confusion of affiliation.
Likelihood of confusion is sufficient on the part of the buying public
as to deny or cancel registration of the junior user or to constitute
infringement of the mark of the senior user.
Purchaser- ordinary or average purchaser with at least a modicum of
intelligence; not the completely unwary customer but those who are
at least accustomed to buy and are familiar with the hoods in
question.
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TEST APPLIED TO DETERMINE CONFUSION OF GOODS

a. DOMINANCY TEST

IF the competing trademark contains the main or essential or

dominant features of another and confusion and deception is likely
to result, infringement takes place.

b. HOLLISTIC TEST

requires the entirety of the competing marks must be considered in

determining confusing similarity. Trademarks in their entirety is
applied to the products, including labels and packaging are
considered. It is not enough to consider their words and compare the
spelling and pronunciation of the words.

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What is patent?
It is an exclusive right granted by a state to an inventor or his assignee
for a fixed period of time in exchange of disclosure of an invention.
Three-fold purpose
1. patent law seeks to foster and reward invention
2. to promote disclosures of inventions and to permit the public to
practice the invention once the patent expires
3. the stringent requirements for patent protection seek to ensure
that ideas in the public domain remain there for the free use of the
public.
What are patentable invention?
Sec 21 RA 8293
Patentable inventions- any technical solution to a problem in any
field of human activity which is new, involves an inventive step and is
industrially applicable shall be patentable. It may be, or may relate
to, a product, or process, or an improvement of any of the foregoing.
What are non-patentable inventions?
Sec 22. Of RA 8293
1. Discoveries, scientific theories and mathematical methods
2. In the case of Drugs and medicines, mere discovery of a new form
or new property of a known substance which does not result in the
enhancement of the efficacy of that substance
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3. Schemes, rules and methods of performing mental acts, playing
games or doing business, and programs for computers
4. Methods for treatment of the human or Animal body
5. Plant varieties or animal breeds or essentially biological process for
the production of plants or animals. This provision shall not apply to
micro‐ organisms and non‐biological and microbiological processes
6. Aesthetic creations
7. Anything which is Contrary to public order or morality. (Sec. 22,
IPC as amended by R.A. 9502)
What are the elements of patentability?
1. novelty- inventions shall not be considered new if it forms part of
a prior art
What is prior art?
A: 1. Everything which has been made available to the public
anywhere in the world, before the filing date or the priority date of
the application claiming the invention
2. The whole contents of a published application, filed or
effective in the Philippines, with a filing or priority date that is earlier
than the filing or priority date of the application. Provided, that the
application which has validly claimed the filing date of an earlier
application under Section 31 of the IPC, there shall be a prior art with
effect as of the filing date of such earlier application: Provided
further, that the applicant or the inventor identified in both
applications are not one and the same. (Sec. 24, IPC)
2. inventive step- an invention involve an inventive step if, having
regard to prior art, it is not obvious to a person skilled in the art at
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the time of the filing date r priority date of the application claiming
the invention.
3. industrial applicability- an invention that can be produced and used
in any industry shall be industrially applicable.
Ownership to Patent
- the right to patent belongs to the inventor, his heirs, or assigns.
When two or more persons have jointly made an invention, the right
to a patent shall belong to them jointly. (sec 28 of RA 8293)
FIRST-to-FILE Rule
- if two or more persons have made the invention separately and
independently of each other, the right to the patent shall belong to
the person who filed the application for such invention, or where two
or more applications are filed for the same invention, to the applicant
who has the earliest filing date or, the earliest priority date. (sec 29
of RA 8293)
RIGHT TO PRIORITY
(SEC 31 of 8293)
PROCEDURE OF GRANT OF PATENT
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1. Filing of application form
2. accordance to filing date
3. formality examination
4. classification and search
5. Publication of the application
What is priority date?
An application for patent filed by any person who has previously
applied for the same invention in another country which by treaty,
convention, or law affords similar privileges to Filipino citizens, shall
be considered as filed as of the date of filing the foreign application.
(Sec. 31,)
What are the conditions in availing of priority date?
1. The local application expressly claims priority;
2. It is filed within 12 months from the date the earliest foreign
application was filed; and
3. A certified copy of the foreign application together with an English
translation is filed within 6 months from the date of filing in the
Philippines. (Sec. 31, IPC
: What are the rights conferred by a patent application after the first
publication?
The applicant shall have all the rights of a patentee against any
person who, without his authorization, exercised any of the rights
conferred under Section 71 in relation to the invention claimed in the
published patent application, as if a patent had been granted for that
invention, provided that the said person had:
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1. Actual knowledge that the invention that he was using was the
subject matter of a published application; or

2. Received written notice that the invention was the subject matter
of a published application being identified in the said notice by its
serial number

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