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TRADEMARKS,

service marks and


trade names
Secs. 121 - 170
tRADEMARKS
any distinctive word, name, symbol, sign or device, or any
combination thereof adopted and used by a manufacturer or
merchant of goods to identify and distinguish them from those
manufactured, sold or dealt in by others.
Trademarks And service marks
"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
Collective mark
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
TRADENAME
the name or designation identifying or distinguishing an
enterprise
Sec. 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.
BIRKENSTOCK ORTHOPAEDIE GMBH AND CO. KG
VS. PHILIPPINE SHOE EXPO MARKETING
CORPORATION G.R. No. 194307, November 20, 2013
It is not the application or registration of a trademark that vests
ownership thereof, but it is the ownership of a trademark that confers
the right to register the same.
Functions Of Trademarks
PRIBHDAS J. MIRPURI VS. COURT OF APPEALS, DIRECTOR OF
PATENTS AND THE BARBIZON CORPORATION G.R. No. 114508,
November 19, 1999
(1) they indicate origin or ownership of the articles to which they are attached;
(2) they guarantee that those articles come up to a certain standard of quality;
and
(3) they advertise the articles they symbolize
Non-registrable marks Sec. 123
(a). Consists of immoral, deceptive or scandalous matter, or matter
which may disparage or falsely suggest a connection with persons,
living or dead, institutions, beliefs, or national symbols, or bring them
into contempt or disrepute.
FREDCO MANUFACTURING CORPORATION VS. PRESIDENT AND FELLOWS
OF HARVARD COLLEGE (HARVARD UNIVERSITY) G.R. No. 185917, June 01,
2011

What Fredco has done in using the mark


"Harvard" and the words "Cambridge,
Massachusetts," "USA" to evoke a "desirable
aura" to its products is precisely to exploit
commercially the goodwill of Harvard
University without the latter's consent.
FREDCO MANUFACTURING CORPORATION VS. PRESIDENT AND FELLOWS OF
HARVARD COLLEGE (HARVARD UNIVERSITY) G.R. No. 185917, June 01, 2011
Rule 102. Criteria for determining whether a mark is well-known. 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;
FREDCO MANUFACTURING CORPORATION VS. PRESIDENT AND FELLOWS OF
HARVARD COLLEGE (HARVARD UNIVERSITY) G.R. No. 185917, June 01, 2011
(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.
Non-registrable marks Sec. 123
(b). Consists of the flag or coat of arms or other insignia of the
Philippines or any of its political subdivisions, or of any foreign nation,
or any simulation thereof.
Non-registrable marks Sec. 123
(c). Consists of a name, portrait or signature identifying a particular
living individual except by his written consent, or the name, signature,
or portrait of a deceased president of the Philippines, during the life of
his widow, if any, except by written consent of the widow
Non-registrable marks Sec. 123
(d) . Is identical with a registered mark belonging to a different
proprietor or a mark with an earlier filing or priority date, in respect
of:
(i) the same goods or services, or
(ii) closely related goods or services, or
(iii) if it nearly resembles such a mark as to be likely to deceive or
cause confusion;
Non-registrable marks Sec. 123
(e) is identical with, or confusingly similar to, or constitutes a translation of a mark
which is considered by the competent authority of the Philippines to be well-known
internationally and in the Philippines, whether or not it is registered here, as being
already the mark of a person other than the applicant for registration, and used for
identical or similar goods or services: provided, that in determining whether a mark is
well-known, account shall be taken of the knowledge of the relevant sector of the
public, rather than of the public at large, including knowledge in the Philippines which
has been obtained as a result of the promotion of the mark;
Non-registrable marks Sec. 123
(f) is identical with, or confusingly similar to, or constitutes a translation of a mark
considered well-known in accordance with the preceding paragraph, which is
registered in the Philippines with respect to goods or services which are not
similar to those with respect to which registration is applied for: provided, that
use of the mark in relation to those goods or services would indicate a connection
between those goods or services, and the owner of the registered mark: provided
further, that the interests of the owner of the registered mark are likely to be
damaged by such use;
Non-registrable marks Sec. 123
(g) is likely to mislead the public, particularly as to the nature, quality,
characteristics or geographical origin of the goods or services;
(h) consists exclusively of signs that are generic for the goods or services
that they seek to identify;
(i) consists exclusively of signs or of indications that have become
customary or usual to designate the goods or services in everyday
language or in bona fide and established trade practice;
Non-registrable marks Sec. 123
(j) consists exclusively of signs or of indications that may serve in
trade to designate the kind, quality, quantity, intended purpose,
value, geographical origin, time or production of the goods or
rendering of the services, or other characteristics of the goods or
services;
Non-registrable marks Sec. 123
(k) consists of shapes that may be necessitated by technical factors
or by the nature of the goods themselves or factors that affect their
intrinsic value;
(l) consists of color alone, unless defined by a given form; or
(m) is contrary to public order or morality.
Non-registrable marks Sec. 123
GSIS FAMILY BANK - THRIFT BANK [FORMERLY COMSAVINGS BANK, INC.VS. BPI FAMILY
BANK
G.R. No. 175278, September 23, 2015

Generic marks are commonly used as the name or description of a kind


of goods
Descriptive marks convey the characteristics, function, qualities or
ingredients of a product to one who has never seen it or does not know
it exists
Suggestive marks are marks which merely suggest some quality or
ingredient of goods
Arbitrary marks are words or phrases used as a mark that appear to be
random in the context of its use.
fanciful or coined phrase which may properly and legally be appropriated
as a trade-mark or trade-name
Non-registrable marks Sec. 123
TAIWAN KOLIN CORPORATION, LTD., VS. KOLIN ELECTRONICS CO., INC.,
G.R. No. 209843, March 25, 2015

issue : whether or not petitioner is entitled to its trademark registration of KOLIN


over its specific goods of television sets and DVD players
emphasis should be on the similarity of the products involved and not on
the arbitrary classification or general description of their properties or
characteristics.
in Dy Buncio v. Tan Tiao Bok
the ordinary purchaser was defined as one accustomed to buy,
and therefore to some extent familiar with, the goods in question.
The simulation, in order to be objectionable, must be such as
appears likely to mislead the ordinary intelligent buyer who has a
need to supply and is familiar with the article that he seeks to purchase.[

UFC PHILIPPINES, INC.VS. FIESTA BARRIO


MANUFACTURING CORPORATION
G.R. No. 198889, January 20, 2016

Petitioner Nutri-Asia, Inc. (petitioner) is a corporation duly organized


and existing under Philippine laws.[5] It is the emergent entity in a
merger with UFC Philippines, Inc. that was completed on February 11,
2009.[6] Respondent Barrio Fiesta Manufacturing Corporation
(respondent) is likewise a corporation organized and existing under
Philippine laws.
UFC PHILIPPINES, INC.VS. FIESTA BARRIO MANUFACTURING CORPORATION
G.R. No. 198889, January 20, 2016

The ownership of a trademark is acquired by its registration and its actual use by
the manufacturer or distributor of the goods made available to the purchasing public.

A certificate of registration of a mark, once issued, constitutes prima facieevidence


of the validity of the registration, of the registrant's ownership of the mark, and of the
registrant's exclusive right to use the same in connection with the goods or services
and those that are related thereto specified in the certificate.
UFC PHILIPPINES, INC.VS. FIESTA BARRIO MANUFACTURING CORPORATION
G.R. No. 198889, January 20, 2016

A.M. No. 10-3-10-SC, or the Rules of Procedure for Intellectual Property Rights Cases

Rule 18
SECTION 3. Presumption of Likelihood of Confusion. Likelihood of confusion shall be presumed in case an identical
sign or mark is used for identical goods or services.

SECTION 4. Likelihood of Confusion in Other Cases. In determining whether one trademark is confusingly similar
to or is a colorable imitation of another, the court must consider the general impression of the ordinary purchaser,
buying under the normally prevalent conditions in trade and giving the attention such purchasers usually give in
buying that class of goods. Visual, aural, connotative comparisons and overall impressions engendered by the marks
in controversy as they are encountered in the realities of the marketplace must be taken into account. Where there
are both similarities and differences in the marks, these must be weighed against one another to see which
predominates.
UFC PHILIPPINES, INC.VS. FIESTA BARRIO
MANUFACTURING CORPORATION
G.R. No. 198889, January 20, 2016

"Colorable imitation" denotes 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.
UFC PHILIPPINES, INC.VS. FIESTA BARRIO MANUFACTURING CORPORATION
G.R. No. 198889, January 20, 2016

.Tests In determining similarity and likelihood of confusion:


1. Dominancy Test and 2. Holistic or Totality Test.
The Dominancy Test focuses on the similarity of the prevalent or dominant features of
the competing trademarks that might cause confusion, mistake, and deception in the
mind of the purchasing public. Duplication or imitation is not necessary; neither is it
required that the mark sought to be registered suggests an effort to imitate. Given
more consideration are the aural and visual impressions created by the marks on the
buyers of goods, giving little weight to factors like prices, quality, sales outlets, and
market segments.
UFC PHILIPPINES, INC.VS. FIESTA BARRIO MANUFACTURING CORPORATION
G.R. No. 198889, January 20, 2016

. Relative to the question on confusion of marks and trade names, jurisprudence has
noted two (2) types of confusion, viz.: (1) confusion of goods (product confusion),
where the ordinarily prudent purchaser would be induced to purchase one product in
the belief that he was purchasing the other; and (2) confusion of business (source or
origin confusion), where, although the goods of the parties are different, the product,
the mark of which registration is applied for by one party, is such as might reasonably
be assumed to originate with the registrant of an earlier product, and the public would
then be deceived either into that belief or into the belief that there is some connection
between the two parties, though inexistent.
Prosource International Inc v. Horphag Research Management
GR No. 180073 Nov 25, 2009

PYCNOGENOL vs PCO-GENOLS
ipo BFAD
dominancy test vs holistic test
similarity of the prevalent features consideration of the entirety
aural and visual impressions labels and packaging
prices, quality, sales outlets
market segments
disclaimers Sec. 126

The Office may allow or require the applicant to disclaim an


unregistrable component of an otherwise registrable mark but such
disclaimer shall not prejudice or affect the applicants or owners
rights then existing or thereafter arising in the disclaimed matter, nor
such shall disclaimer prejudice or affect the applicants or owners
right on another application of later date if the disclaimed matter
became distinctive of the applicants or owners goods, business or
services.
Declaration of actual use Sec. 124.2

The applicant or the registrant shall file a declaration of actual use of


the mark with evidence to that effect, as prescribed by the
Regulations within three (3) years from the filing date of the
application. Otherwise, the application shall be refused or the mark
shall be removed from the Register by the Director.
Priority right Sec. 131

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.
Certificate of registration Sec. 138

prima facie evidence of the validity of the registration,


registrants ownership of the mark
registrants exclusive right to use the same in connection with the
goods or services and those that are related thereto specified in the
certificate.
Valid for 10 years
Rights conferred Sec. 147
The owner of a registered mark shall have the 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.
In case of the use for identical sign for identical goods or services, a
likelihood of confusion shall be presumed.
Rights conferred Sec. 147
147.2. The exclusive right of the owner of awell-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 that mark in relation to those goods or services
would indicate a connection between those goods or services and
the owner of the registered mark:
Provided, further, That the interests of the owner of the registered
mark are likely to be damaged by such use.
Limitation: Use by third parties Sec. 148

Use in good faith of 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:
a. For identification or information purposes only
b. Cannot mislead the public as to the source of the goods or services.
Limitation: Use by third parties Sec. 159

Prior user in good faith -


-before the filing date or the priority date, for the purposes of his
business or enterprise:
Printer in good faith
Publisher in good faith
Limitation: medicines ra 9502

Sec 147. 1. & SEC. 159.4


There shall be no infringement of trademarks or tradenames of imported or sold
patented drugs and medicines allowed under Sec. 72.1 of this Act, as well as
imported or sold off-patent drugs and medicines: Provided, That, said drugs and
medicines bear the registered marks that have not been tampered, unlawfully
modified, or infringed upon, under Sec. 155 of this Code.
Assignment and transfer of rights sec. 149

An application or registration of a mark may be assigned or transferred with or


without the transfer of the business using the mark.
in writing
Recorded in the IPO + fee
License contracts sec. 150

shall provide for effective control by the licensor of the quality of the goods or
services of the licensee in connection with which the mark is used.
If the license contract does not provide for such quality control, or if such quality
control is not effectively carried out, the license contract shall not be valid.
license contract shall be submitted to the IPO FOR RECORDING (CONFIDENTIAL)
NOT VALID against third parties until such recording is effected.
CANCELLATION OF MARKs Sec. 151
Petition to Cancel filed by an aggrieved party with BLA
Within 5 years from date of registration
Mark becomes generic, abandoned, fraudulently obtained, contrary
to law, misrepresents the source
Failure to use the mark within the Philippines for an uninterrupted
period of at least 3 yrs
CANCELLATION OF MARKs Sec. 151
151.2. Notwithstanding the foregoing provisions, the court or the
administrative agency vested with jurisdiction to hear and adjudicate any action
to enforce the rights to a registered mark shall likewise exercise jurisdiction to
determine whether the registration of said mark may be cancelled in
accordance with this act. The filing of a suit to enforce the registered mark with
the proper court or agency shall exclude any other court or agency from
assuming jurisdiction over a subsequently filed petition to cancel the same
mark. On the other hand, the earlier filing of petition to cancel the mark with
the bureau of legal affairs shall not constitute a prejudicial question that must
be resolved before an action to enforce the rights to same registered mark may
be decided. (Shangri-La Intl v CA GR#111580 & 114802 June 21, 2001)
CANCELLATION OF MARK

Sec. 152. Non-use of a Mark When Excused. -


152.1. Non-use of a mark may be excused if caused by circumstances arising independently of
the will of the trademark owner. Lack of funds shall not excuse non-use of a mark.
152.2. The use of the mark in a form different from the form in which it is registered, which
does not alter its distinctive character, shall not be ground for cancellation or removal of the
mark and shall not diminish the protection granted to the mark.
152.3. The use of a mark in connection with one or more of the goods or services belonging to
the class in respect of which the mark is registered shall prevent its cancellation or removal in
respect of all other goods or services of the same class.
152.4. The use of a mark by a company related with the registrant or applicant shall inure to
the latters benefit, and such use shall not affect the validity of such mark or of its registration:
provided, that such mark is not used in such manner as to deceive the public. If use of a mark
by a person is controlled by the registrant or applicant with respect to the nature and quality
of the goods or services, such use shall inure to the benefit of the registrant or applicant. (N)
Trademark infringementSec.155

USE IN COMMERCE of registered mark or container any


Reproduction
Counterfeit
Copy
Colorable imitation of a dominant feature
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
*without the consent of the owner
Trademark infringementSec.155

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
*without the consent of the owner
Trademark infringementSec.155

USE IN COMMERCE of registered mark or container


William c. Yao, Sr., Et al, vs PEOPLE, PETRON CORP., Et al., GR No. 168306, June
19, 2007
Republic Gas Corp, et al. Vs. Petron Corp, et al. G.R. No. 194062, June 17, 2013
As can be gleaned in Section 155.1, mere unauthorized use of a container
bearing a registered trademark in connection with the sale, distribution or
advertising of goods or services which is likely to cause confusion, mistake or
deception among the buyers/consumers can be considered as trademark
infringement.
Trademark infringementSec.155
Prosource International Inc v. Horphag Research Management
GR No. 180073 Nov 25, 2009
Elements of infringement:
(1) the trademark being infringed is registered in the intellectual property office; however, in
infringement of trade name, the same need not be registered;
(2) the trademark or trade name is reproduced, counterfeited, copied, or colorably imitated by
the infringer;
(3) the infringing mark or trade name is used in connection with the sale, offering for sale, or
advertising of any goods, business or services; or 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;
(4) 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
(5) it is without the consent of the trademark or trade name owner or the assignee thereof.
Trademark infringementSec.155
TRADEMARK DILUTION
LEVI STRAUSS & CO., VS. CLINTON APPARELLE, INC,
G.R. NO. 138900, September 20, 2005

Trademark dilution is the lessening of the capacity of a


famous mark to identify and distinguish goods or services,
regardless of the presence or absence of: (1) competition
between the owner of the famous mark and other parties; or
(2) likelihood of confusion, mistake or deception.
Trademark infringementSec.155
TRADEMARK DILUTION
LEVI STRAUSS & CO., VS. CLINTON APPARELLE, INC,
G.R. NO. 138900, September 20, 2005

Requirements:
(1) the trademark sought to be protected is famous and distinctive;
(2) the use by respondent of "paddocks and design" began after the
petitioners' mark became famous; and
(3) such subsequent use defames petitioners' mark.
Trademark infringement REMEDIES
DAMAGES AND INJUNCTION Sec 156
A reasonable profit
Profit made by defendant
Reasonable % of gross sales
IMPOUND EVIDENCE OF SALES Sec 156
Destruction of infringing materials Sec 157
Presumption in trademark infringement cases Sec 158
Registered Mark


FALSE /FRAUDULENT DECLARATION Sec. 162

Sec. 162. Action for False or Fraudulent Declaration. - Any person who
shall procure registration in the Office of a mark by a false or
fraudulent declaration or representation, whether oral or in writing,
or by any false means, shall be liable in a civil action by any person
injured thereby for any damages sustained in consequence thereof.
Trade names Sec. 165

121.3. "Trade name" means the name or designation identifying or


distinguishing an enterprise;
business identifier.
While trademark distinguishes ones goods from the sea of similar
goods, trade name distinguished ones business entity from the rest
of the industry.
Trade names Sec. 165

165.1. 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.
Trade names Sec. 165
Protected even without registration
165.2. (A) notwithstanding any laws or regulations providing for any obligation to register
trade names, such names shall be protected, even prior to or without registration, against
any unlawful act committed by third parties.
(B) in particular, any subsequent use of the trade name by a third party, whether as a trade
name or a mark or collective mark, or any such use of a similar trade name or mark, likely to
mislead the public, shall be deemed unlawful.
165.4. Any change in the ownership of a trade name shall be made with the transfer of the
enterprise or part thereof identified by that name.
Trade names Sec. 165

Protected even without registration


Coffee partners, inc v San Francisco Coffee & roastery Inc
G.R. No. 169504 March 3, 2010
Unfair competition Sec. 168

168.1. 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.
Unfair competition Sec. 168

168.2. Any person who shall employ deception or any other means contrary to
good faith by which he shall pass off the goods manufactured by him or in which
he deals, or his business, or services for those of the one having established such
goodwill, or who shall commit any acts calculated to produce said result, shall be
guilty of unfair competition, and shall be subject to an action therefor.
Unfair competition Sec. 168

168.3. In particular, and without in any way limiting the scope of protection against unfair
competition, 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;
.
Unfair competition Sec. 168
168.3. In particular, and without in any way limiting the scope of protection against unfair
competition, the following shall be deemed guilty of unfair competition:
(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.
Unfair competition Sec. 168

Coca-cola Bottlers, Phils., Inc. (Ccbpi), Naga Plant, Vs. Quintin J.


Gomez, A.K.A. "Kit" Gomez And Danilo E. Galicia, A.K.A. "Danny
Galicia," G.R. No. 154491, November 14, 2008
Hoarding
Unfair competition Sec. 168

Mcdonalds Corporation Vs. L.C. Big Mak Burger, Inc.,


G.R. No. 143993, August 18, 2004

Elements of Unfair competition:


(1) confusing similarity in the general appearance of the goods,
(2) intent to deceive the public and defraud a competitor
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.
Unfair competition vs trademark infringement
Del Monte Corp Vs. Court Of Appeals And Sunshine Sauce
G.R. No. 78325, January 25, 1990
(1) infringement of trademark is the unauthorized use of a trademark, whereas
unfair competition is the passing off of one's goods as those of another.
(2) in infringement of trademark fraudulent intent is unnecessary, whereas in unfair
competition fraudulent intent is essential.
(3) in infringement of trademark the prior registration of the trademark is a
prerequisite to the action, whereas in unfair competition registration is not necessary.
Unfair competition vs trademark infringement

Finding (or absence) of trademark infringement coincides with finding (or


absence of) unfair competition.
Ana Ang v Toribio Teodoro Dec 14, 1942
Pearl & dean v shoemart Aug 15, 2003
Unfair competition vs trademark infringement
Mighty Corp v EJ Gallo
It cannot be generally stated that there is unfair competition merely
because products in dispute are sold under the same brand
Shell co. v insular petroleum 120 Phil. 434,439 (1964)
The universal test question is whether the public is likely to be deceived.
Nothing less than conduct tending to pass off one mans goods or business
as that of another constitutes unfair competition. Actual or probable
deception and confusion on the part of customers by reason of
defendants practices must always appear.
Unfair competition vs product brands

Converse Rubber Corp v Jacinto Rubber & plastics co. GR Nos L-


27425 & 30505 April 28, 1980

Products sold under dissimilar brands may constitute unfair competition


Unfair competition vs used containers

DEL MONTE CORPORATION, VS. COURT OF APPEALS AND SUNSHINE SAUCE


MANUFACTURING INDUSTRIES G.R. No. 78325, January 25, 1990
Use of second-hand containers may constitute unfair competition
Shell co. v insular petroleum 120 Phil. 434,439 (1964)
Use of second-hand containers may not constitute unfair competition
Unfair competition under article 28 Civil code

Willaware Products corp v jesichris mftg corp gr no. 195549


sept 3, 2014
Article 28 of the civil code provides that unfair competition in agricultural,
commercial or industrial enterprises or in labor through the use of force,
intimidation, deceit, machination or any other unjust, oppressive or high-handed
method shall give rise to a right of action by the person who thereby suffers
damage.
False designation of origin sec. 169
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;
Chester Uyco v Vicente Lo GR No. 202423 Janurary 28, 2013
Juno Batistis v Pp GR No. 181571 December 16, 2009
False designation of origin sec. 169
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:
(b) in commercial advertising or promotion, misrepresents the nature, characteristics,
qualities, or geographic origin of his or her or another persons 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 likely to be damaged by such act.
penalty sec. 170

Trademark infringement, unfair competition, false designation

Civil damages
Administrative sanctions
Imprisonment of 2-5 yrs + fine P50,000-P200,000
Criminal penalty sec. 170

JUNO BATISTIS VS. PEOPLE OF THE PHILIPPINES G.R. No. 181571,


December 16, 2009

Indeterminate penalty + fine