TRADEMARK

Group 1 - Trademarks and Trade name

Abrugar, Apostol, Arpon, Brina, Conde,
Damayo, Plimaco & Rosillo
 Brief History of Trademark
History and evolution
1. Law of Queen Ma. Cristina of Spain
2. Philippine Commission passed Act No. 666 Enacted, March
6, 1903 Trademark and Trade Name Law of the Philippine
Islands
3. Republic Act 166 repealed Act 666 after the Philippines
gained its independence. Philippines adhered to the Lisbon
Act of the Paris Convention for the Protection of Industrial
Property of March 20, 1883
4. Philippines ratified the Agreement Establishing the World
Trade Organization on December 16, 1994
5. Republic Act No. 8293, IP Code
Main Purpose of the Law

1. Protect the public

2. Protect the owner of a trademark from

misappropriation by pirates and cheats.
Functions of a Trademark

1. Indicator of Source
2. Guarantor of Quality
3. Means of Consumer Protection
4. Advertising and Promotion Tool
5. Symbol of Goodwill
6. Property Right
 What is a Trademark?
Mark - means 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 (Section 121.1 of
the IP Code).

Collective mark - means any visible sign designated as

such in the application for registration and capable of
distinguishing the origin or any other common
characteristic, 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
(Section 121.2 of the IP Code).
 What is a Trademark?
A Trademark is not a Trade Name.
Trade name means the name or designation identifying
or distinguishing an enterprise (Section 121.3 of the IP
Code).
A "trademark" is defined under R.A. 166, the Trademark
Law, as including "any word, name, symbol, emblem, sign
or device or any combination thereof adopted and used by
a manufacturer or merchant to identify his goods and
distinguish them from those manufactured, sold or dealt
in by others."
This definition has been simplified in R.A. No. 8293, the
IP Code, which defines a "trademark", as "any visible
sign capable of distinguishing goods."
Acquisition of
Ownership of
Marks
Points To Ponder:

You have a Carenderia, Cooking ng Ina mo.

Neighbor sets up Cooking Ina Mo Rin.
Is there a trademark Infringement?
 Camp Du30 sold its wine under the brand
Cute Brandy with a tag line Habang
tumatagal lalong nagiging cute ; it became
very popular. So, Camp DU30 registered the
trademark Cute for its brandy. Subsequently,
Camp DeLima manufactured bicycles and sold
it under the name Cute. Camp DU30 now
sues Camp DeLima for violation of IPC. Rule on
dispute.
 Acquisition of marks

-Marks are acquired solely through registration (Sec.

122, IPC).

NOTE: Registration, does not confer upon the registrant an

absolute right to the registered mark. The certificate of registration
is merely a prima facie proof that the registrant is the owner of the
registered mark or trade name. Evidence of prior and continuous
use of the mark or trade name by another can overcome the
presumptive ownership of the registrant and may very well entitle
the former to be declared owner in an appropriate case.
 How Marks are acquired

A) The rights in a mark shall be acquired through

registration with Intellectual Property Office or IPO (Sec
122 IPC)

-Registration is necessary before one can file an action

for infringement

2) Actual Use

2.1 Prior use in the Philippines is not required before

registration.
 How Marks are acquired

2.2 However, there must be actual use after

registration. The Registrant shall file a declaration of
actual use of the mark with evidence to that effect
within three (3) years from the filing Date of application
otherwise it may be cancelled (Sec 142.2 and151[c],
IPC) The registrant is required to file a declaration of
actual use and evidence to that effect, or shall show
valid reasons for non-use within one year from fifth
anniversary date of registration ( Sec 145, IPC)
 How Marks are acquired

2. 3) It is also provided that a certificate of registration

of a mark shall be prima facie evidence of the validity
of the registration, the registrants ownership of the
mark, and of the registrants exclusive right to use the
same (Sec 138, IPC). This means that registrants right
may be questioned by a person who has a better right,
including a prior actual user. This also includes person
with internationally known marks.
 How Marks are acquired

2.4) Registration is also not important to protect the

goodwill that identifies in the mind of the public the
goods he manufactures or deals in ( Sec 168.1)
 How Marks are acquired

2.5) Registration of a mark is not necessary for

purposes of filing the case for infair competition or
false designation of origin ( Sec 168.2 and 169 IPC).
Unfair competition is present when :

a) There is passing off of a product format of another

b) Giving goods (or service) the appearance of goods of
another
 How Marks are acquired

B) When the law states the right is acquired from the

time of registration, it is actually referring to the date of
filing of application.
 How Marks are acquired

a) The filing date of an application shall be the date on

which the IPO received the following indications and
elements:

a.1 Express or implicit indication that the registration of

mark is sought
a.2 Identity of applicant
a.3 Indications sufficient to contact the application or
his representatives Reproduction of mark
List of goods or services for which registration is sought
(Sec 127, IPC)
 How Marks are acquired

b)However, the right may also be protected from the

priority date. Subject to the rules on reciprocity, where
the application is filed in the Philippines and the same
applicant previously filed an application in the
countries covered by reciprocity rule under Sec 3 of IPC,
the application is deemed filed in the foreign country
(Sec 131,IPC). However, there will be no registration in
the Philippines until registered in such foreign country.
 ACQUISITION OF
OWNERSHIP MARKS
The Bureau of Legal Affairs. - The BLA shall
have the following functions:
Hear and decide opposition to the application for registration
of marks, cancellation of trademarks, subject to the provisions
of Section 64, cancellation of patents, utility models, and
industrial designs; and petitions for compulsory licensing of
patents; (Sec.10.1, R.A. No. 8293 or the IP Code)
 Nature of Proceedings

not an ordinary litigious controversy between

private parties.
public interest is involved.
all questions as to whether or not the law is
satisfied may be considered even though not
specifically raised by either of the parties.
 Who may file for opposition?
Any person who believes that he would be damaged by the
registration of a mark may, upon payment of the required fee
and within thirty (30) days after the publication.
 Where to file?
At the Intellectual Property Office created by this Act.
What are the requisites in the filing on
an opposition?
1. In writing
2. Verification and Certification of Non-Forum Shopping
3. Board Resolution or Secretarys Certificate
4. Statement of Grounds and Facts
5. Attachments of evidence in original or certified copies of the
original, marked consecutively
6. If foreign document, authenticated and notarized
7. English translation (if in foreign languages)
(Regulations on Inter Partes Proceedings, as amended by Office
Order No. 79, s. of 2005)
 How is Notice of Hearing given?
Upon the filing of an opposition:
a. Office shall serve notice of the filing on the applicant.
b. date of the hearing
c. Served upon the applicant and the oppositor and all other
persons having any right, title or interest in the mark covered
by the application, as appear of record in the Office.
 Pleadings Filed:
1. Verified Notice Opposition
Filed within 30 days from publication of mark for opposition
with extension but not to exceed 120 days from publication
2. Answer
Filed within 30 days from receipt of Notice to Answer with
extension but not to exceed 120 days.
3. Reply *
Filing in 10 days from receipt of Answer, non-extendible.
4. Rejoinder *
Filing in 10 days from receipt of Reply, non-extendible.
5. Position Paper or Draft Decision within a non-extendible
period of 10 days from termination of preliminary conference
or receipt of the order
* optional
 US Jurisprudence created 2
requirements in order to have
standing:

(1) real interest in the proceedings; and

(2) reasonable basis for his belief of damage.
 Real Interest Test
- stems from a policy of preventing mere intermeddlers who
do not raise a real controversy from bringing oppositions or
cancellations proceedings.
- legitimate personal interest
- direct and personal stake in the outcome of the opposition.
 Reasonable Belief of Damage

- more than a subjective belief

- must have a reasonable basis in fact
 Ways to show reasonableness of
belief:
1. Opposer alleges that he possesses a trait or
characteristic that is clearly and directly
implicated in the proposed mark.
must be an immutable characteristic or trait

2. Opposer alleges that others also share the

same belief of harm from the proposed mark.
Standing of a trade association
 When and how is the issuance and
publication of certificate?
a. When the period for filing the opposition has expired or,
B. when the Director of Legal Affairs shall have denied the
opposition,
the Office upon payment of the required fee, shall issue the
certificate of registration.

Note: Upon issuance of a certificate of registration, notice

thereof making reference to the publication of the application
shall be published in the IPO Gazette.
Is the prior use of the mark still a
requirement for registration?

No. Actual prior use in commerce in the Philippines has been

abolished as a condition for the registration of a trademark.
(RA 8293)
 When is non-use excused?
1. If caused by circumstances arising independently of the will of the owner.
Lack of funds is not an excuse.

2. A use which does not alter its distinctive character though the use is different from
the form in which it is registered.

3. Use of mark in connection with one or more of the goods/services belonging to

the class in which the mark is registered.

4. The use of a mark by a company related to the applicant/registrant.

5. The use of a mark by a person controlled by the registrant. (Section152, IPC)

 VI. Rights conferred

147.1. The owner of a registered mark shall have the exclusive

right to prevent all third parties not having the owner's
consent from using in the course of trade identical or similar
SECTION 147. Rights Conferred.
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. In case of the use of an identical sign for identical
goods or services, a likelihood of confusion shall be presumed.
 147.2. The exclusive right of the owner of a well-
known mark defined in Subsection 123.1(e) 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 use of
VI. Rights
that mark in relation conferred
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 interests of the owner of
the registered mark are likely to be damaged by such
use.
 VI. Rights conferred

SECTION 148. Use of Indications by Third Parties for

Purposes Other than those for which the Mark is Used.
Registration of the mark shall not confer on the registered
owner the right to preclude third parties from using bona
fide their names, addresses, pseudonyms, a geographical
name, or exact indications concerning the kind, quality,
quantity, destination, value, place of origin, or time of
production or of supply, of their goods or services:
Provided, That such use is confined to the purposes of
mere identification or information and cannot mislead the
public as to the source of the goods or services.
Test to determine confusing similarity
between marks:
1. Dominancy test Focuses on the similarity of the
prevalent features of the competing marks. If the
competing trademark contains the main or essential
or dominant features of another, and confusion is
likely to result, infringement takes place. (Asia
Brewery v. CA, G.R. No. 103543, 5 July 1993)
2.Totality or holistic test Confusing similarity is to
be determined on the basis of visual, aural,
connotative comparisons and overall impressions
engendered by the marks in controversy as they are
encountered in the marketplace.
Test to determine confusing similarity
between marks:
The dominancy test only relies on visual
comparisons between two trademarks
whereas the totality or holistic test relies not
only on the visual but also on the aural and
connotative comparisons and overall
impressions between the two trademarks.
(Societe Des Produits Nestl, S.A. v. CA, G.R.
No. 112012, Apr. 4, 2001)
Trademark

Principles
 Nice Classification
-system by which the trademark applications
are classified.

The Nice Classification (NCL), established by

the Nice Agreement (1957), is an international
classification of goods and services applied for
the registration of marks. The Philippines is
not a party to the Nice Agreement but follows
the Nice Classification.
 RELATED GOODS OR SERVICES
DOCTRINE

There is infringement when there is similar use of

marks on goods that are so related that the public may
be or is actually deceived or misled that the goods
come from the same manufacturer or maker.
Goods are related when they:
1) belong to the same class or have the same
descriptive properties;
2) when they possess the same physical attributes
or essential characteristics with reference to their
form, composition, texture or quality.
 (a) In Arce & Sons, Inc. vs. Selecta Biscuit Company, biscuits were
held related to milk because they were both food products;

(b) In Chua Che vs. Phil. Patents Office, soap and perfume, lipstick
and nail polish are held to be similarly related because they are
common household items;

(c) In Ang vs. Teodoro, the trademark "Ang Tibay" for shoes and
slippers was disallowed to be used for shirts and pants because
they belong to the same general class of goods; and

(d) In Khe vs. Lever Bros. Co., soap and pomade, although
noncompetitive, were held to be similar or belong to the same
class, since both are toilet articles.
 IDEM SONANS RULE

In Latin it means sounding the same or of the same sound

Two names are said to be "idem sonantes" if the attentive ear
finds difficulty in distinguishing them when pronounced
The application of the rule varies from jurisdiction to jurisdiction.
- "Some jurisdictions recognize that the test for determining if
names are idem sonans is whether although spelled differently,
the attentive ear finds difficulty in distinguishing the two names
when pronounced. Others disregard the sound of the names and
predicate their conclusions solely on appearance if the names
involved are written or printed. A still further class of adjudications
takes a modified view that if the name as published both appears
and sounds similar to the real name, then the doctrine is
applicable."
 "Cutex" and "Cuticlean
"SALONPAS" and "Hebe" and "Meje
"LIONPAS" "Kotex" and "Femetex
"Gold Dust" and "Gold "Zuso" and "Hoo Hoo
Drop" "Yusea" and "U-C-A
"Jantzen" and "Jass- "Steinway Pianos" and
Sea" "Steinberg Pianos
"Silver Flash" and "Seven-Up" and
"Supper Flash" "Lemon-Up
"Cascarete" and "Celdura" and
Celborite" "Cordura
"Celluloid" and "Lusolin" and "Sapolin"
"Cellonite"
"Chartreuse" and
"Charseurs"
 SECONDARY MEANING
- a word or phrase originally incapable of
exclusive appropriation with reference to an
article on the market, because geographically or
otherwise descriptive, might nevertheless have
been used so long and so exclusively by one
producer with reference to his article that, in that
trade and to that branch of the purchasing public,
the word or phrase has come to mean that the
article was his product." (Philippine Nut Industry,
Inc. v. Standard Brands, Inc.)
 Philippine Nut Industry, Inc. v. Standard Brands, Inc.

The applicability of the doctrine of secondary meaning

to the situation now before Us is appropriate because
there is oral and documentary evidence showing that
the word PLANTERS has been used by and closely
associated with Standard Brands for its canned salted
peanuts since 1938 in this country. In other words,
there is evidence to show that the term PLANTERS has
become a distinctive mark or symbol insofar as salted
peanuts are concerned, and by priority of use dating as
far back as 1938, respondent Standard Brands has
acquired a preferential right to its adoption as its
trademark warranting protection against its usurpation
by another.
 Kellogg v. National Biscuit Company

Held: Nabisco has no exclusive right to use the term

Shredded Wheat as a trade name, for that is the generic
term of the article which describes it with a fair degree of
accuracy. Since the term is generic, the original maker of
the product acquired no exclusive right to use it. There is no
basis for applying the doctrine of secondary meaning. To
establish a trade name, plaintiff must show more than a
subordinate meaning, but must show that the primary
significance of the term in the minds of the consuming
public is not the product but the producer.
 LYCEUM OF THE PHILIPPINES, INC., vs. COURT OF
APPEALS, et al
This circumstance has been referred to as the distinctiveness into
which the name or phrase has evolved through the substantial and
exclusive use of the same for a considerable period of time. . . . No
evidence was ever presented in the hearing before the Commission
which sufficiently proved that the word 'Lyceum' has indeed
acquired secondary meaning in favor of the appellant. If there was
any of this kind, the same tend to prove only that the appellant had
been using the disputed word for a long period of time. . . . In other
words, while the appellant may have proved that it had been using
the word 'Lyceum' for a long period of time, this fact alone did not
amount to mean that the said word had acquired secondary
meaning in its favor because the appellant failed to prove that it had
been using the same word all by itself to the exclusion of others.
More so, there was no evidence presented to prove that confusion
will surely arise if the same word were to be used by other
educational institutions.
 COLORABLE IMITATION

Such a close or ingenious imitation as to be calculated to

deceive ordinary persons, or such a resemblance to the
original as to deceive an ordinary purchaser giving such
attention as a purchaser usually gives, as to cause him to
purchase the one supposing it to be the other. (Societe des
Produits Nestl, S.A. v. CA, G.R. No. 112012, Apr. 4, 2001)
In determining the likelihood of confusion, the Court must
consider: [a] the resemblance between the trademarks; [b]
the similarity of the goods to which the trademarks are
attached; [c] the likely effect on the purchaser and [d] the
registrants express or implied consent and other fair and
equitable considerations. (Mighty Corporation v. E. & J. Gallo
Winery)
3M v. 3N
 Confusion of goods/services
A persons goods and Exists when one partys
services are purchased
as those of another and
the poorer quality of
the former reflects
adversely on the latters
reputation
Confusingly similar
marks are used on the
same kind of
goods/services
Confusion of business/origin
products or services though
different from that of another,
is such as might reasonably be
assumed to originate from the
latter and the public would
then be deceived into the
belief that there is some
connection between the
parties, which is in fact absent.
Confusingly similar marks are
employed in different or non-
competing goods/services
 McDonalds Corporation v. L.C. Big Mak Burger, Inc.,
et al., G.R. No. 143993, Aug. 18, 2004

These and other factors respondents cite cannot

negate the undisputed fact that respondents use their
Big Mak mark on hamburgers, the same food product
that petitioners sell with the use of their registered
mark Big Mac. Whether a hamburger is single, double
or triple-decker, and whether wrapped in plastic or
styrofoam, it remains the same hamburger food
product. Even respondents use of the Big Mak mark on
non-hamburger food products cannot excuse their
infringement of petitioners registered mark, otherwise
registered marks will lose their protection under the
law.
 WELL KNOWN MARKS

What constitutes an internationally wellknown

mark?
1. Considered by the competent authority of the
Philippines to be wellknown international and in
the Philippines as the mark of a person other than
the applicant or registrant
2. Need not be used or registered in the
Philippines
3. Need not be known by the public at large but
only by relevant sector of the public.
 Q: What does the law provide as regards internationallywell
known marks?

GR: Prohibition on subsequent registration does not include

services and goods of different nature or kind.

XPN:
1. If the internationally wellknown mark is not registered in
the Philippines, the application for registration of a subsequent
or similar mark can be rejected only if the goods or services
specified in the application are similar to those of the
internationally wellknown mark
2. If the internationally wellknown mark is registered in the
Philippines, the application for registration of a subsequent or
similar mark can be refused even if the goods or services
specified in the application are not identical or similar to those of
the internationally wellknown mark
 In determining whether a mark is well-known, the following criteria or any
combination thereof may be taken into account:
(a) the duration, extent and geographical area of any use of the mark, in
particular, the duration, extent and geographical area of any promotion of the
mark, including advertising or publicity and the presentation, at fairs or
exhibitions, of the goods and/or services to which the mark applies;
(b) the market share, in the Philippines and in other countries, of the goods
and/or services to which the mark applies;
(c) the degree of the inherent or acquired distinction of the mark;
(d) the quality-image or reputation acquired by the mark;
(e) the extent to which the mark has been registered in the world;
(f) the exclusivity of registration attained by the mark in the world;
(g) the extent to which the mark has been used in the world;
(h) the exclusivity of use attained by the mark in the world;
(i) the commercial value attributed to the mark in the world;
(j) the record of successful protection of the rights in the mark;
(k) the outcome of litigations dealing with the issue of whether the mark is a
well-known mark; and,
(l) the presence or absence of identical or similar marks validly registered for
or used on identical or similar goods or services and owned by persons other
than the person claiming that his mark is a well-known mark.
 COLLECTIVE MARKS

means any visible sign designated as such in

the application for registration and capable of
distinguishing the origin or any other common
characteristic, 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; (Sec. 40, R.A.
No. 166a)
 Q: What should an application for registration of a collective mark
contain?

1. The application shall designate the mark as a collective mark

2. Accompanied by a copy of the agreement, if any, governing the
use of the collective mark (Sec. 167.2, IPC)

Q: What are the grounds for the cancellation of collective marks?

1. The Court shall cancel the registration of a collective mark if
the person requesting the cancellation proves that only the
registered owner uses the mark,
2. Or that he uses or permits its use in contravention of the
agreements referred to in Subsection 166.2,
3. Or that he uses or permits its use in a manner liable to
deceive trade circles or the public as to the origin or any other
common characteristics of the goods or services concerned (Sec
167.3).
 TRADE NAME or BUSINESS NAME
Any individual name or surname, firm name, device
nor word used by manufacturers, industrialists,
merchants, and others to identify their businesses,
vocations or occupants (Converse rubber Corp. vs.
Universal Rubber Products, GR No. L27425, L30505,
April 28, 1980).
A name or designation may not be used as a trade
name if by its nature or the use to which such name or
designation may be put, it is contrary to public order or
morals and if, in particular, it is liable to deceive trade
circles or the public as to the nature of the enterprise
identified by that name. (Sec 165, IPC)
 What are the limitations on use of trade name or
business name?

A person may not:

1. Use any name or designation contrary to public order
or morals
2. Use a name if it is liable to deceive trade circles or the
public as to the nature of the enterprise identified by that
name. (Sec. 165.1, IPC)
3. Subsequently use a trade name likely to mislead the
public as a third party. (Sec. 165.2, b, IPC)
4. Copy or simulate the name of any domestic product
(for imported products).
5. Copy or simulate a mark registered in accordance with
the provisions of IPC (for imported products).
6. Use mark or trade name calculated to induce the public
to believe that the article is manufactured in the Philippines, or
that it is manufactured in any foreign country or locality other
than the country or locality where it is in fact manufactured.
the imitator will always try to create enough
differences to confuse the Court but enough
similarity to confuse the public.

- Del Monte Corp vs CA citing Baker and

Master Printers Union of New Jersey
 UNFAIR
COMPETITION
What is the right protected
under unfair competition?
A person who has identified in the mind of the
public the goods he manufactures or deals in,
his business or services from those of others,
whether or not a registered mark is employed,
has a property right in the goodwill of the
said goods, business or services so identified,
which will be protected in the same manner as
other property rights. (Sec. 168.1, IPC)
Who are guilty of unfair
competition? (Sec. 168.3, IPC)
1. 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; (Nestle vs.
Dy Jr., G.R. No. 172276, August 8, 2010)
 2. 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

3. 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.
(Cosmos Bottling Corp. vs. NLRC, 88 SCAD 511, 1997)
Distinction between infringement of
trademark from unfair competition?
 Del Monte Corp vs CA
G.R. No. L-78325 January 25, 1990

Private respondent Sunshine Sauce > manufacturer of

sauce > products contained in bottles_including petitioners
bottle bought from junk shops

Sunshine, despite the many choices available to it and

notwithstanding that the caution "Del Monte Corporation,
Not to be Refilled" was embossed on the bottle, still opted
to use the petitioners' bottle to market a product that the
respondent also produces. This clearly shows the private
respondent's bad faith and its intention to capitalize on
the latter's reputation and goodwill and pass off its own
product as that of Del Monte.
Distinction between infringement of
trademark from unfair competition?
Conduct constitutes
unfair competition if
the effect is to pass
off on the public the
goods of one man as
the goods of
another. (Mighty
Corporation v. E. & J.
Gallo Winery, G.R.
No. 154342, July 14,
2004)
Elements of an action for unfair
competition:
1. Confusing similarity in the general
appearance of the goods;

Note: 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.
2. Intent to deceive the public and defraud a
competitor.

Note: The intent to deceive and defraud may be

inferred from the similarity in appearance of the
goods as offered for sale to the public. Actual
fraudulent intent need not be shown.
(McDonalds Corporation v. L.C. Big Mak Burger,
Inc., et al., G.R. No. 143993, Aug. 18, 2004)
Nature of the Offense
Unfair competition is a transitory
or continuing offense under
Section 168 of Republic Act No.
8293. As such, petitioner may
apply for a search warrant in any
court where any element of the
alleged offense was committed,
and may be validly enforced there.
(Sony Computer Entertainment Inc.
v. Supergreen Inc. G.R. No. 161823,
Mar. 22, 2007)
 TRADEMARK
INFRINGEMENT
What is Trademark Infringement?

The unauthorized use in

commerce of a registered
trademark or a copy or colorable
imitation thereof, which results in
the likelihood of confusion among
the consuming public.
What acts constitute Trademark
Infringement?

Sec. 155 of R.A. No. 8293

Any person who shall, without
the consent of the owner of the
registered mark:
What acts constitute Trademark
Infringement?
155.1. Use in commerce any
reproduction, counterfeit, copy, or
colorable imitation of a registered
mark or the same container or a
dominant feature thereof
What acts constitute Trademark
Infringement?
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
What acts constitute Trademark
Infringement?

on or in connection with
which such use is likely to
cause confusion, or to cause
mistake, or to deceive; or
What acts constitute Trademark
Infringement?

155.2. Reproduce, counterfeit,

copy or colorably imitate a
registered mark or a dominant
feature thereof
What acts constitute Trademark
Infringement?
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
What acts constitute Trademark
Infringement?

on or in connection with
which such use is likely to
cause confusion, or to cause
mistake, or to deceive
What acts constitute Trademark
Infringement?
The infringement takes place at the
moment the acts are committed
regardless of whether there is
actual sale of goods or services
using the infringing material.
Trademark Infringement; Elements

1. The trademark being

infringed is registered in
the Intellectual Property
Office;
Take note:

In the case of Coffee Partners v.

San Francisco Coffee & Roastery
[(G.R. No. 169504 (2010)], the
Supreme Court held that:
Take note:

A trade name need not be

registered with the IPO before
an infringement suit may be filed
by its owner against the owner of
an infringing trademark
Take note:

RA 8293 has dispensed with the

registration requirement. Section
165.2 thereof provides that trade
names shall be protected, even
prior to or without registration
with the IPO
Trademark Infringement; Elements

2. The trademark is
reproduced, counterfeited,
copied, or colorably
imitated by the infringer;
Trademark Infringement; Elements

3. The infringing mark is used in connection

with the sale, offering for sale, or advertising
of any goods, business or services; or the
infringing mark 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;
Trademark Infringement; Elements

4. The use or application of the infringing

mark 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
Trademark Infringement; Elements

5. The use or application of the

infringing mark is without the
consent of the trademark owner or
the assignee thereof.
Trademark Infringement

The likelihood of confusion is the

gravamen of the offense of
trademark infringement.
Malice or intent to deceive is NOT
required.
NON-COMPETING
GOODS
Non-competing Goods; Esso Standard
Eastern, Inc. vs. CA, et al.
those which, though they those which, being
are not in actual entirely unrelated, could
competition, are so not reasonably be
related to each other that assumed to have a
it might reasonably be common source
assumed that they
originate from one
manufacturer
confusion of business confusion of business
could arise out of the use could not arise out of the
of similar marks use of similar marks
Non-competing Goods; Esso Standard
Eastern, Inc. vs. CA, et al.

There is infringement of trademark

involving two goods bearing the same
mark or label, even if the said goods are
non-competing, if and only if they are
so related that the public may be, or is
actually, deceived that they originate
from the one maker or manufacturer.
Non-competing Goods; Esso
Standard Eastern, Inc. vs. CA, et al.
Petroleum products and cigarettes
in kind and nature, flow through different
trade channels, and
possibility of confusion is unlikely in the
general appearances of each mark as a
whole
Thus, they cannot be so related in the
context of infringement
Non-competing Goods; Mighty
Corporation v. E. & J. Gallo Winery
In this case, the Supreme Court
enumerated factors in determining
whether goods are related:

2)
4) nature
1) style
3) ofof the
classification
descriptive goods
properties,
of the goods
distribution andphysical
attributes or
marketing of essential
the goods
characteristics of the goods
Non-competing Goods

Each trademark infringement case

presents its own unique set of facts
No single factor is preeminent
It is a weighing and balancing
process
Non-competing Goods

The vast majority of courts today

follow the modern theory or
concept of "related goods" which
the court has likewise adopted and
uniformly recognized and applied.
LIMITATIONS TO
ACTIONS FOR
INFRINGEMENT
Limitations to Remedies

Sec. 159 of R.A. No. 8293

Limitations to Remedies

1) A 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
Registered mark shall have NO EFFECT
Limitations to Remedies

2) Infringer who is engaged solely in the

business of printing the mark or other
infringing materials for others is an
innocent infringer
INJUNCTION against future printing
Limitations to Remedies

3) Infringement is contained in or is part of paid

advertisement in a newspaper, magazine, or other
similar periodical or in an electronic
communication (involves innocent infringers)
INJUNCTION against the presentation of such
advertising matter in future issues or in future
transmissions
 Limitations to Remedies
Instances where Injunctive Relief is NOT available for the
third limitation
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.
What are the remedies available of the
trademark owner against infringers?
1. Civil - may be filed with the RTC. The owner of the
registered mark may ask the court to issue a
preliminary injunction to quickly prevent infringer from
causing damage to his business. Furthermore, the court
will require infringer to pay damages to the owner of
the mark provided defendant is shown to have notice
of the registration of the mark (which is presumed if a
letter R within a circle is appended) and stop him
permanently from using the mark.
2. Criminal - the owner of the trademark may ask the
court to issue a search warrant and in appropriate
cases, remedies available shall also include the seizure,
forfeiture and destruction of the infringing goods and
of any materials and implements the predominant use
of which has been the commission of the offense.

3. Administrative - The remedy is the same as in patent

infringement cases. If the amount of damages claimed
is not less than P200,000.00, the registrant may choose
to seek redress against the infringer by filing an
administrative action against the infringer with the
Bureau of Legal Affairs.
 How is the amount of damages in a civil
action for infringement ascertained?

The owner of a trademark which has been infringed is

entitled to actual damages:
1. the reasonable profit which the complaining party
would have made, had the defendant not infringed his
rights,
2. the profit which the defendant actually made out of the
infringement,
3. 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.
Sec. 160. Right of Foreign Corporation to Sue in
Trademark or Service Mark Enforcement Action.

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. (Sec.
21-A, R. A. No. 166a)
 What court has jurisdiction over
violations of intellectual property
rights?

Sec. 163. Jurisdiction of Court.

All actions under Sections 150, 155,
164, and 166 to 169 shall be brought
before the proper courts with
appropriate jurisdiction under existing
laws. (Sec. 27, R. A. No. 166)
Sec 170 - Penalties

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)