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IPL 134 Trademarks

Prof. Vicente B. Amador


Senior Partner
Sycip Salazar Hernandez & Gatmaitan
Acquisition of marks by Registration

SECTION 122. How Marks are Acquired. - The


rights in a mark shall be acquired through
registration made validly in accordance with the
provisions of this law. (Sec. 2-A, R A. No. 166a)
Maintaining trademark rights through actual use

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.

124.3.One (1) application may relate to several goods


and/or services, whether they belong to one (l) class
or to several classes of the Nice Classification.
Developers Group of Companies, Inc. vs. Shangri-la
International Hotel Management, Inc. et. al. CA- G. R. CV No.
53351

Developers is the registered owner of the mark Shangri-La and S


Logo in the Philippines under Regn. No. 31904 issued on May 31,
1983, which it started using in 1982.

SIHM is the beneficial owner of the Shangri-La and the S Logo,


which it started using in 1962 as part of its corporate name and
as a mark for its hotels starting in 1975. It claims that this mark
is internationally well-known and is protected under the Paris
Convention.
1. Issue: Real Party in Interest?

“SLIHM is not the owner of the Shangri-la hotels, but through a


licensing agreement, operates the same hotels. Logically, a
member of a group of companies cannot claim ownership
over the alleged properties of its mother company or any
member of the conglomeration, which has distinct and
separate personality of its own. Thus, defendant SLIM
cannot claim to legally own the subject Shangri-la trademark
and S-logo by virtue of the alleged ownership of the same by
Kuok Group.”
2. Issue: Is there trademark infringement?

“Granting that Kuok’s use of the Shangri-law tradename and


S-Logo since 1962 benefits defendant-appellant SLIHM as a
member of the conglomerate, the same is not the actual use
required under Republic Act No. 166. The law requires the
actual use in commerce of the said tradename and S-Logo in the
Philippines. The bulk of defendants-appellants’ evidence show
that the alleged use of the Shangri-la tradename was done
abroad and not in the Philippines. The name Shangri-la was
only actually used in the Philippines when the hotels with the
same name were constructed in 1987. Defendants-appellants’
actual use in commerce of the subject tradename and S-logo in
the Philippines commenced only in 1987.
The alleged defendants-appellants’ publication of advertisement
worldwide is unavailing. To reiterate the Supreme Court ruling
– Such right grows out of their actual use. Adoption is not use.
One may make advertisements, issue circulars, give out price
lists on certain goods; but these alone would not give exclusive
right of use.”

If this case is decided under the IP Code, will the outcome be


different?
Secondary meaning or acquired distinctiveness
may be gained only with respect to marks under
paragraphs (j),(k) and (l)

Precedents on Secondary Meaning

• Phil. Nut Industry Inc. vs. Standard Brands Inc.,


GR L-23035, July 31, 1975; PLANTERS trademark
• Ang vs. Teodoro, GR No. L-48226, December 14,
194; ANG TIBAY trademark
Sec. 123.2. As regards signs or devices mentioned in
paragraphs (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 mark has become distinctive, as used
in connection with the applicant's 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.
SOCIETE DES PRODUITS NESTLE, S.A. and NESTLE
PHILIPPINES, INC. vs. COURT OF APPEALS and CFC
CORPORATION, G.R. No. 112012. April 4, 2001.

Nestle’s Marks: MASTER ROAST and MASTER BLEND."


CFC’s Marks: "FLAVOR MASTER"
Nestle filed notice of opposition to CFC’s application for
FLAVOR MASTER

CFC argued that its trademark, FLAVOR MASTER, is not


confusingly similar with the former's trademarks, MASTER
ROAST and MASTER BLEND.
1. MASTER is either a generic or descriptive word Other words
used with the trademarks are very different from each other — in
meaning, spelling, pronunciation, and sound.
Bureau of Patents denied CFC’s trademark application, but CA
reversed its decision and ruled in favor of CFC.

CA held that the physical discrepancies between appellant CFC's


and appellee's respective logos are so ostensible that the casual
purchaser cannot likely mistake one for the other.
Supreme Court reversed the CA:

1. The Court of Appeals applied some judicial precedents which


are not on all fours with this case.

2. In infringement or trademark cases in the Philippines, no set


rules can be deduced in ascertaining whether one trademark is
confusingly similar to or is a colorable imitation of another. Each
case must be decided on its own merits.
3. The cases cited by the Court of Appeals to justify the application
of the totality or holistic test to this case are inapplicable, the factual
circumstances being substantially different.
BIOFERIN and BUFFERIN for pains caused headaches and colds
are spelled and pronounced differently and are prescribed by
physicians
ALACTA for goods under Class 6 for pharmaceutical and
nutritional preparation is distinguishable from ALASKA for goods
under Class 47 for food ingredients. The latter does not require
prescription.

4. "The determination of whether two trademarks are indeed


confusingly similar must be taken from the viewpoint of the
ordinary purchasers who are, in general, undiscerningly rash in
buying the more common and less expensive household products like
coffee, and are therefore less inclined to closely examine specific
details of similarities and dissimilarities between competing
products."
5. MASTER is the dominant feature of opposer's mark.
MASTER is printed predominantly on the label and emphasized
in TV, radio and printed advertising materials with personalities
like Robert Jaworski and Atty. Ric Puno Jr., who are given the
titles Master of the Game and Master of the Talk Show.

6. In addition, the word "MASTER" is neither a generic nor a


descriptive term. As such, said term can not be invalidated as a
trademark and, therefore, may be legally protected. Rather, the
term "MASTER" is a suggestive term brought about by the
advertising scheme of Nestle.

7. The term "MASTER", therefore, has acquired a certain


connotation to mean the coffee products MASTER ROAST and
MASTER BLEND produced by Nestle. As such, the use by CFC
of the term "MASTER" in the trademark for its coffee product
FLAVOR MASTER is likely to cause confusion or mistake or
even to deceive the ordinary purchasers.
Territorial character of trademarks

•Philip Morris Inc. et. al. vs. Fortune Tobacco Corp.,


July 16, 1993

“[T]here is no proof whatsoever that any of plaintiff’s


products which they seek to protect from any adverse
effect of the trademark applied for by defendant, is in
actual use and available for commercial purposes
anywhere in the Philippines.***
In assailing the justification arrived at by respondent
court when it recalled the writ of preliminary
injunction, petitioners are of the impression that
actual use of their trademarks in Philippine
commercial dealings is not an indispensable element
under Article 2 of the Paris Convention in that:
(2) …no condition as to the possession of a domiciled
or establishment in the country where protection is
claimed may be required of persons entitled to the
benefits of the Union for the enjoyment of any
industrial property rights.
Yet petitioner’s perception along this line is
nonetheless resolved by Sections 2 and 2-A of the
Trademark Law which speaks about the necessity of
actual commercial use of the trademark in the local
forum: …
Following universal acquiescence and comity, our
municipal law on trademarks regarding the
requirement of actual use in the Philippines must
subordinate an international agreement inasmuch
as the apparent clash is being decided by a
municipal tribunal. … Under the doctrine of
incorporation as applied in most countries, rules of
international law are given a standing equal, if not
superior, to national legislative enactments.”
• But see Section 123(e) * * * 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;

“Through advertisement, a well-established and


well-earned reputation may be gained in
countries where the trademark owner has itself
no established business connection. Goodwill
may thus be seen to be much less confined
territorially than say, a hundred or fifty years
ago. It is no longer true that a trademark of
itself cannot travel to markets where there is
no article to wear the badge and no trader to
offer the article. Advertisement of trademark is
geared toward promotion of use of the marked
article and the attraction of potential buyers
and users; by fixing the identity of the marked
article in the public mind, it prepares the way
for growth in such commerce whether the
commerce be handled by the trademark owner
itself or by its licensees or independent
traders.”
See also:

SECTION 3. International Conventions and


Reciprocity. - Any person who is a national or who is
domiciled or has a real and effective industrial
establishment in a country which is a party to any
convention, treaty or 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, shall be entitled to benefits to the
extent necessary to give effect to any provision of
such convention, treaty or reciprocal law, in addition
to the rights to which any owner of an intellectual
property right is otherwise entitled by this Act. (n)
Essential Steps to Protection

•Actual use in commerce


•Application process
• early filing date or priority date
• Examination process
• conflict with other marks applied for or m
registered or with prior users of the trademark
How to Obtain Protection

• Actual use in commerce


• Application for registration

The old Trademark Law followed an actual use


system, while the IP Code followed a hybrid
filing-actual use system
While actual use was required for at least two
months before application under old TM law, the
IP Code allows application without use and
requires it only within three years from filing date
SECTION 124. Requirements of Application. - 124.1.
The application for the registration of the mark shall be
in Filipino or in English and shall contain the following:
(a) A request for registration;
(b) The name and address of the applicant;
(c) The name of a State of which the applicant is a
national or where he has domicile; and the name of a
State in which the applicant has a real and effective
industrial or commercial establishment, if any;
(d) Where the applicant is a juridical entity, the law
under which it is organized and existing;
(e) The appointment of an agent or representative,
if the applicant is not domiciled in the Philippines;
(f) Where the applicant claims the priority of an
earlier application, an indication of:
i) The name of the State with whose national office
the earlier application was filed or if 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;
(g) 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;
(h) Where the mark is a three-dimensional
mark, a statement to that effect;
(i) One or more reproductions of the mark, as
prescribed in the Regulations;
(j) A transliteration or translation of the mark or of
some parts of the mark, as prescribed in the
Regulations;
(k) 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
(l) A signature by, or other self-identification of,
the applicant or his representative.
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.
124.3. One (1) application may relate to several goods
and/or services, whether they belong to one (l) class
or to several classes of the Nice Classification.
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. 5, R.A.
No. 166a)
Why is the filing date important?

SECTION 127. Filing Date – determines the right of


priority of the application, the examination and
publication so it is important to comply with the
requirements for a filing date under this provision

Question: ABC filed an application for trademark


DEF with the IP Office on 1/1/04 claiming the
priority date of its US application filed with the
USPTO on 6/1/03. Is the applicant entitled to a
priority date of 6/1/03.
SECTION 131. Priority Right. - 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.
131.2.No registration of a mark in the Philippines by a
person described in this section shall be granted until
such mark has been registered in the country of origin
of the applicant.
Limitation on right to sue
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: Provided, That,
notwithstanding the foregoing, the owner of a well-
known mark as defined in Section 123.1(e) of this Act,
that is not registered in the Philippines, may, against
an identical or confusingly similar mark, oppose its
registration, or petition the cancellation of its
registration or sue for unfair competition, without
prejudice to availing himself of other remedies
provided for under the law.
When a first foreign application is withdrawn
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. 37, R.A. No. 166a)
SECTION 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 application shall
result in one registration.
• Declaration of use within three years from filing date must
provide evidence of actual use on specific products and
registration will mention only such products

SECTION 130.Signature and Other Means of Self-


Identification.
•hand-written signature, printed or stamped signature
•communications made by telefacsimile accepted followed
by original within thirty days
No attestation, notarization, authentication,
legalization or other certification of any signature or
other means of self-identification referred to in the
preceding paragraphs, will be required, except, where
the signature concerns the surrender of a registration
SECTION 132.Application Number and Filing Date
are given when the filing requirements are met

SECTION 133. Examination and Publication –


examination on the issue of registrability, and if
approved the trademark application will be
published in the Official Gazette
SECTION 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 applicant's or
owner's rights then existing or thereafter arising in the
disclaimed matter, nor such shall disclaimer prejudice or
affect the applicant's or owner's right on another
application of later date if the disclaimed matter became
distinctive of the applicant's or owner's goods, business or
services. (Sec. 13, R.A. No. 166a)
Conflict with rival applicants or users

•What are the rights of a prior user of a trademark


vis a vis the registered owner but junior user of an
identical mark?
•TRIPS Agreement says that “the rights [of a
registered owner] shall not prejudice any existing
prior rights.”
•Section 236. Preservation of Existing Rights. -
Nothing herein shall adversely affect the rights on
the enforcement of rights in patents, utility models,
industrial designs, marks and works, acquired in
good faith prior to the effective date of this Act. (n)
•Pursuant to TRIPS, the IP Code makes rights to
trademarks available on the basis of use
•Under Section 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.
The only possible exception may be well-known
trademarks, which may bar other applications
“whether or not it is registered here”
Question: ABC filed an application for trademark DEF
with the IP Office on 6/1/04 claiming the priority date of
its US application filed with the USPTO on 1/1/04. The
IP Office granted the registration when ABC filed its
certificate of registration from the USPTO.

ABC then sued XYZ for trademark infringement for


acts committed for the preceding 4 years during which it
used the mark.

Will the action prosper?


Will your answer be the same if DEF is a well-known
mark?