INTELLECTUAL
PROPERTY LAW
REPUBLIC ACT 8293
INTELLECTUAL PROPERTY CODE OF
THE PHILIPPINES
The term “intellectual property rights” consists of:

a) Copyright and Related Rights;

b) Trademarks and Service Marks;

c) Geographic Indications;

d) Industrial Designs;

e) Patents;

f) Layout-Designs (Topographies) of Integrated Circuits; and

g) Protection of Undisclosed Information (n, TRIPS).
TRADEMARK
 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.
"Jollibee"
TRADE MARK VS. TRADE NAME
SERVICE MARK
TRADEMARK
TRADE NAME
Goods or services offered by a proprietor or
enterprise/ are designated by trademark
(goods) or service marks (services).
A natural or artificial person who does business
and produces or performs the goods or services
designated by trademark or service mark.
Refers to the goods.
Refers to business and its goodwill.
***Acquired only by registration.
***Need not be registered.
COLLECTIVE MARK
A "collective mark" or collective trade‐name" is a mark or
trade‐name used by the members of a cooperative, an
association or other collective group or organization. (Sec. 40,
R.A. 166)
Functions of Trademark
 To
point out distinctly the origin or ownership of the articles to which
it is affixed.
 To
prevent fraud and imposition. (Etepha v. Director of Patents, G.R.
No. L‐20635, Mar. 31, 1966)
ACQUISITION OF OWNERSHIP OF MARK
* Marks are acquired solely through registration.
What marks may be registered?

Any word, name, symbol, emblem, device, figure, sign, phrase, or any
combination thereof except those expressly provided as non-registrable
under the IPL.
What are the requirements for a mark to be registered?
A visible sign (not sounds or scents);
and
 Capable of distinguishing one’s goods and services from another.

ACQUISITION AND OWNERSHIP OF TRADE NAME
How are trade names acquired?
 Trade
names or business names are acquired
through adoption and use. Registration is not
required. (Sec. 165, IPC)
QUESTION: INFRINGEMENT; TRADEMARK, COPYRIGHT
After disposing of his last opponent in only two rounds in Las Vegas, the
renowned Filipino boxer Sonny Bachao arrived at the Ninoy Aquino International
Airport met by thousands of hero-worshipping fans and hundreds of media
photographers. The following day, a colored photograph of Sonny wearing a
black polo shirt embroidered with the 2-inch Lacoste Crocodile logo appeared on
the front page of every Philippine newspaper.
Lacoste International, the French firm that manufactures Lacoste apparel and
owns the Lacoste trademark, decided to cash in on the universal popularity of the
boxing icon. It reprinted the photographs, with the permission of the newspaper
publishers, and went on a world-wide blitz of print commercials in which Sonny is
shown wearing a Lacoste shirt alongside the phrase ―Sonny Bachao just loves
Lacoste.
When Sonny sees the Lacoste advertisements, he hires you as lawyer and asks
you to sue Lacoste International before a Philippine court: for trademark
Infringement in the Philippines because Lacoste International used his image
without his permission. What will be your advise to Sonny?
ANSWER:
Sonny Bachao cannot sue for infringement of trademark. The
photographs showing him wearing a Lacoste shirt were not
registered as a trademark (Pearl & Dean (Phil.), Inc. v. Shoemart,
Inc., 409 SCRA 231 (2003).
NON-REGISTRABLE MARKS
1. Consists of immoral, deceptive or scandalous matter or falsely suggest a
connection with persons, institutions, beliefs, or national symbols;
2. 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;
3. 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 except by written consent
of the widow;
4.
Identical with a registered mark belonging to a different proprietor or a mark
with an earlier filing or priority date, in respect of:
The same goods or services, or
Closely related goods or services, or
If it nearly resembles such a mark as to be likely to deceive or cause
confusion;
Is
there a difference between a filing date and priority
date/right?
 The
filing date is the date the office has received the
application when all the requirements provided by law
are complied with
 priority
date/right is given to the person who was able to
register a TM in the Philippines or foreign countries
pursuant to the filing date in which said corporation was
able to register the same.
Example:
January 2, 2009- corporation organized and existing in Japan filed
an application for the TM “Nike” in Japan;
March 2, 2009- a domestic corporation in the Philippines applied for
the same TM registration;
April 2, 2009-the Japanese corporation applied in the Philippines an
application for registration of the TM “Nike”.
= the Japanese corporation has the priority right over the same TM
because it was the first to apply in Japan.
Further, both the Japanese Corporation and the Philippines are
members of the Paris Convention.
5. Is identical with an internationally well‐ known mark, whether or not
it is registered here, used for identical or similar goods or services
6. Is identical with an internationally well‐ known mark which is
registered in the Philippines with respect to non‐similar goods or
services. Provided, that the interests of the owner of the registered mark
are likely to be damaged by such use
7. Is likely to mislead the public as to the nature, quality,
characteristics or geographical origin of the goods or services;
8. Consists exclusively of signs that are generic for the goods or
services that they seek to identify;
9. Consists exclusively of signs that have become customary or
usual to designate the goods or services in everyday language and
established trade practice;
10. (DESCRIPTIVE MARKS) Consists exclusively 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
11. 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
12. Consists of color alone, unless defined by a given form; or
13. Is contrary to public order or morality.
(Sec. 123)
QUESTION:
X
applies for registration in his favor the tradename “Loving
Care” for a hair dye on the ground that he has been using said
tradename for almost 3 years before filing his application.
Y
opposes the application on the ground that he has been
using the trademark “Loving Care” with the same design for
hair pomade which is registered in his name since 1963.
X
replied that although the said trademark was registered in Y’s
name it was however, for a different article.
 Can
X’s application be sustained? Reasons.
 X’s
application cannot be sustained. Although the
trademark he applied for is for a different article, hair dye
and hair pomade are both preparations for hair
grooming, and the use of the same mark for both is likely
to confuse or deceive purchasers as to the origin and
source of the goods.
QUESTION:
 In
1988, the FDA approved the labels submitted by Turbo
Corporation for its new drug brand name, “Axilon”. Turbo is now
applying with the Bureau of Patents, Trademarks and Technology
Transfer for the registration of said brand name.
 It
was subsequently confirmed that “Accilonne” is a generic term for
a class of anti-fungal drugs and is used as such by the medical
professional and the pharmaceutical industry, and that it is used as
generic chemical name in various scientific and professional
publications. A competing drug manufacturer asks you to contest
the registration of the brand name “Axilon” by Turbo.
 What
will be your advice?
ANSWER:
 The
application for registration by Turbo Corporation may
be contested. The Trademark Law would not allow the
registration of a trademark which when applied to or used
in connection with his products is merely descriptive of
them. Confusion can result from the use of “Axilon” as the
generic product itself.
Exception: MARKS ACQUIRING SECONDARY MEANING
When descriptive or generic terms may be registered
because it 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 IPO 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. (SECTION 123.2)
doctrine of secondary meaning

This doctrine is to the effect that a word or phrase originally
incapable of exclusive appropriation with reference to an
article on the market, because it is geographical or
otherwise descriptive, may nevertheless be used
exclusively by one producer with reference to his article so
long as 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. (G. and C. Merriam Co. v. Saalfield,
198 F. 369, 373, cited in Ang v. Teodoro, G.R. No. L‐48226,
Dec. 14, 1942)
ARCE SONS AND COMPANY vs. SELECTA BISCUIT COMPANY, INC., ET AL.
FACTS:

Selecta Biscuit Company, Inc. (respondent), filed with the Philippine Patent Office a
petition for the registration of the word "SELECTA" as trade-mark to be use in its bakery
products alleging that it is in actual use thereof for not less than two months before said
date.

Petitioner filed its opposition contending that:
(1)
the mark "SELECTA" had been continuously used by him in the manufacture and sale
of its products, including cakes, bakery products, milk and ice cream from the time of
its organization and even prior thereto by its predecessor-in-interest;
(2)
that the mark "SELECTA" has already become identified with name of the petitioner
and its business;
(3)
that petitioner had warned respondent not to use said mark because it was already
being used by the former;
(4)
that respondent is using the word "SELECTA" as a trade-mark as bakery products in
unfair competition with the products of petitioner thus resulting in confusion in trade;
(5)
that the mark to which the application of respondent refers has striking resemblance,
both in appearance and meaning, to petitioner's mark as to be mistaken therefor by
the public and cause respondent's goods to be sold as petitioner's;
RULING:

The word 'SELECTA', it is true, may be an ordinary or common word in the sense
that it may be used or employed by any one in promoting his business or
enterprise, but once adopted or coined in connection with one's business as an
emblem, sign or device to characterize its products, or as a badge of
authenticity, it may acquire a secondary meaning as to be exclusively
associated with its products and business.2

In this sense, its use by another may lead to confusion in trade and cause
damage to its business. And this is the situation of petitioner when it used the
word 'SELECTA' as a trade-mark. In this sense, the law gives it protection and
guarantees its use to the exclusion of all others (G. & C. Merriam Co. v. Saalfield,
198 F. 369, 373).
Ang v. Teodoro (G.R. No. L-48226)
Facts:

Teodoro has long been using ‘Ang Tibay’ both as trademark and tradename
in the manufacture and sale of its slippers, shoes and indoor baseballs when
he formally registered it.

Meanwhile, petitioner Ang registered the same trademark ‘Ang Tibay’ for its
products of pants and shirts.

Teodoro moved to cancel the registration of Ang’s mark.

Ang argues the validity of the mark being descriptive; that it had not
acquired secondary meaning in favor of Teodoro; and that there can be no
infringement/unfair competition because the goods are not similar.
Issues:

(1) Whether or not ‘ANG TIBAY’ is a descriptive term which is not registrable.

(2) Whether or not the trademark ‘ANG TIBAY’ has acquired a secondary
meaning.
ANSWER:
(1) NO. The phrase “Ang Tibay” is an exclamation denoting administration of strength
or durability. For instance, one who tries hard but fails to break an object exclaims,
“Ang tibay!” (How strong!”)
The phrase “ang tibay” is never used adjectively to define or describe an object.
One does not say, “ang tibay sapatos” or “sapatos ang tibay” to mean “durable
shoes,” but “matibay na sapatos” or “sapatos na matibay.”
From all of this we deduce that “Ang Tibay” is not a descriptive term within the
meaning of the Trade-Mark Law but rather a fanciful or coined phrase which may
properly and legally be appropriated as a trademark or tradename.
(2) NO, it is unnecessary to apply here the doctrine of “secondary meaning” in
trade-mark parlance. This doctrine is to the effect that a word or phrase originally
incapable of exclusive appropriation with reference to an article of 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.
We have said that the phrase “Ang Tibay,” being neither geographic nor
descriptive, was originally capable of exclusive appropriation as a trade-mark.
***But were it not so, the application of the doctrine of secondary
meaning made by the Court of Appeals could nevertheless be fully
sustained because, in any event, by respondent’s long and exclusive
use of said phrase with reference to his products and his business,
it has acquired a proprietary connotation.
Other marks which may be registered:
 COINED/CONTRACTIONS-
marks may be registered if they
are contractions or coined from generic or descriptive
terms.
 ARBITRARY-
used in arbitrary or fanciful manner.
Ex. Ivory (generic for elephant tusk) may be registered as
TM for soap.
Papa for “ketchup”
PARIS CONVENTION ON TRADEMARKS
1. National Treatment Principle -foreign nationals are to be given the same
treatment in each of the member countries as that country makes available in
its own citizens.
-specifically members of the WTO’s Agreement on Trade-Related Aspects of
Intellectual Property Rights (TRIPS)
2. Right of Priority – any person who has duly filed registration for trademark
shall enjoy a right of priority of 6 months (Rule 203, Trademark Rules)
3. Protection against Unfair Competition
4. Protection of Tradenames – protected in all countries without obligation of
filing or registration.
5. Protection of Well‐Known Marks
WHAT ARE INTERNATIONALLY “WELL-KNOWN” MARKS?
a.
Considered by competent authority of the Philippines to be
“well-known” internationally and in the Philippines as the mark
of a person other than an applicant or registrant;
b.
Need not be used or registered in the Philippines;
c.
Need not be known by the public at large but only by
relevant sector of the public.
QUESTION:
T is the registered trademark owner of “CROCOS” which he uses on his
ready-to-wear clothes. Banking on the popularity of T’s trademark, B came
up with his own “CROCOS” mark, which he then used for his “CROCOS”
burgers. T now sues B for trademark infringement but B argues that his
product is a burger, hence, there is no infringement. Is B correct?
a. No, since the owner of a well-known mark registered in the Philippines
has rights that extends even to dissimilar kinds of goods.
b. Yes, since the right of the owner of a well-known mark registered in the
Philippines does not extend to goods which are not of the same kind.
c. Yes, as B was in bad faith in coming up with his own “CROCOS” mark.
d. No, since unlike T, he did not register his own “CROCOS” mark for his
product.
ANSWER:
 a.
No, since the owner of a well-known mark registered in
the Philippines has rights that extends even to dissimilar
kinds of goods.
INTERNATIONALLY “WELL-KNOWN” MARKS
-
In the case of internationally “well-known” marks, ***it is
expressly provided under the IPC that other persons or entities
MAY be prohibited from using the internationally “well-known”
mark even for UNRELATED GOODS, provided that the
internationally well-known mark is REGISTERED in the Philippines.
-
However, if the internationally “well-known” mark is NOT
REGISTERED in the Philippines, the registration of a subsequent
or similar mark can be rejected only if the goods and services
indicated in the application are SIMILAR to those of the
internationally “well-known” mark.
QUESTION:
“G” Corporation, organized under Philippine laws is the owner of the trademark
“Jumbo” under Registry No. 50025 issued on February 15, 1979 by the Philippine
Patent Office, for assorted kitchen ware. On June 10, 1980, the Jumbo Cookware
Corporation, organized and existing under the U.S. laws, filed a petition with the
Philippine Patent Office for the cancellation of the trademark “Jumbo” registered in
the name of “G” Corporation alleging ownership and prior use in the Philippines
since 1949 of said trademark on the same kind of goods, which use it had not
abandoned.
“G” Corporation moved to dismiss the petition alleging that the Jumbo Cookware
Corporation, being foreign entity, which is not licensed to do and is not doing
business in the Philippines has no personality under the Philippine laws to maintain
such petition.
Is “G’s” contention meritorious?
Explain each of your answers.
ANSWER:
 Under
the Trademark Law, a foreign corporation
may bring an action for unfair competition in the
Philippines, whether or not it has been licensed to
do business in the Philippines, provided that the
country of which the said foreign corporation is a
citizen or in which it is domiciled, by treaty or law
grants a similar privilege to a corporation of the
Philippines; and this is granted in the “Convention
of Paris” and by law in the United States of
America.
TESTS 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.
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.
Asia Brewery v. CA
FACTS:
-
San Miguel Corporation (SMC) filed a complaint against Asia Brewery Inc. (ABI)
for infringement of trademark and unfair competition on account of the
latter's BEER PALE PILSEN or BEER NA BEER product which has been competing
with SMC's SAN MIGUEL PALE PILSEN for a share of the local beer market.
-A decision was rendered by the trial court, dismissing SMC's complaint because
ABI "has not committed trademark infringement or unfair competition against"
SMC. SMC appealed to the Court of Appeals which reversed the trial court.
-In due time, ABI appealed to the Supreme Court by a petition for certiorari
under Rule 45 of the Rules of Court.
ISSUE:
-
Whether ABI infringes SMC's trademark: San Miguel Pale Pilsen with Rectangular
Hops and Malt Design, and thereby commits unfair competition against the
latter.

It has been consistently held that the question of infringement of a
trademark is to be determined by the test of dominancy.

Similarity in size, form and color, while relevant, is not conclusive. 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.

Duplication or imitation is not necessary; nor it is necessary that the infringing
label should suggest an effort to imitate. The question at issue in cases of
infringement of trademarks is whether the use of the marks involved would be
likely to cause confusion or mistakes in the mind of the public or deceive
purchasers.

What are the dominant features of the competing trademarks between SMC and
ABI?
-the dominant feature of SMC's trademark is the name of the product: SAN
MIGUEL PALE PILSEN, written in white Gothic letters with elaborate serifs at the
beginning and end of the letters "S" and "M" on an amber background across the
upper portion of the rectangular design.
-the dominant feature of ABI's trademark is the name: BEER PALE PILSEN, with the
word "Beer" written in large amber letters, larger than any of the letters found in the
SMC label.
-The word "BEER" does not appear in SMC's trademark, just as the words "SAN
MIGUEL" do not appear in ABI's trademark. Hence, there is absolutely no similarity
in the dominant features of both trademarks.
- Neither in sound, spelling or appearance can BEER PALE PILSEN be said to be
confusingly similar to SAN MIGUEL PALE PILSEN. No one who purchases BEER PALE
PILSEN can possibly be deceived that it is SAN MIGUEL PALE PILSEN. No evidence
whatsoever was presented by SMC proving otherwise.

The fact that the words pale pilsen are part of ABI's trademark does not
constitute an infringement of SMC's trademark: SAN MIGUEL PALE PILSEN, for
"pale pilsen" are generic words descriptive of the color ("pale"), of a type of
beer ("pilsen"), which is a light bohemian beer with a strong hops flavor that
originated in the City of Pilsen in Czechoslovakia and became famous in
the Middle Ages. "Pilsen" is a "primarily geographically descriptive word,”
hence, non-registerable and not appropriable by any beer manufacturer.

The words "pale pilsen" may not be appropriated by SMC for its exclusive
use even if they are part of its registered trademark: SAN MIGUEL PALE
PILSEN, any more than such descriptive words as "evaporated milk," "tomato
ketchup," "cheddar cheese," "corn flakes" and "cooking oil" may be
appropriated by any single manufacturer of these food products, for no
other reason than that he was the first to use them in his registered
trademark.

A word or a combination of words which is merely descriptive of an article
of trade, or of its composition, characteristics, or qualities, cannot be
appropriated and protected as a trademark to the exclusion of its use by
others.

The circumstance that the Asia Brewery Incorporated printed its name all over the
bottle of its beer product xxx disproves SMC's charge that ABI dishonestly and
fraudulently intends to palm off its BEER PALE PILSEN as SMC's product.

In view of the visible differences between the two products, the Court believes it is
quite unlikely that a customer of average intelligence would mistake a bottle of BEER
PALE PILSEN for SAN MIGUEL PALE PILSEN.

Petitioner ABI has neither infringed SMC's trademark nor committed unfair
competition with the latter's SAN MIGUEL PALE PILSEN product.
RULE OF IDEM SONANS
 Two
names are said to be "idem sonantes" if the
attentive ear finds difficulty in distinguishing them when
pronounced. (Martin v. State, 541 S.W. 2d 605)
Examples:
 PYCNOGENOL
 DERMALINE
DERMALIN
 NANNY
is confusingly similar to PCO-GENOL
DERMALINE, INC. is confusingly similar to
is confusingly similar to NAN
RIGHTS CONFERRED BY REGISTRATION
duration of a certificate of trademark registration

10 years, renewable for a period of another 10 years. Each request
for renewal must be made within 6 months before or after the
expiration of the registration.
rights of a registered mark owner

Protection against reproduction, or imitation or unauthorized use
of the mark (infringement of mark)

Right to the exclusive use of the mark for one’s own goods and
services

To transfer or license out the mark.
NOTE:
Does registration alone perfect title of ownership of the mark?
No. Under Sec. 124.2 of the IP Code, it is provided that after
filing the application for registration there is still a need to
prove actual use of the mark thereafter.
Note: Prior use of the mark is not required before registration,
but only after registration.
*Registration of a mark does not confer an absolute right upon
the registrant to the registered trademark.
The right is not absolute but merely inchoate. Under the IP
Code, the certificate of registration is merely a prima facie
evidence that the registrant is the owner of the trademark or the
registered mark, the validity of the registration, and registrant’s
exclusive right to use the same.
*Registration does not confer a permanent right to the registered
mark.
If within 3 years from the filing date, the registrant did not file a
declaration of actual use, his registration will be cancelled.
Importance of registration aside from being a mode of
acquiring ownership of a mark.
 prima
facie evidence of the validity of the registration,
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 as specified in the certificate.
 It
is also a pre-requisite for maintaining an action for
infringement.
 Unfair
competition does not require for its maintenance a
registration of the mark.
TRADEMARK INFRINGEMENT
ELEMENTS OF TRADEMARK INFRINGEMENT:
1.
2.
3.
4.
5.
Registration of trademark in the IPO. However, for infringement of trade
name, registration is not required;
Trademark or trade name is reproduced, counterfeited, copied, or
colorably imitated by the infringer;
Used in connection with the sale, offering for sale, or advertising of any
goods, business or services; or applied to labels, signs, prints,
packages, wrappers, receptacles or advertisements intended to be
used upon or in connection with such goods, business or services;
Use or application of infringing trademark 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;
Use is without the consent of the trademark or trade name owner or the
assignee thereof.
*** USE OF IDENTICAL MARKS NOT NECESSARILY PROHIBITED –
if used for goods which are NOT identical, NOT similar, NOT
related goods.
Examples:
1.
Trademark “SHELL” for cigarettes was allowed even if “SHELL” is
also used as trademark by another company for gasoline and
petroleum products.
2.
Trademark “ESSO” was allowed for cigarettes even if also
registered as trademark for petroleum products.
3.
Trademark “CANNON” was registered for sandals although the
same mark was also registered by another for paints, chemical
products, toner and dyestuff.
RELATED
GOODS- non-competing goods may
be those which, though they are not in actual
competition, are so related to each other that it
can be assumed that they originate from one
manufacturer, in which case, confusion of
business can arise out of the use of similar
marks.
QUESTION:
The trademark LOTUS is already registered in favor of ABC for its
product, edible oil. DEF applied for the registration of the same
trademark for its own product, soy sauce, assuming that the
trademark applied for is in smaller type, colored differently of much
smaller size, and set on a background which is dissimilar, as to yield
a distinct appearance, may the application be denied on the ground
that its grant would likely cause confusion or mistake on the part of
the buying public? Decide. Give reasons.
ANSWER:
Yes. The application of DEF of the trademark LOTUS for soy sauce
should be granted, although the trademark LOTUS is already
registered in favor of ABC for its product, edible oil. The rule is not
whether the challenging mark would actually cause confusion, but
whether the use of such mark would likely cause confusion on the
part of the buying public. There is quite a difference between soy
sauce and edible oil; hence, it can be said that DEF’s trademark
LOTUS on soy sauce would likely not cause confusion on the part of
the buying public.
What are the remedies of the owner of the trademark against infringers?
Civil — both civil and criminal actions may be filed with the Regional Trial Courts. 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 had notice of
the registration of the mark
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 in the commission of the offense.
Administrative — This 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.
Which court has jurisdiction over violations of
intellectual property rights?
 It
is properly lodged with the Regional Trial Court
even if the penalty therefore is imprisonment of
less than six years, or from 2 to5 years and a fine
ranging from P50,000 to P200,000.
UNFAIR COMPETITION
INFRINGEMENT OF TRADEMARK
Unauthorized use of a trademark.
UNFAIR COMPETITION
The passing off of one’s goods as those
of another.
Fraudulent intent is
unnecessary.
Fraudulent intent is
essential.
Prior registration of the trademark is a
prerequisite to the action.
Registration is not necessary.
UNFAIR COMPETITION
- Involves employing deception or any other means
contrary to good faith by which a person passes off
his goods or business or services for those of one
who has already established goodwill thereto.
ESSENTIAL ELEMENTS OF UNFAIR COMPETITION WITH
RESPECT TO GOODS
1.
Confusing similarity in the general appearance of
the goods; and
1.
Fraud or intent to deceive the public and defraud
a competitor.
TEST OF UNFAIR COMPETITION
-
Whether the acts have the intent of deceiving or are calculated
to deceive the ordinary buyer making his purchases under the
ordinary conditions of the particular trade to which the
controversy relates.
-
The essence of unfair competition under the IPL is the passing off
of one’s goods or services on the public as that of the goods and
services of another.
QUESTION:
X, a dealer of low grade oil, to save on expenses, uses the containers of different
companies. Before marketing to the public his low grade oil, X totally obliterates
and erases the brands or marks stenciled on the containers.
Y brings an action against X for unfair competition upon its discovery that its
containers have been used by X for his low grade oil.
Is there unfair competition? State briefly your reasons.
ANSWER:
There is no unfair competition. Unfair competition is
passing off of one’s goods as those of another and
requires fraudulent intent on the part of the user. These
elements are not present in the problem.
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.
What are the types of confusion that arise from the use of similar or
colorable imitation marks?
 Confusion
of goods (product confusion); and
 Confusion
of business (source or origin confusion).
A.
Confusion of Goods- when an otherwise prudent purchaser is
induced to purchase one product in the belief that he is
purchasing another, in which case defendant’s goods are then
bought as the plaintiff’s and its poor quality reflects badly on the
plaintiff’s reputation.
B.
Confusion of Business- wherein the goods of the parties are
different but the defendant’s product can reasonably (though
mistakenly) be assumed to originate from the plaintiff, thus
deceiving the public into believing that there is some connection
between the plaintiff and defendant which, in fact, does not
exist.
NOTE:
A foreign corporation not engaged in business here in the
Philippines can file a case for unfair competition or infringement
whether or not it is licensed to do business here in the Philippines.
If it is engaged in business in the Philippines, it must be licensed to
do business here so it can file a case for unfair competition or
infringement.