o The incorporeal right, however, is distinct from the

INTELLECTUAL PROPERTY LAW property in the material object subject to it.

Ownership in one does not necessarily vest
BRIEF OVERVIEW ownership in the other.
OF THE INTERNATIONAL PROPERTY SYSTEM
o The transfer or assignment of the intellectual
property will not necessarily constitute a conveyance
Intellectual Property (IP) refers to creations of the of the thing it covers, nor would a conveyance of the
mind: inventions, literary and artistic works, and latter imply the transfer or assignment of the
symbols, names, images, and designs used in intellectual right. (Distilleria Washington, Inc. v.
commerce. The Honorable Court of Appeals, G.R. No.
120961, October 17, 1996.)
TWO (2) CATEGORIES OF IP
o An infringement of intellectual rights is no less
INDUSTRIAL PROPERTY- includes inventions vicious and condemnable as theft of material
(patents), trademarks, industrial designs, and property, whether personal or real. (Amigo
geographic indications of source; and Manufacturing vs. Cluetpeabody Co., Inc., G.R.
No. 139300, 14 March 2001)
COPYRIGHT - includes literary and artistic works such
as novels, poems and plays, films, musical works, 1987 CONSTITUTION
artistic works such as drawings, paintings, photographs SEC. 3, ART. VII
and sculptures, and architectural designs. Rights related “The State shall protect and secure the
to copyright include those of performing artists in their exclusive rights of scientists, inventors,
performances, producers of phonograms in their artists and other gifted citizens to their
recordings, and those of broadcasters in their radio and intellectual property and creations, particularly
television programs. when beneficial to the people for such period as
may be provided by law.”
FOUR (4) ASPECTS OF IP
Republic Act No. 8293
1. Creationg Section 2 of Republic Act No. 8293. Declaration of
2. Protection State Policy. –
3. Utilization o The State recognizes that an effective
4. Enforcement intellectual and industrial property system is
vital to the development of domestic and
OWNERSHIP creative activity, facilitates transfer of
technology, attracts foreign investments, and
Art. 427 of the Civil Code of the Philippinesprovides: ensures market access for our products. It shall
“Ownership may be exercised over things or rights” protect and secure the exclusive rights of
scientists, inventors, artists and other gifted
Art. 712 of the Civil Code of the Philippinesprovides: citizens to their intellectual property and
“Ownership is acquired by occupation and by creations, particularly when beneficial to the
intellectual creation. people, for such periods as provided in this Act.

Ownership and other real rights over property are o The use of intellectual property bears a
acquired and transmitted by law, by donation, by estate social function. To this end, the State shall
and intestate succession, and in consequence of certain promote the diffusion of knowledge and
contracts, by tradition. information for the promotion of national
development and progress and the common
They may also be acquired by means of prescription”. good.

Nature of Intellectual Property o It is also the policy of the State to streamline

1. Intangible administrative procedures of registering
2. Territorial patents, trademarks and copyright, to liberalize
3. Conferred by Law the registration on the transfer of technology,
4. Non Rivalrous and to enhance the enforcement of intellectual
• Information may be enjoyed by others at the property rights in the Philippines.
same time.
• Maybe consumed by many at the same IP RELATED LAWS
time without additional cost or diminishing Republic Act No. 8293 Intellectual Property Code of the
its value. Philippines (as amended by RA
No. 10372)
1
Republic Act No. 3720 Food and Drug Administration Patents
(as amended by RA No. 9711) o Any technical solution of a problem in any field of
human activity which is new, involves an inventive
Republic Act No. 8203 Special Law on Counterfeit step and is industrially applicable. It may be, or may
Drugs relate to, a product, or process, or an improvement
Republic Act No. 9239 Optical Media Act of any of the foregoing. (§21, IP Code)
Republic Act No. 8792 Electronic Commerce Act
Republic Act No. 9150 Protection of Layout Design of Integrated Circuit
Integrated Circuits o Means a product, in its final form, or an intermediate
Republic Act No. 9168 Plant Variety and Protection Act form, in which the elements, at least one of which is
Republic Act No. 9052 Universally Accessible and an active element and some or all of the
Quality Medicine Act of 2006 interconnections are integrally formed in and/or on a
Republic Act No. 10055 Philippine Technology Transfer piece of material, and which is intended to perform
Act of 2009 an electronic function;
Republic Act No. 10088 Anti-Camcording Act
Republic Act No. 10175 Cybercrime Prevention Act Layout-Design is synonymous With 'Topography' and
Republic Act No. 10365 An Act Amending RA means
No. 9160 the three-dimensional disposition, however
(Anti Money Laundering Act) expressed, of the elements, at least one of which is
an active element, and of some or all of the
Kinds of Intellectual Property Rights interconnections of an integrated circuit, or such a
Section 4 of RA No. 8293 provides that: three-dimensional disposition prepared for an
The term "intellectual property rights" consists integrated circuit intended for manufacture. (§112.2,
of: and 112.3 IP Code as amended by R.A. No. 9150
1. Copyright and Related Rights; [August 6, 2001])
2. Trademarks and Service Marks;
3. Geographic Indications; Protection of Undisclosed Information
4. Industrial Designs; o Protection of information lawfully held from being
5. Patents; disclosed to, acquired by, or used by others without
6. Layout-Designs (Topographies) of Integrated their consent in a manner contrary to honest
Circuits; and commercial practices so long as such information:
7. Protection of Undisclosed Information (a) is secret in the sense that it is not, as a body or
in the precise configuration and assembly of its
components, generally known among or readily
Copyright and Related Rights accessible to persons within the circles that normally
o Exists over original and derivative intellectual deal with the kind of information in question; (b) has
creations in the literary and artistic domain protected commercial value because it is secret; and (c) has
from the moment of their creation.(§172, IP Code) been subject to reasonable steps under the
circumstances, by the person lawfully in control of
Trademarks and Service Marks the information, to keep it secret. (Article 39, TRIPS
o Any visible sign capable of distinguishing the goods Agreement)
(trademark) or services (service mark) of an
enterprise and shall include a stamped or marked Trade Secret
container of goods.(§121.1, IP Code) o A plan or process, tool, mechanism or compound
known only to its owner and those of his employees
Geographic Indications to whom it is necessary to confide it. The definition
o Indications which identify a good as originating in the also extends to: (a) a secret formula or process not
territoryof a Member of the Agreement, or a region patented, but known only to certain individuals using
or locality in that territory, where a given quality, it in compounding some article of trade having a
reputation or other characteristic of the good is commercial value; or (b) any formula, pattern,
essentially attributable to its geographical origin. device, or compilation of information that: (1) is used
(Article 22, TRIPS Agreement) in one's business; and (2) gives the employer an
opportunity to obtain an advantage over competitors
Industrial Designs who do not possess the information. (Air
o Any composition of lines or colors or any three- Philippines Corporation vs. Pennwell, Inc., G.R.
dimensional form, whether or not associated with No. 172835, 13 December 2007)
lines or colors, provided that such composition or
form gives a special appearance to and can serve as INTELLECTUAL PROPERTY RIGHTS
pattern for an industrial product or handicraft. It must (Laws, principles, rules and relevant cases)
be new or original. (§112, 113 IP Code)
TRADEMARKS
2
 producer or manufacturer may be distinguished from
DEFINITIONS: that of others, and its sole function is to designate
distinctively the origin of the products to which it is
o "Mark" means any visible sign capable of attached. (Arce Sons and Company, G.R. No. L-
distinguishing the goods (trademark) or services 14761 and G. R. No. 171981, 28 January 1961)
(service mark) of an enterprise and shall include a o A trademark is any visible sign capable of
stamped or marked container of goods; distinguishing goods. It includes any word, name,
o "Collective mark" means any visible sign symbol, emblem, sign or device or any combination
designated as such in the application for registration thereof, adopted and used by a manufacturer or
and capable of distinguishing the origin or any other merchant to identify his goods and distinguish them
common characteristic, including the quality of goods from those manufactured, sold or dealt in by others.
or services of different enterprises which use the sign It symbolizes the goodwill and business reputation of
under the control of the registered owner of the the owner of the product and is a property right
collective mark; protected by law. (Mirpuri v. Court of Appeals,
o "Trade name" means the name or designation G.R. No. 114508, 19 November 1999)
identifying or distinguishing an enterprise.(§121.1, o Modern authorities on trademark law view
121.2, 121.3, IP Code) trademarks as performing three distinct functions: (1)
they indicate origin or ownership of the articles to
which they are attached; (2) they guarantee that
REQUIREMENTS FOR PROTECTION OF those articles come up to a certain standard of
TRADEMARKS quality; and (3) they advertise the articles they
symbolize. (Mirpuri v. Court of Appeals, G.R. No.
HOW MARKS ARE ACQUIRED(§122) 114508, 19 November 1999)
o The rights in a mark shall be acquired through o The protection of trademarks as intellectual property
registration made validly in accordance with the is intended not only to preserve the goodwill and
provisions of the IP Code. reputation of the business established on the goods
bearing the mark through actual use over a period of
CERTIFICATE OF REGISTRATION AS PRIMA FACIE time, but also to safeguard the public as consumers
EVIDENCE OF VALIDITY OF REGISTRATION (§138) against confusion on these goods. (Berris
o A certificate of registration of a mark shall be prima Agricultural Co., Inc. vs. Norvy Abyadang, G.R.
facie evidence of the validity of the registration, the No. 183404, October 13, 2010)
registrant's ownership of the mark, and of the
registrant's exclusive right to use the same in TRADEMARK = Visible + Distinctive + Not
connection with the goods or services and those that Barred
are related thereto specified in the certificate. from Registration

Critical issues : Distinctiveness and Non

PROTECTION OF TRADENAMES/BUSINESS NAMES Registrability
o A name or designation may not be used as a trade
name if by its nature or the use to which such name Guide on the Degree of Distinctiveness
or designation may be put, it is contrary to public 1. Fanciful - e.g. Xerox (copier)
order or morals and if, in particular, it is liable to 2. Arbitrary - e.g. Apple (mobile
deceive trade circles or the public as to the nature of phone)
the enterprise identified by that name. 3. Suggestive - e.g. Tough (shoes)
4. Descriptive - e.g. Fragrant (perfume)
o Notwithstanding any laws or regulations 5. Generic - e.g. Pants (pants)
providing for any obligation to register trade
names, such names shall be protected, even NON REGISTRABLE MARKS
prior to or without registration, against any
unlawful act committed by third parties. REGISTRABILITY (§123) – A mark cannot be registered
if it:
o In particular, any subsequent use of the trade name
by a third party, whether as a trade name or a mark o Consists of immoral, deceptive or scandalous
or collective mark, or any such use of a similar trade matter, or matter which may disparage or
name or mark, likely to mislead the public, shall be falsely suggest a connection with persons,
deemed unlawful.(§165, IP CODE) living or dead, institutions, beliefs, or national
symbols, or bring them into contempt or
FUNCTIONS OF A TRADEMARK disrepute;

o A trademark is a distinctive mark of authenticity o Consists of the flag or coat of arms or other
through which the merchandise of a particular insignia of the Philippines or any of its political
3
 subdivisions, or of any foreign nation, or any
simulation thereof; NO DEFINITE RULE
o In infringement or trademark cases in the
o Consists of a name, portrait or signature Philippines, particularly in ascertaining whether
identifying a particular living individual except one trademark is confusingly similar to or is a
by his written consent, or the name, signature, or colorable imitation of another, no set of rules can
portrait of a deceased President of the be deduced. Each case must be decided on
Philippines, during the life of his widow, if its own merits. The likelihood of confusion is
any, except by written consent of the widow; a relative concept; to be determined only
according to the particular, and sometimes
CIVIL CODE OF THE PHILIPPINES peculiar, circumstances of each case. In
trademark cases, even more than in any other
Art. 26.Every person shall respect the dignity, litigation, precedent must be studied in light of
personality, privacy and peace of mind of his neighbors the facts of the particular case. The wisdom of
and other persons. The following and similar acts, the likelihood of confusion test lies in its
though they may not constitute a criminal offense, shall recognition that each trademark infringement
produce a cause of action for damages, prevention and case presents its own unique set of facts.
other relief: Indeed, the complexities attendant to an
(1) Prying into the privacy of another's residence; accurate assessment of likelihood of confusion
(2) Meddling with or disturbing the private life or require that the entire panoply of elements
family relations of another; constituting the relevant factual landscape be
(3) Intriguing to cause another to be alienated from comprehensively examined. (Societe Des
his friends; 
(4) Vexing or humiliating another on Produits Nestle, S.A. v. Court of Appeals,
account of his religious beliefs, lowly station in G.R. No. 112012, 04 April 2001; Esso
life, place of birth, physical defect, or other Standard Eastern, Inc. vs. The Honorable
personal condition. Court of Appeals, G.R. No. L-29971, 31
August 1982; Canon Kabushiki Kaisha vs.
NON REGISTRABLE MARKS Court of Appeals, G.R. No. 120900, 20 July
Registrability (§123) – A mark cannot be registered if it: 2000)

o Is identical with a registered mark belonging to

a different proprietor or a mark with an earlier TESTS TO DETERMINE CONFUSING SIMILARITY OF
filing or priority date, in respect of: MARKS

a. The same goods or services, or 2 TYPES OF CONFUSION:

b. Closely related goods or services – (e.g. Confusion of Goods
same class, same nature and/or o The ordinarily prudent purchaser would be
characteristics ) induced to purchase one product in the belief
c. If it nearly resembles such a mark as to be that he was purchasing the other.
likely to deceive or cause confusion Confusion of Origin (Confusion of Business)
o The goods of the parties are different, the
IDENTICAL = same, equal, alike, or having close defendant’s product is such as might reasonably
similarity or resemblance be assumed to originate with the plaintiff, and
the public would then be deceived either into
Q: Is mere similarity sufficient? that belief or into the belief that there is some
A: The law does not prohibit or enjoin every similarity. connection between the plaintiff and defendant
The similarity must be such that the ordinary purchaser which, in fact, does not exist.
will be deceived into the belief that the goods are those
of another. (The Alhambra Cigar and Cigarette (See: Nestle v. Dy, GR No. 172276, August 8, 2010,
Manufacturing Co. v. Compania General de Tabacos citing Sterling Products International, Inc. v.
De Filipinas, G. R. No. 11490, October 14, 1916) Farbenfabriken Bayer Aktiengesellschaft and Callman.)

LIKELIHOOD OF CONFUSION TESTS TO DETERMINE CONFUSING SIMILARITY OF

o Is a relative concept; the particular, and sometimes MARKS
peculiar, circumstances of each case being 2 TESTS TO DETERMINE COLORABLE IMITATION:
determinative of its existence. (Philip Morris, Inc. 1. Dominancy Test
vs. Fortune Tobacco Corporation, G.R. No. o If the competing trademark contains the main or
158589, 27 June 2006; Prosource International, essential or dominant features of another, and
Inc. vs. Horphag Research Management SA, G.R. confusion and deception are likely to result,
No. 180073. November 25, 2009) infringement takes place. Duplication or
imitation is not necessary; nor is it necessary
4
 that the infringing label should suggest an effort for sale, distribution, or advertising of goods or services
to imitate. (C. Neilman Brewing Co. v. on or in connection with which such use is likely to cause
Independent Brewing Co., 191 F. 489, 495, confusion, or to cause mistake, or to deceive, shall be
citing Eagle White Lead Co. vs. Pflugh [CC] 180 liable in a civil action for infringement by the registrant.
FED. 579) See Del Monte vs. CA, GR No. L-
78325, January 25, 1990 RULES OF PROCEDURE
2. Holistic Test FOR INTELLECTUAL PROPERTY RIGHTS CASES
o The trademarks in their entirety as they appear A.M. No. 10-3-10 SC, October 18, 2011
in their respective labels are considered in Rule 18
relation to the goods to which they are attached.
The discerning eye of the observer must focus EVIDENCE IN TRADEMARK INFRINGEMENT AND
not only on the predominant words but also on UNFAIR COMPETITION CASES
the other features appearing in both labels in SEC. 3. Presumption of likelihood of confusion. –
order that he may draw his conclusion whether Likelihood of confusion shall be presumed in case
one is confusingly similar to the other (Bristol an identical sign or mark is used for identical
Myers Co. vs. Director of Patents, 17 SCRA 131; goods or services.
See also Fruit of the Loom Inc. vs. CA, GR No. SEC. 4. Likelihood of confusion in other cases. – In
L-32747, November 29, 1984.) determining whether one trademark is confusingly
similar to or is a colorable imitation of another, the
BEFORE THE ENACTMENT OF RA NO. 8293 court must consider the general impression of the
Section 22 of R.A. No. 166, provides that: ordinary purchaser, buying under the normally
Section 22. Infringement, what constitutes. prevalent conditions in trade and giving the
Any person who shall use, without the consent of attention such purchasers usually give in buying
the registrant, any reproduction, counterfeit, copy that class of goods.
or colorable imitation of any registered mark or o Visual, aural, connotative comparisons and overall
trade-name in connection with the sale, offering for impressions engendered by the marks in
sale, or advertising of any goods, business or controversy as they are encountered in the
services on or in connection with which such use is realities of the marketplace must be taken into
likely to cause confusion or mistake or to deceive account. Where there are both similarities and
purchasers or others as to the source or origin of differences in the marks, these must be weighed
such goods or services, or identity of such against one another to see which predominates.
business; or reproduce, counterfeit, copy or
colorably imitate any such mark or trade-name and In determining likelihood of confusion between
apply such reproduction, counterfeit, copy, or marks used on non- identical goods or services,
colorable imitation to labels, signs, prints, several factors may be taken into account, such as, but
packages, wrappers, receptacles or not limited to:
advertisements intended to be used upon or in
connection with such goods, business or services, a. the strength of plaintiff’s mark;
shall be liable to a civil action by the registrant for b. the degree of similarity between the plaintiff’s
any or all of the remedies herein provided. and thedefendant’s marks;
Under RA No. 8293 c. the proximity of the products or services;
TRADEMARK INFRINGEMENT (§155) d. the likelihood that the plaintiff will bridge the
o The commission of the following acts by any gap;
person, without the consent of the owner of the e. evidence of actual confusion;
registered mark: f. the defendant's good faith in adopting the mark;
g. the quality of defendant's product or service;
a. Use in commerce any reproduction, counterfeit, copy, and/or
or colorable imitation of a registered mark or the same h. the sophistication of the buyers.―
container or a dominant feature thereof in connection
with the sale, offering for sale, distribution, advertising of o Colorable imitation denotes such a close or ingenious
any goods or services including other preparatory steps imitation as to be calculated to deceive ordinary
necessary to carry out the sale of any goods or services persons, or such a resemblance to the original as to
on or in connection with which such use is likely to cause deceive an ordinary purchaser giving such attention
confusion, or to cause mistake, or to deceive; or as a purchaser usually gives, as to cause him to
purchase the one supposing it to be the other.
b. Reproduce, counterfeit, copy or colorably imitate a
registered mark or a dominant feature thereof and RELATED GOODS
apply such reproduction, counterfeit, copy or colorable In resolving whether goods are related, several factors
imitation to labels, signs, prints, packages, wrappers, come into play:
receptacles or advertisements intended to be used in a. the business (and its location) to which the
commerce upon or in connection with the sale, offering goods belong;
5
 b. the class of product to which the goods belong; o Societe Des Produits Nestle vs. Court of
c. the product’s quality, quantity, or size, including Appeals, GR No. 112012, April 4, 2001
the nature of thepackage, wrapper or container; o Flavor Master vs. Master Roast and Master
d. the nature and cost of the article; Blend
e. The descriptive properties, physical attributes or
essentialcharacteristics with reference to their N.B. Dominancy Test was applied
form, composition, texture orquality; • Master is the dominant feature (2x size of Roast)
f. the purpose of the goods; • Master has been given in advertisements
g. whether the article is bought for immediate • Master is suggestive not descriptive or generic
consumption, that is, day- to-day household
items; o The totality or holistic test is contrary to the
h. fields of manufacture; elementary postulate of the law on trademarks and
i. the conditions under which the article is usually unfair competition that confusing similarity is to be
purchased; and, determined on the basis of visual, aural, connotative
j. The channels of trade through which the goods comparisons and overall impressions engendered by
flow, how they are distributed, marketed, the marks in controversy as they are encountered in
displayed and sold. (Mighty Corporation vs. E. the realities of the marketplace. The totality or holistic
J. Gallo Winery, G.R. No. 154342, 14 July test only relies on visual comparison between two
2004) trademarks whereas the dominancy test relies not only
on the visual but also on the aural and con- notative
o Goods are related when they belong to the same comparisons and overall impressions between the two
class or have the same descriptive properties; when trademarks. (Societe Des Produits Nestle, S.A. v.
they possess the same physical attributes or Court of Appeals, G.R. No. 112012, 04 April 2001)
essential characteristics with reference to their form,
composition, texture or quality. They may also be o Colorable imitation denotes such a close or ingenious
related because they serve the same purpose or are imitation as to be calculated to deceive ordinary
sold in grocery stores. (Esso Standard Eastern, Inc. persons, or such a resemblance to the original as to
vs. The Honorable Court of Appeals; Canon deceive an ordinary purchaser giving such attention as
Kabushiki Kaisha vs. Court of Appeals, G.R. No. a purchaser usually gives, as to cause him to purchase
120900, 20 July 2000) the one supposing it to be the other.

o Non-competing goods may be those which, though o The test of dominancy focuses on the similarity of the
they are not in actual competition, are so related to prevalent features of the competing trademarks which
each other that it might reasonably be assumed that might cause confusion or deception and thus constitute
they originate from one manufacturer. Non-competing infringement. (Societe Des Produits Nestle, S.A. v.
goods may also be those which, being entirely Court of Appeals, G.R. No. 112012, 04 April 2001)
unrelated, could not reasonably be assumed to have
a common source. In the former case of related CASE: Mighty Corp. v. E. & J. Gallo
(G.R. 154352,
goods, confusion of business could arise out of the July 14, 2004)
use of similar marks; in the latter case of non-related GALLO and ERNEST & JULIO GALLO for wines
goods, it could not. (Esso Standard Eastern, Inc. vs
vs. The Honorable Court of Appeals, G.R. No. L- GALLO for cigarettes
29971 31 August 1982)
N.B. Both Holistic and Dominancy Test applied
CASE: Emerald Garment Manufacturing Corp. vs. o Whether a trademark causes confusion and is likely
CA, (GR No.100098, December 1995) to deceive the public hinges on colorable imitation
which has been defined as “similarity in form, content,
LEE vs. STYLISTIC MR. LEE words, sound, meaning, special arrangement or
general appearance of the trademark or trade name
in their overall presentation or in their essential
and substantive and distinctive parts as would
likely mislead or confuse persons in the ordinary
course of purchasing the genuine article.”
N.B. Holistic Test was applied
o Pants products are not inexpensive o In determining the likelihood of confusion, the Court
o Consumer is knowledgeable of the product he must consider: [a] the resemblance between the
buys trademarks; [b] the similarity of the goods to which
o Ordinary Purchaser Rule the trademarks are attached; [c] the likely effect on
the purchaser; and [d] the registrant’s express or
Related Supreme Court Cases: implied consent and other fair and equitable
considerations. The use of an identical mark does
6
 not, by itself, lead to a legal conclusion that there is o Cigarette smokers are already predisposed to a
trademark infringement: (Mighty Corporation vs. E. certain brand
J. Gallo Winery, G.R. No. 154342, 14 July 2004)
CASE:Berris Agricultural Co., Inc. v. Norvy
CASE: McDonald’s Corp. vs. L.C. Big Mak Burger, Abyadang (G.R. No. 183404, 13
Inc. Oct. 2010)
GR No. 143993, August 18, 2004
NS D-10- PLUS vs. D-10 80 WP
Big Mac vs. Big Mak
o Applying the Dominancy Test, it cannot be gainsaid
o The dominancy test focuses on the similarity of the that Abyadang’s “NS D-10 PLUS” is similar to Berris’
prevalent features of the competing trademarks that “D-10 80 WP,” that confusion or mistake is more
might cause confusion. The dominancy test considers likely to occur. ….. Both depictions of “D-10,” as
the dominant features in the competing marks in found in both marks, are similar in size, such that this
determining whether they are confusingly similar. portion is what catches the eye of the purchaser.
Under the dominancy test, courts give greater weight Undeniably, the likelihood of confusion is present.
to the similarity of the appearance of the product
arising from the adoption of the dominant features of o This likelihood of confusion and mistake is made
the registered mark, disregarding minor differences. more manifest when the Holistic Test is applied,
Courts will consider more the aural and visual taking into consideration the packaging, for both use
impressions created by the marks in the public mind, the same type of material (foil type) and have
giving little weight to factors like prices, quality, sales identical color schemes (red, green, and white); and
outlets and market segments. (McDonalds the marks are both predominantly red in color, with
Corporation v. L. C. Big Mak Burger, Inc., G.R. No. the same phrase “BROAD SPECTRUM FUNGICIDE”
143993, 18 August 2004) written underneath. Considering these striking
similarities, predominantly the “D-10,” the buyers of
o It has been consistently held that the question of both products, mainly farmers, may be misled into
infringement of a trademark is to be determined by thinking that “NS D-10 PLUS” could be an upgraded
the test of dominancy. Similarity in size, form and formulation of the “D-10 80 WP.”
color, while rel- evant, is not conclusive. If the
competing trademark contains the main or essential
or dominant features of another, and confusion and CASE: Societe Des Produits Nestle vs. Martin Dy,
deception is likely to result, infringement takes place. GR No. 172276, August 8, 2010
Duplication or imitation is not necessary; nor is it
necessary that the infringing label should suggest an NAN vs. NANNY
effort to imitate. (G. Heilman Brewing Co.
vs.Independent Brewing Company, 191 F., 489, 495, o Applying the dominancy test in the present case, the
citing Eagle White Lead, Co. vs. Pluff (CC) 180 Fed. Court finds that “NANNY” is confusingly similar to
579). The question at issue in cases of infringement “NAN.” “NAN” is the prevalent feature of Nestle’s line
of trademarks is whether the use of the marks of infant powdered milk products. It is written in bold
involved would be likely to cause confusion or mis- letters and used in all products. The line consists of
takes in the mind of the public or deceive purchasers. PRE-NAN, NAN-H.A., NAN-1, and NAN-2. Clearly,
(Auburn Rubber Corporation vs. Honover Rubber “NANNY” contains the prevalent feature “NAN.” The
Co., 107 F. 2d 588). (McDonalds Corporation v. L. first three letters of “NANNY” are exactly the same as
C. Big Mak Burger, Inc., G.R. No. 143993, 18 the letters of “NAN.” When “NAN” and “NANNY” are
August 2004.) pronounced, the aural effect is confusingly
similar.

CASE: Philip Morris, vs Fortune Tobacco, Inc.
(GR o In determining the issue of confusing similarity, the
158589, June 27, 2006) Court takes into account the aural effect of the letters
contained in the marks.
“MARK VII” and “MARK TEN v. MARK both for
cigarettes CASE: Skechers U.S.A., Inc. v. Inter Pacific Industrial
Trading Corp. (G.R. No. 164321, 28 March 2011)
No infringement SKECHERS vs. STRONG
o The Supreme Court applied the Holistic Test as it
took into account the striking dissimilarities of the o Using the Dominancy Test, the Supreme Court found
entire marking system, but also ratiocinated that that the use of the “S” symbol by Strong rubber shoes
even if you apply the Dominancy Test, there can be infringes on the registered Skechers trademark. It is
no likelihood of confusion. the most dominant feature of the mark -- one that
catches the buyer’s eye first. The same font and style
7
 was used in this case. While there may be which included “501,” were very popular in the
dissimilarities between the appearances of the shoes, Philippines. The consuming public knew that the
such dissimilarities do not outweigh the stark and original “501” jeans were under a foreign brand and
blatant dissimilarities in their general features. quite expensive. Such jeans could be purchased only
in malls or boutiques as ready-to-wear items, and
o On MR the Supreme Court ruled: “Based on the were not available in tailoring shops like those of
foregoing, this Court is at a loss as to how the Diaz’s. Neither can the “501” be acquired on a
RTC and the CA, in applying the holistic test, “made-to-order” basis.
ruled that there was no colorable imitation, when
it cannot be any more clear and apparent to this o The High Court noted that Diaz used the trademark
Court that there is colorable imitation. The “LS JEANS TAILORING” for the jeans he produced
dissimilarities between the shoes are too trifling and and sold in his tailoring shops. His trademark was
frivolous that it is indubitable that respondent's visually and aurally different from the trademark
products will cause confusion and mistake in the eyes “LEVI STRAUSS & CO” appearing on the patch of
of the public. Respondent's shoes may not be an original jeans under the trademark LEVI’s 501. The
exact replica of petitioner's shoes, but the features word “LS” could not be confused as a derivative from
and overall design are so similar and alike that “LEVI STRAUSS” by virtue of the “LS” being
confusion is highly likely.” connected to the word “TAILORING”, thereby openly
suggesting that the jeans bearing the trademark “LS
CASE: GREAT WHITE SHARK vs. CARALDE, JR JEANS TAILORING” came or were bought from the

[G.R. No. 192294, November 21, 2012.] tailoring shops of Diaz, not from the malls or
boutiques selling original LEVI’S 501 jeans to the
consuming public.

o The Court also noted that in terms of classes of

customers and channels of trade, the jeans made by
o The Holistic or Totality Test considers the entirety of LEVI’s and the accused cater to different classes of
the marks as applied to the products, including the customers and flow through the different channels of
labels and packaging, and focuses not only on the trade. The customers of LEVI’s are mall goers
predominant words but also on the other features belonging to class A and B market group – while
appearing on both labels to determine whether one is those of Diaz are those who belong to class D and E
confusingly similar to the other as to mislead the market who can only afford Php300 for a pair of
ordinary purchaser. The “ordinary purchaser” refers made-to-order pants.
to one accustomed to buy, and therefore to some
extent familiar with, the goods in question. o Moreover, based on the certificate issued by the
Intellectual Property Office, “LS JEANS TAILORING”
o A trademark device is susceptible to registration if it is was a registered trademark of Diaz. He had
crafted fancifully or arbitrarily and is capable of registered his trademark prior to the filing of the
identifying and distinguishing the goods of one present cases. The IPOPHL would certainly not have
manufacturer or seller from those of another. Apart allowed the registration had Diaz’s trademark been
from its commercial utility, the benchmark of confusingly similar with the registered trademark for
trademark registrability is distinctiveness. Thus, a LEVI’s “501” jeans.
generic figure as that of a shark in this case, if
employed and designed in a distinctive manner, can WHAT IF THE MARK IS NOT REGISTERED
be a registrable trademark device, subject to the IN THE INTELLECTUAL PROPERTY OFFICE?
provisions of the IP Code.
OWNERSHIP OF TRADEMARKS
• Irrespective of both tests, the Court finds no Intellectual property is in essence a creation of the
confusing similarity between the subject marks. mind,hence, the following considerations are relevant:
While both marks use the shape of a shark, the (1) Ownership
Court noted distinct visual and aural differences (2) Prior use
between them.(Great White Shark Enterprises, (3) Bad faith
Inc. vs. Danilo M. Caralde, Jr., G.R. No. 192294, (4) Probability of using similar marks
21 November 2012) (5) Motivation

CASE: Victorio P. Diaz vs. People of the Philippines CASE: E.Y. Industrial Sales, Inc. v. Shen Dar
and Levi Strauss [Phils.] Inc. (G.R. No. 180677, 18 Electricity and Machinery Co., Ltd. (G.R. No. 184850,
February 2013) 20 Oct. 2010)
o E.Y. Industrial Sales Inc. (EYIS) and Shen Dar
o The Supreme Court acquitted the accused stating Electricity and Machinery Co. (Shen Dar) both claim
that maong pants or jeans made and sold by LEVI’s, to have the right to register the trademark “VESPA”
8
 for air compressors. The Supreme Court rules that Condron Bleu Int’l., B.V. (G.R. No. 185830, 05 June
EYIS is the prior user of the mark. The use by EYIS 2013)
in the concept of owner is shown by commercial
documents and sales invoices unambiguously o Respondent Cointreau filed a trademark application
describing the goods as “VESPA” air compressors. for the mark "LE CORDON BLEU & DEVICE.“ After it
was published for opposition purposes, Petitioner
o “Ownership of a mark or trade name may be acquired Ecole De Cuisine Manille, Inc. (Ecole) filed an
not necessarily by registration but by adoption and opposition to the subject application, averring among
use in trade or commerce. As between actual use of others, that it is the owner of the mark "LE CORDON
a mark without registration, and registration of the BLEU, ECOLE DE CUISINE MANILLE," which it has
mark without actual use thereof, the former prevails been using since 1948 in cooking and other culinary
over the latter. For a rule widely accepted and firmly activities, including in its restaurant business.
entrenched, because it has come down through the Cointreau filed its answer claiming to be the true and
years, is that actual use in commerce or business is a lawful owner of the subject mark. It averred that: (a) it
pre-requisite to the acquisition of the right of has filed applications for the subject mark’s
ownership.” registration in various jurisdictions, including the
xxxx Philippines; (b) Le Cordon Bleu is a culinary school of
By itself, registration is not a mode of acquiring worldwide acclaim which was established in Paris,
ownership. France in 1895; (c) Le Cordon Bleu was the first
cooking school to have set the standard for the
CASE: Superior Commercial Enterprises Inc. teaching of classical French cuisine and pastry
Kunnan Enterprises Ltd. And Sports Concept & making; and (d) it has trained students from more
Distributor, Inc. (G.R. No. 169974, 20 April 2010) than eighty (80) nationalities.
o Superior Commercial Enterprises, Inc. (SUPERIOR),
as the registered owner of the trademarks, trading o Cointreau has been using the subject mark in France
styles, company names and business names since 1895, prior to Ecole’s averred first use of the
“KENNEX”, “KENNEX & DEVICE”, “PRO KENNEX” same in the Philippines in 1948, of which the latter
and “PRO-KENNEX” (disputed trademarks) filed a was fully aware thereof. In fact, Ecole’s present
complaint for trademark infringement and unfair directress, Ms. Lourdes L. Dayrit (and even its
competition with preliminary injunction against foundress, Pat Limjuco Dayrit), had trained in
Kunnan Enterprises Ltd. (KUNNAN) and Sports Cointreau’s Le Cordon Bleu culinary school in Paris,
Concept and Distributor, Inc. (SPORTS CONCEPT). France. Cointreau was likewise the first registrant of
KUNNA presented proof that it is the prior user and the said mark under various classes, both abroad and
true owner of the disputed trademarks, while in the Philippines, having secured Home Registration
SUPERIOR as the former distributor of KUNNAN No. 1,390,912 dated November 25, 1986 from its
fraudulently registered said trademarks. KUNNAN country of origin, as well as several trademark
also presented proof of pending cancellation registrations in the Philippines.
proceedings before the IPO against the registration of
the disputed marks under SUPERIOR’s name. o On the other hand, Ecole has no certificate of
registration over the subject mark but only a pending
o After the IPO cancelled SUPERIOR’s registration application covering services limited to Class 41 of
over the disputed marks, SUPERIOR’s case for the Nice Classification, referring to the operation of a
trademark infringement lost its legal basis and no culinary school. Its application was filed only on
longer presented a valid cause of action since February 24, 1992, or after Cointreau filed its
trademark ownership is an essential element to trademark application for goods and services falling
establish trademark infringement. under different classes in 1990. Under the foregoing
circumstances, even if Ecole was the first to use the
o SUPERIOR’s possession of the aforementioned mark in the Philippines, it cannot be said to have
Certificates of Principal Registration does not validly appropriated the same.
conclusively establish its ownership of the disputed
trademarks as dominion over trademarks is not o It is thus clear that at the time Ecole started using the
acquired by the fact of registration alone. At best, subject mark, the same was already being used by
registration merely raises a presumption of ownership Cointreau, albeit abroad, of which Ecole’s directress
that can be rebutted by contrary evidence. was fully aware, being an alumna of the latter’s
SUPERIOR was a mere distributor and could not culinary school in Paris, France. Hence, Ecole cannot
have been the owner, and was thus an invalid claim any tinge of ownership whatsoever over the
registrant of the disputed trademarks. subject mark as Cointreau is the true and lawful
owner thereof.
CASE: Ecole De Cuisine Manille (Cordon Bleu of the
Philippines), Inc. v. Renaud Cointreau & CIE and Le NON REGISTRABLE MARKS
REGISTRABILITY (§123)
9
A mark cannot be registered if it: by the competent authority of the Philippines to be
5. Is identical with, or confusingly similar to, or well-known internationally and in the Philippines,
constitutes a translation of a mark which is whether or not it is registered here,” cannot be
considered by the competent authority of the registered by another in the Philippines. Section
Philippines to be well-known internationally and 123.1 (e) does not require that the well-known mark
in the Philippines, whether or not it is registered be used in commerce in the Philippines but only that
here, as being already the mark of a person it be well-known in the Philippines.
other than the applicant for registration, and
used for identical or similar goods or services: o Thus, while under the territoriality principle a mark
Provided, That in determining whether a mark is must be used in commerce in the Philippines to be
well-known, account shall be taken of the entitled to protection, internationally well-known
knowledge of the relevant sector of the public, marks are the exceptions to this rule.
rather than of the public at large, including (Fredco Manufacturing Corporation vs President and
knowledge in the Philippines which has been Fel- lows of Harvard College (Harvard University),
obtained as a result of the promotion of the G.R. No. 185917, 01 June 2011)
mark;
o The scope of protection initially afforded by Article
A mark cannot be registered if it: 6bis of the Paris Convention has been expanded in
6. Is identical with, or confusingly similar to, or the 1999 Joint Recommendation Concerning
constitutes a translation of a mark considered Provisions on the Protection of Well-Known Marks,
well-known in accordance with the preceding wherein the World Intellectual Property Organization
paragraph, which is registered in the Philippines (WIPO) General Assembly and the Paris Union
with respect to goods or services which are not agreed to a nonbinding recommendation that a well-
similar to those with respect to which registration known mark should be protected in a country even if
is applied for: Provided, That use of the mark in the mark is neither registered nor used in that
relation to those goods or services would country. (Sehwani, Incorporated vs. In-N-Out
indicate a connection between those goods or Burger, Inc., G. R. No. 171053, 15 October 2007)
services, and the owner of the registered mark:
Provided further, That the interests of the owner o The use of the well-known mark on the entirely
of the registered mark are likely to be damaged unrelated goods or services would indicate a
by such use; connection between such unrelated goods and
CASE: Fredco Manufacturing Corporation vs services and those goods and services specified in
President and Fellows of Harvard College (Harvard certificate of registration in the well known mark. This
University),G.R. No. 185917, 01 June 2011 requirement refers to the likelihood of confusion of
origin or business or some business connection or
o There is no question then, and this Court so declares, relationship between the registrant and the user of
that “Harvard” is a well-known name and mark not the mark. (246 Corporation, doing business under
only in the United States but also internationally, the name and style of Rolex Music Lounge vs.
including the Philippines. The mark “Harvard” is rated Hon. Reynaldo B. Daway, in his capacity as
as one of the most famous marks in the world. It has Presiding Judge of RTC Branch 90, Quezon City,
been registered in at least 50 countries. It has been GR No. 157216, November 20, 2003)
used and promoted extensively in numerous
publications worldwide. It has established a
considerable goodwill worldwide since the founding of
Harvard University more than 350 years ago. It is 7. Is likely to mislead the public, particularly as to
easily recognizable as the trade name and mark of the nature, quality, characteristics or
Harvard University of Cambridge, Massachusetts, geographical origin of the goods or services;
U.S.A., internationally known as one of the leading 8. Consists exclusively of signs that are generic for
educational institutions in the world. As such, even the goods or services that they seek to identify;
before Harvard University applied for registration of 9. Consists exclusively of signs or of indications
the mark “Harvard” in the Philippines, the mark was that have become customary or usual to
already protected under Article 6bis and Article 8 of designate the goods or services in everyday
the Paris Convention. Again, even without applying language or in bona fide and established trade
the Paris Convention, Harvard University can invoke practice;
Section 4(a) of R.A. No. 166 which prohibits the 10. Consists exclusively of signs or of indications
registration of a mark “which may disparage or that may serve in trade to designate the kind,
falsely suggest a connection with persons, living quality, quantity, intended purpose, value,
or dead, institutions, beliefs x x x.” geographical origin, time or production of the
goods or rendering of the services, or other
o Indeed, Section 123.1 (e) of R.A. No. 8293 now characteristics of the goods or services;
categorically states that “a mark which is considered
10
 11. Consists of shapes that may be necessitated by CASE: Coffee Partners, Inc. v. San Francisco Coffee
technical factors or by the nature of the goods & Roastery, Inc., (G.R. No. 169504, 03 March 2010)
themselves or factors that affect their intrinsic o The issue in this case is whether the use of the
value; trademark “SAN FRANCISCO COFFEE” constitutes
12. Consists of color alone, unless defined by a infringement of the tradename ‘SAN FRANCISCO
given form; or COFFEE & ROASTERY, INC.” even if the tradename
13. Is contrary to public order or morality. is not registered with the IPO.

Note: The nature of the goods to which the mark is o The Supreme Court ruled that a trade name need not
applied will not constitute an obstacle to registration. be registered with the IPO before an infringement suit
may be filed by its owner against the owner of an
EXCEPTIONS – Descriptive marks, shapes, and infringing trademark. All that is required is that the
color alone, may be registered if it has become trade name is previously used in trade or commerce
distinctive in relation to the goods for which registration in the Philippines. A corporation has the exclusive
is requested as a result of the use that have been made right to use its name. The right proceeds from the
of it in commerce in the Philippines. theory that it is a fraud on the corporation which has
acquired a right to that name and perhaps carried on
o The IPO may accept as prima facie evidence that the its business thereunder, that another should attempt
mark has become distinctive, as used in connection to use the same name, or the same name with a
with the applicant's goods or services in commerce, slight variation in such a way as to induce persons to
proof of substantially exclusive and continuous use deal with it in the belief that they are dealing with the
thereof by the applicant in commerce in the corporation which has given a reputation to the
Philippines for five (5) years before the date on which name.
the claim of distinctiveness is made.
o The Supreme Court likewise upheld the ruling of the
See: Section 123.2, IP Code IPO Bureau of Legal Affairs (BLA) that the right to the
exclusive use of a trade name with freedom from
DOCTRINE OF SECONDARY MEANING infringement by similarity is determined from priority
o This doctrine is to the effect that a word or phrase of adoption. Since SAN FRANCISCO COFFEE &
originally incapable of exclusive appropriation with ROASTERY, INC. registered its business name with
reference to an article on the market, because the Department of Trade and Industry in 1995 and
geographically or otherwise descriptive, might COFFEE PARTNERS, INC. registered its trademark
nevertheless have been used so long and so with the IPO in 2001 in the Philippines and in 1997 in
exclusively by one producer with reference to his other countries, then the former must be protected
article that, in that trade and to that branch of the from infringement of its trade name.
purchasing public, the word or phrase has come to
mean that the article was his product. (Ang v. o The IPO-BLA also held that SAN FRANCISCO
Teodoro, G. R. No. 48226, 14 December 1942) COFFEE & ROASTERY, INC. did not abandon the
use of its trade name as substantial evidence
PROTECTION OF TRADENAMES/BUSINESS indicated that it continuously used its trade name in
NAMES(§165) connection with the purpose for which it was
organized.
o A name or designation may not be used as a trade
name if by its nature or the use to which such name LEGAL REMEDIES
or designation may be put, it is contrary to public
order or morals and if, in particular, it is liable to (1) Trademark Infringement
deceive trade circles or the public as to the nature of (2) Unfair Competition
the enterprise identified by that name. (3) Damages

o Notwithstanding any laws or regulations providing for TRADEMARK INFRINGEMENT(§155)

any obligation to register trade names, such names o The commission of the following acts by any person,
shall be protected, even prior to or without without the consent of the owner of the registered
registration, against any unlawful act committed by mark:
third parties.
a. Use in commerce any reproduction, counterfeit,
o In particular, any subsequent use of the trade name copy, or colorable imitation of a registered mark or
by a third party, whether as a trade name or a mark the same container or a dominant feature thereof in
or collective mark, or any such use of a similar trade connection with the sale, offering for sale, distribution,
name or mark, likely to mislead the public, shall be advertising of any goods or services including other
deemed unlawful. preparatory steps necessary to carry out the sale of any
goods or services on or in connection with which such
11
use is likely to cause confusion, or to cause mistake, or Trademark infringement requires the less stringent
to deceive; or standard of “likelihood of confusion” only. While proof
of actual confusion is the best evidence of
b. Reproduce, counterfeit, copy or colorably imitate infringement, its absence is inconsequential.
a registered mark or a dominant feature thereof and (McDonalds Corporation v. L. C. Big Mak Burger,
apply such reproduction, counterfeit, copy or Inc., G.R. No. 143993, 18 August 2004.)
colorable imitation to labels, signs, prints, packages,
wrappers, receptacles or advertisements intended to o The mere unauthorized use of a container bearing a
be used in commerce upon or in connection with the registered trademark in connection with the sale,
sale, offering for sale, distribution, or advertising of distribution or advertising of goods or services which
goods or services on or in connection with which such is likely to cause confusion, mistake or deception
use is likely to cause confusion, or to cause mistake, or among the buyers or consumers can be considered
to deceive, shall be liable in a civil action for infringement as trademark infringement. (Republic Gas
by the registrant. Corporation v. Petron Corporation, G. R. No.
194062, 17 June 2013)
COUNTERFEIT GOODS VS. COLORABLE IMITATION
o Unauthorized use of a container bearing a registered
Counterfeit Goods trademark in connection with the sale, distribution or
o Shall mean any goods, including packaging, bearing advertising of goods or services which is likely to
without authorization a trademark which is identical to cause confusion, mistake or deception among the
the trademark validly registered in respect of such buyers/consumers can be considered as trade- mark
goods, or which cannot be distinguished in its infringement. (Yao v. People of the Philippines, G.
essential aspects from such a trademark, and which R. No. 168306, 19 June 2007)
thereby infringes the rights of the owner of the
trademark in question under the law of the country of o A crucial issue in any trademark infringement case is
importation [TRIPs Agreement] the likelihood of confusion, mistake or deceit as to the
identity, source or origin of the goods or identity of the
Colorable Imitation. business as a consequence of using a certain mark.
o This term has been defined as "such a close or Likelihood of confusion is admittedly a relative term,
ingenious imitation as to be calculated to deceive to be determined rigidly according to the particular
ordinary purchasers, or such resemblance of the (and some- times peculiar) circumstances of each
infringing mark to the original as to deceive an case. Thus, in trademark cases, more than in other
ordinary purchaser giving such attention as a kinds of litigation, precedents must be studied in the
purchaser usually gives, and to cause him to light of each particular case.
purchase the one supposing it to be the other.“
[Emerald v. CA, G.R. No. 100098. December 29, o There are two types of confusion in trademark
1995] infringement. The first is “confusion of goods” when
an otherwise prudent purchaser is induced to
o Infringement takes place when the competing purchase one product in the belief that he is
trademark contains the essential features of another. purchasing another, in which case defendant’s goods
Imitation or an effort to imitate is unnecessary. The are then bought as the plaintiff’s and its poor quality
question is whether the use of the marks is likely to reflects badly on the plaintiff’s reputation. The other
cause confusion or deceive purchasers. (Societe is “confusion of business” wherein the goods of the
Des Produits Nestle, S. A. vs. Martin T.Dy, G.R. parties are different but the defendant’s product can
No. 172276, 09 August 2010) reasonably (though mistakenly) be assumed to
originate from the plaintiff, thus deceiving the public
o A crucial issue in any trademark infringement case is into believing that there is some connection between
the likelihood of confusion, mistake or deceit as to the the plaintiff and defendant which in fact does not
identity, source or origin of the goods or identity of the exist.(Mighty Corporation vs. E. J. Gallo Winery,
business as a consequence of using a certain mark. G.R. No. 154342, 14 July 2004)
Likelihood of confusion is admit- tedly a relative term,
to be determined rigidly according to the particular CASE: Juno Batistis v. People (G.R. No. 181571, 19
(and some- times peculiar) circumstances of each December 2009)
case. Thus, in trademark cases, more than in other o The case involves refilling of empty liquor bottles of
kinds of litigation, precedents must be studied in the Fundador. The RTC convicted accused for
light of each particular case. (Mighty Corporation trademark infringement and unfair competition but on
vs. E. J. Gallo Winery, G.R. No. 154342, 14 July appeal he was acquitted for unfair competition but
2004) conviction for trademark infringement was affirmed.

o Failure to present proof of actual confusion does not o According to the Supreme Court: “Batistis exerted the
negate their claim of trademark infringement. effort to make the counterfeit products look genuine
12
 to deceive the unwary public into regarding the
products as genuine. The buying public would be RULE 18, A.M. 10-3-10 SC
easy to fall for the counterfeit products due to their
having been given the appearance of the genuine SEC. 6.Intent to defraud or deceive. – In an action for
products, particularly with the difficulty of detecting unfair competition, the intent to defraud or deceive the
whether the products were fake or real if the buyers public shall be presumed:
had no experience and the tools for detection, like
black light.” a) when the defendant passes off a product as his by
using imitative devices, signs or marks on the general
o “He thereby infringed the registered Fundador appearance of the goods, which misleads prospective
trademark by the colorable imitation of it through purchasers into buying his merchandise under the
applying the dominant features of the trademark on impression that they are buying that of his
the fake products, particularly the two bottles filled competitors;
with Fundador brandy. His acts constituted b) when the defendant makes any false statement in
infringement of trademark…” the course of trade to discredit the goods and
business of another; or
UNFAIR COMPETITION(Sec. 168) c) where the similarity in the appearance of the goods
o A person who has identified in the mind of the public as packed and offered for sale is so striking.
the goods he manufactures or deals in, his business
or services from those of others, whether or not a o Unfair competition has been defined as the passing
registered mark is employed, has a property right in off (palming off) or attempting to pass off upon the
the goodwill of the said goods, business or services public of the goods or business of one person as the
so identified, which will be protected in the same goods or business of another with the end and
manner as other property rights. probable effect of deceiving the public. The essential
elements of unfair competition are (1) confusing
o Any person who shall employ deception or any similarity in the general appearance of the goods; and
other means contrary to good faith by which he shall (2) intent to deceive the public and defraud a
pass off the goods manufactured by him or in which competitor. (Superior Enterprises, Inc. vs. Kunnan
he deals, or his business, or services for those of the Enterprises Ltd., G.R. No. 169974, 20 April 2010)
one having established such goodwill, or who shall
commit any acts calculated to produce said result, o The essential elements of an action for unfair
shall be guilty of unfair competition. competition are (1) confusing similarity in the general
appearance of the goods, and (2) intent to deceive
The following shall be deemed guilty of unfair the public and defraud a competitor. The confusing
competition: similarity may or may not result from similarity in the
o Any person, who is selling his goods and gives them marks, but may result from other external factors in
the general appearance of goods of another the packaging or presentation of the goods. The
manufacturer or dealer, either as to the goods intent to deceive and defraud may be inferred from
themselves or in the wrapping of the packages in the similarity of the appearance of the goods as
which they are contained, or the devices or words offered for sale to the public. (McDonalds
thereon, or in any other feature of their appearance, Corporation v. L. C. Big Mak Burger, Inc., G.R. No.
which would be likely to influence purchasers to 143993, 18 August 2004)
believe that the goods offered are those of a
manufacturer or dealer, other than the actual TM INFRINGEMENT vs. UNFAIR COMPETITION
manufacturer or dealer, or who otherwise clothes the
goods with such appearance as shall deceive the (1) In infringement of trademark the prior registration of the
public and defraud another of his legitimate trade, or trademark is a prerequisite for the action; in unfair
any subsequent vendor of such goods or any agent competition registration of the trademark is not
of any vendor engaged in selling such goods with a necessary.
like purpose; (2) In infringement of trademark, fraudulent intent is not
necessary; in unfair competition fraudulent intent is
o Any person who by any artifice, or device, or who essential.
employs any other means calculated to induce the (3) Infringement of trademark is the unauthorized use of a
false belief that such person is offering the services of trademark, while unfair competition is the passing off of
another who has identified such services in the mind one’s goods for the goods of another.
of the public; or
COUNTERFEIT GOODS VS. COLORABLE IMITATION
o Any person who shall make any false statement in Under Section 147.1 of the IP Code:
the course of trade or who shall commit any other act The owner of a registered mark shall have the
contrary to good faith of a nature calculated to exclusive right to prevent all third parties not
discredit the goods, business or services of another. having the owner's consent from using in the
13
 course of trade identical or similar signs or o Trademark dilution is the lessening of the capacity of
containers for goods or services which are a famous mark to identify and distinguish goods or
identical or similar to those in respect of which services, regardless of the presence or absence of:
the trademark is registered where such use (1) competition between the owner of the famous
would result in a likelihood of confusion. In case mark and other parties; or (2) likelihood of confusion,
of the use of an identical sign for identical mistake or deception. Subject to the principles of
goods or services, a likelihood of confusion shall equity, the owner of a famous mark is entitled to an
be presumed. [Also, §1 Article 16, TRIPs injunction against another person’s commercial use in
Agreement] commerce of a mark or trade name, if such use
begins after the mark has become famous and
RULES OF PROCEDURE causes dilution of the distinctive quality of the mark.
FOR INTELLECTUAL PROPERTY RIGHTS CASES (Levi Strauss & Co., v. Clinton Apparelle, Inc.,
A.M. No. 10-3-10 SC, October 18, 2011 G.R. No. 138900, 20 September 2005)
Rule 18
EVIDENCE IN TRADEMARK INFRINGEMENT AND CASE: Levi Strauss & Co., v. Clinton Apparelle, Inc.,
UNFAIR COMPETITION CASES G.R. No. 138900, 20 September 2005

SEC. 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 DOCKERS VS. PADDOCKS
services.
SEC. 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 o Based on the foregoing, to be eligible for protection
purchasers usually give in buying that class of goods. from dilution, there has to be a finding that: (1) the
Visual, aural, connotative comparisons and overall trademark sought to be protected is famous and
impressions engendered by the marks in controversy as distinctive; (2) the use by respondent of “Paddocks
they are encountered in the realities of the marketplace and Design” began after the petitioners’ mark
must be taken into account. Where there are both became famous; and (3) such subsequent use
similarities and differences in the marks, these must be defames petitioners’ mark. In the case at bar,
weighed against one another to see which petitioners have yet to establish whether “Dockers
predominates. and Design” has acquired a strong degree of
distinctiveness and whether the other two elements
In determining likelihood of confusion between are present for their cause to fall within the ambit of
marks used on non- identical goods or services, the invoked protection. The Trends MBL Survey
several factors may be taken into account, such as, but Report which petitioners presented in a bid to
not limited to: establish that there was confusing similarity between
two marks is not sufficient proof of any dilution that
a. the strength of plaintiff’s mark; the trial court must enjoin.
b. the degree of similarity between the plaintiff’s
and thedefendant’s marks; o Given the single registration of the trademark
c. the proximity of the products or services; “Dockers and Design” and considering that
d. the likelihood that the plaintiff will bridge the respondent only uses the assailed device but a
gap; different word mark, the right to prevent the latter
e. evidence of actual confusion; from using the challenged “Paddocks” device is far
f. the defendant's good faith in adopting the mark; from clear. Stated otherwise, it is not evident whether
g. the quality of defendant's product or service; the single registration of the trademark “Dockers and
and/or Design” confers on the owner the right to prevent the
h. the sophistication of the buyers.― use of a fraction thereof in the course of trade. It is
also unclear whether the use without the owner’s
o Colorable imitation denotes such a close or ingenious consent of a portion of a trademark registered in its
imitation as to be calculated to deceive ordinary entirety constitutes material or substantial invasion of
persons, or such a resemblance to the original as to the owner’s right.
deceive an ordinary purchaser giving such attention
as a purchaser usually gives, as to cause him to o It is likewise not settled whether the wing-shaped
purchase the one supposing it to be the other. logo, as opposed to the word mark, is the dominant
or central feature of petitioners’ trademark—the
TRADEMARK DILUTION feature that prevails or is retained in the minds of the
14
 public—an imitation of which creates the likelihood of misrepresent the source of the goods or services
deceiving the public and constitutes trademark on or in connection with which the mark is used.
infringement. In sum, there are vital matters which If the registered mark becomes the generic
have yet and may only be established through a full- name for less than all of the goods or services
blown trial. for which it is registered, a petition to cancel the
registration for only those goods or services may
be filed. A registered mark shall not be deemed
CASE: Tanduay Distillers, Inc. vs. Ginebra San to be the generic name of goods or services
Miguel, Inc.G.R. NO. 164324, August 14, 2009 solely because such mark is also used as a
o It is not evident whether San Miguel has the right to name of or to identify a unique product or
prevent other business entities from using the word service. The primary significance of the
“Ginebra.” It is not settled (1) whether “Ginebra” is registered mark to the relevant public rather than
indeed the dominant feature of the trademarks, (2) purchaser motivation shall be the test for
whether it is a generic word that as a matter of law determining whether the registered mark has
cannot be appropriated, or (3) whether it is merely a become the generic name of goods or services
descriptive word that may be appropriated based on on or in connection with which it has been used.
the fact that it has acquired a secondary meaning. (c) At any time, if the registered owner of the mark
without legitimate reason fails to use the mark
o The issue that must be resolved by the trial court is within the Philippines, or to cause it to be used in
whether a word like “Ginebra” can acquire a the Philippines by virtue of a license during an
secondary meaning for gin products so as to prohibit uninterrupted period of three (3) years or longer.
the use of the word “Ginebra” by other gin
manufacturers or sellers. This boils down to whether SEC. 151. Cancellation. –
the word “Ginebra” is a generic mark that is incapable xxx
of appropriation by gin manufacturers. 151.2. Notwithstanding the foregoing provisions, the
court or the administrative agency vested with
o In Asia Brewery, Inc. v. Court of Appeals,[53] the jurisdiction to hear and adjudicate any action to
Court ruled that “pale pilsen” are generic words, enforce the rights to a registered mark shall
“pale” being the actual name of the color and “pilsen” likewise exercise jurisdiction to determine whether
being the type of beer, a light bohemian beer with a the registration of said mark may be cancelled in
strong hops flavor that originated in Pilsen City in accordance with this Act. The filing of a suit to
Czechoslovakia and became famous in the Middle enforce the registered mark with the proper court
Ages, and hence incapable of appropriation by any or agency shall exclude any other court or agency
beer manufacturer.Moreover, Section 123.1(h) of the from assuming jurisdiction over a subsequently
IP Code states that a mark cannot be registered if it filed petition to cancel the same mark. On the
“consists exclusively of signs that are generic for the other hand, the earlier filing of petition to cancel
goods or services that they seek to identify.” the mark with the Bureau of Legal Affairs shall not
constitute a prejudicial question that must be
o In this case, a cloud of doubt exists over San Miguel’s resolved before an action to enforce the rights to
exclusive right relating to the word “Ginebra.” San same registered mark may be decided. (Sec. 17,
Miguel’s claim to the exclusive use of the word R.A. No. 166a)
“Ginebra” is clearly still in dispute because of
Tanduay’s claim that it has, as others have, also SEC. 156. Actions, and Damages and Injunction for
registered the word “Ginebra” for its gin products. Infringement.
This issue can be resolved only after a full-blown trial.
156.1. The owner of a registered mark may recover
SEC. 151. Cancellation. - 151.1. A petition to cancel a damages from any person who infringes his rights, and
registration of a mark under this Act may be filed the measure of the damages suffered shall be either the
with the Bureau of Legal Affairs by any person reasonable profit which the complaining party would
who believes that he is or will be damaged by the have made, had the defendant not infringed his rights, or
registration of a mark under this Act as follows: the profit which the defendant actually made out of the
infringement, or in the event such measure of damages
(a) Within five (5) years from the date of the cannot be readily ascertained with reasonable certainty,
registration of the mark under this Act. then the court may award as damages a reasonable
(b) At any time, if the registered mark becomes the percentage based upon the amount of gross sales of the
generic name for the goods or services, or a defendant or the value of the services in connection with
portion thereof, for which it is registered, or has which the mark or trade name was used in the
been abandoned, or its registration was obtained infringement of the rights of the complaining party.
fraudulently or contrary to the provisions of this
Act, or if the registered mark is being used by, or
with the permission of, the registrant so as to
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156.2. On application of the complainant, the court may before the donation. In no case shall the infringing
impound during the pendency of the action, sales materials be returned to the defendant.
invoices and other documents evidencing sales.
156.3. In cases where actual intent to mislead the public If the court finds no infringement, the seized materials
or to defraud the complainant is shown, in the discretion shall be immediately returned to the defendant.
of the court, the damages may be doubled.
LEGAL REMEDIES - FALSE DESIGNATION OF
156.4. The complainant, upon proper showing, may also ORIGIN, FALSE DESCRIPTION OR
be granted injunction. REPRESENTATION (SEC. 169)
o Any person who, on or in connection with any
CIVIL ACTION goods or services, or any container for goods, uses
REQUIREMENT OF NOTICE FOR DAMAGES (§158) in commerce any word, term, name, symbol, or
o In any suit for infringement, the owner of the device, or any combination thereof, or any false
registered mark shall not be entitled to recover profits designation of origin, false or misleading
or damages unless the acts have been committed description of fact, or false or misleading
with knowledge that such imitation is likely to cause representation of fact, which:
confusion, or to cause mistake, or to deceive. Such  Is likely to cause confusion, or to cause
knowledge is presumed if the registrant gives notice mistake, or to deceive as to the affiliation,
that his mark is registered by displaying with the mark connection, or association of such person
the words '"Registered Mark" or the letter R within a with another person, or as to the origin,
circle or if the defendant had otherwise actual notice sponsorship, or approval of his or her goods,
of the registration. services, or commercial activities by another
person; or
SEC. 157. Power of Court to Order Infringing Material
Destroyed. -157.1. In any action arising under this o Any person who, on or in connection with any
Act, in which a violation of any right of the owner of goods or services, or any container for goods, uses
the registered mark is established, the court may in commerce any word, term, name, symbol, or
order that goods found to be infringing be, without device, or any combination thereof, or any false
compensation of any sort, disposed of outside the designation of origin, false or misleading
channels of commerce in such a manner as to description of fact, or false or misleading
avoid any harm caused to the right holder, or representation of fact, which:
destroyed; and all labels, signs, prints, packages, • In commercial advertising or promotion,
wrappers, receptacles and advertisements in the misrepresents the nature, characteristics,
possession of the defendant, bearing the registered qualities, or geographic origin of his or her or
mark or trade name or any reproduction, another person's goods, services, or
counterfeit, copy or colorable imitation thereof, all commercial activities, shall be liable to a civil
plates, molds, matrices and other means of making action for damages and injunction by any
the same, shall be delivered up and destroyed. person who believes that he or she is or is
likely to be damaged by such act.
157.2. In regard to counterfeit goods, the simple removal
of the trademark affixed shall not be sufficient o Any goods marked or labelled in contravention of
other than in exceptional cases which shall be the provisions of this Section shall not be imported
determined by the Regulations, to permit the into the Philippines or admitted entry at any
release of the goods into the channels of customhouse of the Philippines.
commerce.
o The owner, importer, or consignee of goods
A.M. No. 02-1-06-SC January 30, 2002 refused entry at any customhouse under this
RULE ON SEARCH AND SEIZURE IN CIVIL ACTIONS section may have any recourse under the customs
FOR INFRINGEMENT OF INTELLECTUAL revenue laws or may have the remedy given by the
PROPERTY RIGHTS IP Code in cases involving goods refused entry or
seized.
Section 22.Judgment. - If it appears after trial that the
seized documents and articles are found to infringe the CRIMINAL PENALTY
intellectual property right of the applicant or that they Independent of the civil and administrative sanctions
constitute the means for the production of infringing imposed by law
goods, the court shall order their destruction or donation o A criminal penalty of imprisonment from two (2) years
to charitable, educational or religious institutions with the to five (5) years and a fine ranging from Fifty
prohibition against bringing the same into the channels thousand pesos (P50,000) to Two hundred thousand
of commerce. In the latter case, infringing trademarks or pesos(P200,000), shall be imposed on any person
trade names found on labels, tags and other portions of who is found guilty of committing infringement (§159),
the infringing materials shall be removed or defaced unfair competition (§168) and false designation of
16
 origin, false or misleading description of fact, or false tampered, unlawfully modified, or infringed upon as
or misleading representation of fact (§169.1). defined under Section 155 of this Code. (As
amended by Republic Act No.9502 or the
LIMITATIONS ON ACTIONS Universally Accessible Cheaper and Quality
SEC. 159. Limitations to Actions for Infringement. Medicines Act of 2008)
Notwithstanding any other provision of this Act, the
remedies given to the owner of a right infringed under AUTHORITY TO DETERMINE RIGHT TO
this Act shall be limited as follows: REGISTRATION(SEC. 161)

159.1. Notwithstanding the provisions of Section 155 o In any action involving a registered mark, the court
hereof, a registered mark shall have no effect may determine the right to registration, order the
against any person who, in good faith, before the cancellation of a registration, in whole or in part, and
filing date or the priority date, was using the mark for otherwise rectify the register with respect to the
the purposes of his business or enterprise: Provided, registration of any party to the action in the exercise
That his right may only be transferred or assigned of this.
together with his enterprise or business or with that
part of his enterprise or business in which the mark COLLECTIVE MARKS (§167)
is used. o "Collective mark" means any visible sign designated
as such in the application for registration and capable
159.2. Where an infringer who is engaged solely in of distinguishing the origin or any other common
the business of printing the mark or other infringing characteristic, including the quality of goods or
materials for others is an innocent infringer, the services of different enterprises which use the sign
owner of the right infringed shall be entitled as under the control of the registered owner of the
against such infringer only to an injunction against collective mark;
future printing. o An application for registration of a collective mark
shall designate the mark as a collective mark and
159.3. Where the infringement complained of is shall be accompanied by a copy of the agreement, if
contained in or is part of paid advertisement in a any, governing the use of the collective mark.
newspaper, magazine, or other similar periodical or o The registration of a collective mark, or an application
in an electronic communication, the remedies of the therefor shall not be the subject of a license
owner of the right infringed as against the publisher contract
or distributor of such newspaper, magazine, or other
similar periodical or electronic communication shall
be limited to an injunction against the presentation of
such advertising matter in future issues of
suchnewspapers, magazines, or other similar
periodicals or in future transmissions of such
electronic communications. The limitations of this
subparagraph shall apply only to innocent infringers:
Provided, That such injunctive relief shall not be
available to the owner of the right infringed with
respect to an issue of a newspaper, magazine, or
other similar periodical or an electronic
communication containing infringing matter 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; and

159.4. There shall be no infringement of trademarks

or tradenames of imported or sold drugs and
medicines allowed under Section 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
17