Intellectual Property Law Review Notes PDF

INTELLECTUAL PROPERTY LAW Review notes c. Has been subject to reasonable steps under the REPUBLIC ACT NO. 8293: An Act Prescribing the circumst...

INTELLECTUAL PROPERTY LAW Review notes c. Has been subject to reasonable steps under the REPUBLIC ACT NO. 8293: An Act Prescribing the circumstances, by the person lawfully in control of Intellectual Property Code and Establishing the the information, to keep it secret. Intellectual Property Office, Providing For Its Powers and Functions, and For Other Purposes (Approved on June 6, 1997, took effect on January 1, 1998) Section 2. DECLARATION OF STATE POLICY. — The State recognizes that an effective intellectual and industrial INTELLECTUAL PROPERTY refers to the creations of property system is the mind: inventions, literary and artistic works, 1. vital to the development of domestic and creative symbols, names, images, and designs used in commerce. activity I means the legal rights which result from intellectual 2. facilitates transfer of technology activity in the industrial, scientific, literary, and artistic 3. attracts foreign investments and fields. 4. ensures market access for our products INTELLECTUAL PROPERTY RIGHTS It shall protect and secure the exclusive rights of The term "intellectual property rights" consists of: scientists, inventors, artists and other gifted citizens to their a. Copyright and Related Rights; intellectual property and creations, particularly when b. Trademarks and Service Marks; beneficial to the people, for such periods as provided in this c. Geographic Indications; Act. d. Industrial Designs; e. Patents; The use of intellectual property bears a social function. f. Layout-Designs (Topographies) of Integrated To this end, the State shall promote the diffusion of Circuits; knowledge and information for the promotion of national g. Protection of Undisclosed Information development and progress and the common good. Copyright – right granted by statute to the author or It is also the policy of the State to streamline administrative originator of literary, scholarly, scientific, or artistic procedures of registering patents, trademarks and productions including computer programs. A copyright copyright, to liberalize the registration on the transfer of gives him the legal right to determine how the work is technology, and to enhance the enforcement of intellectual used and to obtain economic benefits from the work. It is property rights in the Philippines. confined to literary and artistic works which are original intellectual creations in the literary and artistic domain STATE POLICIES protected from the moment of their creation. a. To protect and secure the exclusive rights of Trademarks – any visible sign capable of distinguishing scientists, investors, artists, and other gifted the goods (trademark) or services (service mark) of an citizens to their intellectual property and creations, enterprise and shall include a stamped or marked particularly when beneficial to the people, for such container of goods. periods as provided R.A. No. 8293. It is vested from registration. b. To promote the diffusion of knowledge and information for the promotion of national Geographic Indications – one which identifies a good as development and progress and the common good. originating in the territory of a TRIPS member, or a region c. To streamline administrative procedures of or locality in that territory where a given quality, registering patents, trademarks and copyright, to reputation or other characteristic of a good is essentially liberalize the registration on the transfer of attributable to its geographical origin. technology, and to enhance the enforcement of intellectual property rights in the Philippines Industrial Design – any composition of lines or colors or any three-dimensional form, whether or not associated The term "technology transfer arrangements" refers to: with lines or colors: Provided, that such composition or a) contracts or agreements form gives a special appearance to and can serve as b) involving the transfer of systematic knowledge pattern for an industrial product or handicraft. c) for the manufacture of a product, the application of a process, or rendering of a service Patents – a government authority or license conferring a d) including management contracts; right or title for a set period, especially the sole right to e) and the transfer, assignment or licensing of all forms exclude others from making, using, or selling an of intellectual property rights, invention. f) including licensing of computer software g) except computer software developed for mass Layout-Design (Topography) of Integrated Circuit – market. the three-dimensional disposition, however expressed, of the elements, at least one of which is an active element, Nature: and of some or all the interconnections of an integrated It is a licensing contract between an intellectual property circuit, or such a three-dimensional disposition prepared right owner, as the licensor, and a second party, as the for an integrated circuit intended for manufacture. It licensee who was granted the authority to commercially must be original in a sense that they are the result of exploit the same intellectual property right under specified their creators’ own intellectual effort. terms and conditions. Undisclosed information – Information which: This is a highly-regulated contract given its role in the a. Is a secret in a sense that it is not, as a body or in fulfillment of the State’s desire to bring technologies into the precise configuration and assembly of public domain through disclosures. components, generally known among or readily accessible to persons within the circles that Trade Related Aspects of the Intellectual Property normally deal with the kind of information in Rights (TRIPS) – ratified by the Philippine Senate on question; December 14, 1994. b. Has a commercial value because it is secret; and 1|NOTES Paris Convention on the Protection of the Industrial The Office is headed by a Director General who shall be Property – Right of Priority refers to an applicant after assisted by two (2) Deputies Director General. filing in one of the Contracting States may, within a period of time, apply for the protection in any of the other The Office shall be divided into six (6) Bureaus, each of Contracting States, the latter application will be regarded as which shall be headed by a Director and assisted by an if it had been filed on the same day as the first application Assistant Director. These Bureaus are: (September 27, 1965) a. The Bureau of Patents; b. The Bureau of Trademarks; RIGHT OF A FOREIGNER TO SUE FOR PROTECTION OF c. The Bureau of Legal Affairs; IP RIGHTS (PRINCIPLE OF RECIPROCITY) d. The Documentation, Information and Technology Transfer Bureau; Section 3. INTERNATIONAL CONVENTIONS AND e. The Management Information System and EDP RECIPROCITY. — Any person who is a: Bureau; a) national or who is domiciled f. The Administrative, Financial and Personnel Services b) or has a real and effective industrial establishment Bureau. c) in a country which is a party to any convention, treaty or agreement The Director General, Deputies Director General, Directors d) relating to intellectual property rights or the and Assistant Directors shall be appointed by the President repression of unfair competition, e) to which the Philippines is also a party, The other officers and employees of the Office by the f) or extends reciprocal rights to nationals of the Secretary of Trade and Industry, conformably with and Philippines by law, under the Civil Service Law Shall be entitled to benefits to the extent necessary to give Section 5. FUNCTIONS OF THE INTELLECTUAL effect to any provision of such convention, treaty or PROPERTY OFFICE (IPO) reciprocal law, in addition to the rights to which any owner a. Examine applications for grant of letters patent for of an intellectual property right is otherwise entitled by this inventions and register utility models and industrial Act. designs; b. Examine applications for the registration of marks, Section 160. RIGHT OF FOREIGN CORPORATION TO geographic indication, integrated circuits; SUE IN TRADEMARK OR SERVICE MARK c. Register technology transfer arrangements and ENFORCEMENT ACTION. — Any foreign national or settle disputes involving technology transfer juridical person who meets the requirements of Section payments covered by the provisions of Part II, 3 of this Act and does not engage in business in the Chapter IX on Voluntary Licensing and develop and Philippines may bring a civil or administrative action implement strategies to promote and facilitate hereunder for opposition, cancellation, infringement, technology transfer; unfair competition, or false designation of origin and d. Promote the use of patent information as a tool for false description, whether or not it is licensed to do technology development; business in the Philippines under existing laws e. Publish regularly in its own publication the patents, marks, utility models and industrial designs, issued Section 231. REVERSE RECIPROCITY OF FOREIGN and approved, and the technology transfer LAWS. — Any condition, restriction, limitation, diminution, arrangements registered; requirement, penalty or any similar burden imposed by the f. Administratively adjudicate contested proceedings law of a foreign country on a Philippine national seeking affecting intellectual property rights; and protection of intellectual property rights in that country, g. Coordinate with other government agencies and the shall reciprocally be enforceable upon nationals of said private sector efforts to formulate and implement country, within Philippine jurisdiction plans and policies to strengthen the protection of intellectual property rights in the country.  If a foreign corporation NOT doing business in the The Director General and Deputies Director General Philippines is suing as a party of a treaty to which Manage and direct all functions and activities of the Office, the Philippines is a signatory the fact that it is suing including the promulgation of rules and regulations to under Section 3 of RA 8293 NEED NOT be alleged implement the objectives, policies, plans, programs and as the court must take judicial notice of such fact projects of the Office. This managing function is limited by the proviso that the Director General shall be subject to the  However, if a foreign corporation IS SUING under supervision of the Secretary of the Department of Trade and any other agreement other than RA 8293 failure to Industry when the exercise of authority is to propose policies allege reciprocity is fatal to foreign corporation’s and standards in relation to the following: cause i. the effective, efficient, and economical operations of the Office requiring statutory enactment ii. coordination with other agencies of government in NATIONAL TREATMENT PRINCIPLE relation to the enforcement of intellectual property The Philippines, upon becoming a member of the World rights Trade Organization (WTO) has adhered to the TRIPS iii. the recognition of attorneys, agents, or other persons Agreement, which provides that protection afforded to the representing applicants or other parties before the member-states must be extended to the nationals of other Office iv. the establishment of fees for the filing and member-states processing of an application for a patent, utility model or industrial design or mark or a collective mark, geographic MOST-FAVORED NATION PRINCIPLE indication and other marks of ownership, and for all other Whatever favor, allowance, consideration, privilege or services performed and materials furnished by the Office immunity a member0states grants the nationals of another country is immediately and unconditionally accorded to Qualifications: the nationals of other member-states 1. Must be natural born citizens of the Philippines 2. At least 35 years of age on the day of their INTELLECTUAL PROPERTY OFFICE appointment 3. Holders of a college degree 2|NOTES  4. Provided that the Director General and at least 1 ii. And his original jurisdiction over disputes Deputy Director General shall be members of the relating to the terms of a license involving Philippine Bar who have engaged in the practice of the authors right to public performance of law for at least 10 years other communications of his work (Section 5. Proven competence, integrity, probity 7.1-C) and independence 6. Selection of the Director General and the Deputies INTER PARTES CASES ▬ These are contested cases filed Director General, consideration shall be given to before the IPO and are administrative in nature. 4 Kinds: such qualifications as would result, as far as Opposition Proceedings, Cancellation, Interference practicable, in the balanced representation in the (abolished), Concurrent Use Proceedings (not applicable Directorate General of the various fields of under IP Code) intellectual property Term of Office The Director General and the Deputies Director General shall be appointed by the President for a term of 5 years and shall be eligible for reappointment only once. Appointment to any vacancy shall be only for the unexpired term of the predecessor. TRADEMARKS It is also provided that the first Director General (Atty. Emma Francisco 1998-2004) appointed under that law shall have a first term of 7 years. "Mark" means any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise JURISDICTION and shall include a stamped or marked container of goods Original Jurisdiction of Director General (Section 7.1-C) Collective Mark – means any visible sign designated as Over disputes relating to the terms of a license involving the such in the application for registration and capable of authors right to public performance of other distinguishing the origin or any other common communications of his work characteristic, including the quality of goods or services of different enterprises which use the sign under the control of Original Jurisdiction of Bureau of Legal Affairs the registered owner of the collective mark. A collective mark Hear and decide is generally owned by an association or cooperative whose a. opposition to the application for registration of members may use the collective marks to market their marks; products b. cancellation of trademarks; c. cancellation of patents, utility models, and Service Mark – used to distinguish certain services as those industrial designs; provided by a specific enterprise. A service mark is very d. petitions for compulsory licensing of patents. similar in nature to a trademark. Both are distinctive signs. e. administrative complaints for violations of laws Services may be any kind such as financial, banking, travel, involving intellectual property rights. Jurisdiction is advertising or catering. limited to complaints where the total damages claimed are not less than P200,000. Trade name – the name of designation identifying or f. the Director of Legal Affairs shall have the power to distinguishing an enterprise; any individual name or hold and punish for contempt all those who surname, firm name, device or word used by manufacturers, disregard orders or writs issued in the course of the industrialists, merchants, and others to identify their proceedings. businesses, vocations or occupations. Regular Courts (Section 225) Well-known Mark – a mark considered well-known by the Without prejudice to the provisions of Subsection 7.1-C, competent authority of the country where protection for the actions under this Act shall be cognizable by the courts with mark is sought. appropriate jurisdiction under existing law Sounds and scent as trademarks – signs consisting of a WHERE TO APPEAL DECISIONS sound which are capable of distinguishing goods or services of one undertaking from those of the others. IP Code of the A. To Director General over all decisions rendered by: Philippines requires a mark to be “any visible sign.” The i. Bureau of Copyrights & Other related rights Requirement of visibility rules out sounds and smell as ii. Director of Legal Affairs possible trademarks in our jurisdiction iii. Director of Patents iv. Director of Trademarks Device – a catch-all term which usually refers to the word v. Director of the Documentation, Information or sign comprising the trademark. It can take on any form, and Technology Transfer Bureau e.g. letters, words, logos, pictures, a combination of words and logo, slogans, colors, product shapes, and sounds B. To Court of Appeals over decisions of Director General in the exercise of his appellate jurisdiction Slogan (word marks) – short words or phrases that capture over the decisions of: a company’s brand essence, personality, and positioning, i. Director of Legal Affairs and distinguish the firm from competitors. Slogans may be ii. Director of Patents registered as trademarks provided it is capable of iii. Director of Trademarks distinguishing the goods or services. C. To Secretary of Trade and Industry over decisions Goodwill – reputation and public confidence that a business of Director General in the exercise of his appellate venture has earned through a period of creditable dealings. jurisdiction over the decisions of: Article 521 of NCC provides that a goodwill of a business is i. Director of the Documentation, Information a property and may be transferred together with the right to and Technology Transfer Bureau use the name under which the business is conducted 3|NOTES Brand Name – a name that us given to a product by the The IP Code, under Section 124.2, requires the registrant or company that produces or sells it owner of a registered mark to declare “actual use of the mark” and present evidence of such use within the FUNCTIONS OF TRADEMARKS prescribed period. Failing in which, the IPO DG may cause 1. To identify the product and distinguish it from other the motu propio removal from the register of the mark’s identical or similar products registration. Also, any person, believing that “he or she will 2. To indicate distinctly the origin or ownership of the be damaged by the registration of a mark,” which has not goods to which they are attached; been used within the Philippines, may file a petition for 3. To guarantee the standard if quality of the goods cancellation. The IP Code and the Trademark Regulations 4. To advertise the goods they symbolize; have not specifically defined “use.” However, it is understood 5. To assure the public that they are producing the that the “use” which the law requires to maintain the genuine article; registration of a mark must be genuine , and not merely 6. To prevent fraud and imposition; and token. Based on foreign authorities, genuine use may be 7. To protect the manufacturer against substitution characterized as a bona fide use which results or tends to and sale of an inferior and different article as its result, in one way or another, into a commercial product interaction or transaction “in the ordinary course of trade.” Section 152. NON-USE OF A MARK WHEN EXCUSED — a. if caused by circumstances arising independently of the will of the trademark owner. Lack of funds shall not excuse non-use of a mark ACQUISITON OF OWNERSHIP OF MARK b. use of the mark in a form different from the form in which it is registered, which does not alter its Section 122. How Marks are acquired — the rights in a distinctive character mark shall be acquired through registration made validly in c. use of a mark in connection with one or more of the accordance with the provisions of this law. goods or services belonging to the class in respect of which the mark is registered Section 146. A certificate of registration shall remain in d. use of a mark by a company related with the force for 10 years and may be renewed for periods of 10 years registrant or applicant shall inure to the latter's as its expiration upon payment of the prescribed fee and benefit upon filing of a request. e. use of a mark by a person is controlled by the registrant or applicant with respect to the nature Trade Names or Business Names (Section 165) — A name and quality of the goods or services or designation may not be used as a trade name if by its nature or the use to which such name or designation may Registration is NOT compulsory be put, it is contrary to public order or morals and if, in While it is not compulsory, it is highly advisable, as particular, it is liable to deceive trade circles or the public as registration provides the exclusive right to prevent to the nature of the enterprise identified by that name. unauthorized use of the trademark. Hence, there are no statutory sanctions for not registering, but there are Notwithstanding any laws or regulations providing for any business consequences for such failure. obligation to register trade names, such names shall be protected, even prior to or without registration, against any unlawful act committed by third parties. TRADEMARK APPLICATION SECTION 122 + SECTION 124.2 Certificate of Registration is a prima facie evidence of: Section 122 should be read together with Section 124.2 1. Validity of registration which provides that the applicant or the registrant shall file 2. Ownership of the mark by the registrant\ a declaration of actual use of the mark with evidence to that 3. Exclusive right of the registrant to use the same in effect, as prescribed by the Regulations within three (3) years connection with the goods or services and those that from the filing date of the application. Otherwise, the are related thereto application shall be refused or the mark shall be removed from the Register by the Director. LEVI STRAUSS & CO. VS. CLINTON APPARELLE: CERTIFICATE OF REGISTRATION IS PRIMA FACIE Declaration of Actual Use: notarized document that is EVIDENCE OF THE VALIDITY OF THE REGISTRATION, required within 3 years from the filing date of application. THE REGISTRANT’S OWNERSHIP OF THE MARK AND OF The declaration must be accompanied by proof of actual THE EXCLUSIVE RIGHT TO USE THE SAME IN use as of the date claimed. Note that DAU alone, without CONNECTION WITH THE GOODS OR SERVICES AND proof of actual use, would not be sufficient to establish THOSE THAT ARE RELATED THERETO SPECIFIED IN actual use. Contents— THE CERTIFICATE a. The declaration must be under oath Attention should be given to the fact that LS & Co. and LSPI’ b. It must refer only to one application or registration registered trademark consists of 2 elements: (1) the word c. Must contain the name and address of the applicant mark “Dockers” and (2) the wing-shaped design or logo. d. Registrant must declare that the mark is in actual Notably, there is only one registration for both features of use in the Philippines the trademark giving the impression that the 2 should be considered as a single unit. Clinton Apparelle’s trademark, Declaration of Non-Use: may be filed within 1 year from the on the other hand, uses the “Paddocks” word mark on top of 5th anniversary of the date of registration of the mark. a logo which according to LS & Co. and LSPI is a slavish Registrant must show valid reasons based on the existence imitation of the “Dockers” design. Given the single of obstacles to such use. Otherwise, the mark shall be registration of the trademark “Dockers and Design” and removed from the Register by the Office. considering that Clinton Apparelle only uses the assailed device but a different word mark, the right to prevent the W LAND HOLDINGS INC. VS. STARWOOD HOTELS: latter from using the challenged “Paddocks” device is far ACTUAL USE OF THE MARK REPRESENTING THE from clear. Stated otherwise, it is not evident whether the GOODS OR SERVICES INTRODUCED AND TRANSACTED single registration of the trademark “Dockers and Design” IN COMMERCE OVER A PERIOD OF TIME CREATES confers on the owner the right to prevent the use without THAT GOODWILL WHICH THE LAW SEEKS TO PROTECT the owner’s consent of a portion of a trademark registered in 4|NOTES its entirety constitutes material or substantial invasion of The agent of the applicant need not be a member of the the owner’s right. Philippine bar. However, where registration disputes arise and there becomes a need to prepare and file an opposition Section 124. REQUIREMENTS OF APPLICATION — or answer to an opposition, or where an inter partes case a. Request for registration; arise, knowledge of the law and jurisprudence becomes b. Applicant’s name and address; imperative and participation of a member of the Philippine c. Name of a State of which the applicant is a national bar will be needed. or where he has domicile; and the name of a State in which the applicant has a real and effective FILING DATE industrial or commercial establishment, if any; The filing date of an application shall be the date on which d. If juridical entity, the law under which it is the Office received payment for the required fee and the organized and existing; following indications and elements in English or Filipino— e. Appointment of an agent or representative, if the a. Request for a Philippine registration applicant is not domiciled in the Philippines; b. Identity of applicant f. Where the applicant claims the priority of an earlier c. Reproduction of the mark application, an indication of— d. Indications sufficient to contact the applicant i. Where the earlier application was filed e. List of goods or services for which the registration is ii. Date of earlier application sought iii. If available, application number g. Names of the goods or services for which the registration is sought h. Signature by, or other self-identification of, the applicant or his representative PRIORITY RIGHT (Section 131) i. Where the applicant claims color as a distinctive An application for registration of a mark filed in the feature of the mark, a statement to that effect as well Philippines by a person referred to in Section 3, and who as the name or names of the color or colors claimed previously duly filed an application for registration of the and an indication, in respect of each color, same mark in one of those countries, shall be considered as of the principal parts of the mark which are in that filed as of the day the application was first filed in the foreign color country. No registration of a mark in the Philippines by a j. Where the mark is a three-dimensional mark, a person described in this section shall be granted until such statement to that effect mark has been registered in the country of origin of the k. Reproductions of the mark applicant. l. A transliteration or translation of the mark or of some parts of the mark There must be an earlier foreign trademark application before priority rights become relevant. Note that this right is Transliteration: is an act, process, or instance representing a “time-limited” right. Thus, an application with a claim of or spelling of words, letters, or characters of one language in priority right must be filed within 6 months from the date the letters and characters of another language. the earliest foreign application was filed. When a trademark concerning an international trademark TERRITORIALITY PRINCIPLE application consists of characters other than Roman This means that trademarks rights are recognized within a alphabet, for example Japanese characters, or contains state only when the goods or services are used in commerce some such characters, the characters must be transliterated within that said state. Thus, the law on trademarks rests according to the pronunciation in the language allowed for upon territoriality. A foreign trademark may enjoy protection international trademark applications and describes them in rights in the Philippines only when the good or services are Roman alphabet. used in commerce in the Philippines. HOWEVER, while under the territoriality principle, internationally well-known Translation: is an act, process, or instance of translating as marks are the exceptions to this rule rendering from one language of representational system into another TELLE QUELLE RULE Provides that a country must accept for filing and protect a NICE CLASSIFICATION trademark duly registered in the (foreign) applicant’s (International Trademark Classification System) is the country of origin as to the form of the tr4ademark as system by which a trademark applications are classified. registered in the applicant’s country of origin. There are 34 classes of goods and 8 classes of businesses or services. OPPOSITION Rights if Distributor – The right to register trademark is Any person who believes that he would be damaged by the based on ownership. When the applicant is not the owner of registration of a mark may, upon payment of the required the trademark, he has no right to apply for the registration fee and within 30 days after the publication, file with the of the same. Thus, a mere distributor of products bearing a Office an opposition to the application. trademark, even if permitted to use said trademark has no right to and cannot register said trademark. Such opposition shall be— a. in writing An exclusive distributor does not acquire any propriety b. verified by the oppositor or by any person on his interest as well as the authorized manufacturer and seller behalf who knows the facts is not the owner of the trademark of the products he was c. shall specify the grounds on which it is based and authorized to manufacture and sell. include a statement of the facts relied upon d. copies of certificates of registration of marks or other TRADEMARK AGENT supporting documents If the applicant is not domiciled or has no real and effective  Dismissal of opposition does not follow that application commercial establishment in the Philippines, he shall should be granted designate by a written document filed in the Office, the name  Upon the filing of an opposition, the Office shall serve and address of a Philippine resident who may be served notice of the filing on the applicant, and of the date of notices or process in proceedings affecting the mark. the hearing thereof upon the applicant and the oppositor and all other persons having any right, title or interest in the mark covered by the application 5|NOTES  BIRKENSTOCK ORTHOPAEDIE GMBH VS. PHILIPPINE Section 142. CORRECTION OF MISTAKES MADE BY THE SHOE EXPO: REGISTRATION OF A TRADEMARK, BY OFFICE — Whenever a material mistake in a registration ITSELF, IS NOT A MODE OF ACQUIRING OWNERSHIP incurred through the fault of the Office is clearly disclosed Philippine Shoe Expo admitted that it failed to file the 10th by the records of the Office, a certificate stating the fact and Year DAU within the requisite period. As a consequence, it nature of such mistake shall be issued without charge, was deemed to have abandoned or withdrawn any right or recorded and a printed copy thereof shall be attached to interest over the mark “BIRKENSTOCK.” It must be each printed copy of the registration emphasized that registration of a trademark, by itself, is not a mode of acquiring ownership. If the applicant is not the owner of the trademark, he has no right to apply for its registration. Registration merely creates a prima facie CANCELLATION presumption of the validity of the registration. Such A petition to cancel a registration of a mark under presumption, just like the presumptive regularity in the this Act may be filed with the Bureau of Legal Affairs by any performance of official functions, is rebuttable and must give person who believes that he is or will be damaged by the way to evidence to the contrary. registration of a mark under this Act ECOLE DE CUISINE MANILLE, INC. VS. COINTREAU: PRESENT LAW ON TRADEMARKS, THE INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES, HAS ALREADY Within five (5) years DISPENSED WITH THE REQUIREMENT OF PRIOR from the date of the ACTUAL USE AT THE TIME OF REGISTRATION At any time It is significant to note that Section 2-A does not require that registration of the mark under this Act the actual use of a trademark must be within the Philippines. Thus, under R.A. No. 166, one may be an owner of a mark due to its actual use but may not yet have the 1. any person who 1. if the registered mark right to register such ownership here due to the owner’s believes that he becomes the generic failure to use the same in the Philippines for 2 months prior is or will be name for the goods or to registration. In the instant case, it is undisputed that damaged by the services, or a portion Cointreau has been using the subject mark in France, prior registration of a thereof, for which it is to Ecole’s averred first use of the same in the Philippines, of mark under this registered which the latter was fully aware thereof. On the other hand, Act Ecole has no certificate of registration over the subject mark 2. mark has been but only a pending application. Under the foregoing abandoned circumstances, even if Ecole was the first to use the mark in the Philippines, it cannot be said to have validly 3. registration was obtained appropriated the same. fraudulently or contrary to the provisions of this REGISTRABILITY OF MARKS (Section 123) Act A mark cannot be registered if it: 4. registered mark is being used by, or with the Consists of immoral, deceptive or scandalous permission of, the matter, or matter which may disparage or registrant so as to falsely suggest a connection with persons, misrepresent the source 1 living or dead, institutions, beliefs, or national of the goods or services symbols, or bring them into contempt or on or in connection with disrepute which the mark is used 5. registered owner of the The law disallows false suggestion of connection to a person, mark without legitimate and institution, or a belief. Actual claim of connection is reason fails to use the unnecessary. Also, the popularity of person is immaterial. mark within the However, popularity matters to infringers because they Philippines, or to cause it unjustly ride on the goodwill of another. to be used in the Philippines by virtue of a Right of Publicity – this provision is intended to protect the license during an right of publicity of famous individuals and institutions from uninterrupted period of commercial exploitation of their goodwill by others. three (3) years or longer Words and illustrations that are considered to violate If the registered mark becomes the generic name for less commonly accepted norms or morality and religion are than all of the goods or services for which it is registered, a generally not allowed to be registered as trademarks. petition to cancel the registration for only those goods or services may be filed. USE OF “JOSE RIZAL” in Jose Rizal University There is apparently no prohibition to the use of the name Upon the filing of cancellation, the Office shall serve notice Jose Rizal since the use of the name of the dead person was of the filing on the applicant, and of the date of the hearing not in derogatory fashion nor can it be falsely represented thereof that Jose Rizal was connected with the said institution (FUNA Book) Opposition proceedings vis-à-vis cancellation proceedings The opposition to a registration and the petition for Consists of the flag or coat of arms or other cancellation are alternative proceedings which a party may insignia of the Philippines or any of its political avail of according to his purpose, needs, and predicaments, 2 subdivisions, or of any foreign nation, or any and the petitioner has the right to choose which remedy it simulation thereof deems best for the protection of its rights 6|NOTES  knowledge in the Philippines which has been obtained as a Consists of a name, portrait or signature result of the promotion of the mark. It is not required that identifying a particular living individual except by the well-known mark be used in the commerce in the his written consent, or the name, signature, or Philippines but only that it be well-known. Even if the 3 portrait of a deceased President of the trademark is not registered in the Philippines, if it is a Philippines, during the life of his widow, if any, wellknown mark, it will be protected. except by written consent of the widow Is identical with, or confusingly similar to, or Thus, the name and image of a famous individual may be constitutes a translation of a mark considered registered provided there is consent. If the individual has well-known in accordance with the preceding died, consent may be given by a representative such as an 6 paragraph, WHICH IS REGISTERED IN THE administrator or executor. PHILIPPINES with respect to GOODS OR SERVICES WHICH ARE NOT SIMILAR to those Signature of a person. An application to register a person’s with respect to which registration is applied for signature can be made by that person or with his consent, in writing, permitting the applicant to make the application. If it is not made by that person, or with his consent in writing, such application must be refused. Use of the mark in relation to those goods or services would indicate a connection between those goods or services, and There is no particular provision in the IP Code dealing the owner of the registered mark and that the interests of specifically with surnames or persons. Nonetheless, the owner of the registered mark are likely to be damaged by surnames cannot, as a rule, be registered as trademarks on such use the ground of non-distinctiveness and public policy. The public policy is that surnames are free to be used by all EVEN DISSIMILAR GOODS DOCTRINE — if goods or persons having that surname. Exceptions— services are NOT identical or similar, such registration (of a. Surname has acquired distinctiveness by acquiring the mark identical to a well-known mark) will still not be secondary meaning allowed if: b. Surname has another meaning a. There is a connection between goods or services of junior and senior users of well-known mark b. The interests of the owner of the registered mark are likely to be damaged Is identical with a registered mark belonging to a c. The well-known mark is registered in the different proprietor or a mark with an earlier Philippines filing or priority date, in respect of: 4 i. The same goods or services Not all foreign marks are well-known marks Well-known ii. Closely related goods or services marks must be well-known internationally and in the iii. If it nearly resembles such a mark as to be Philippines. As explained in Kabushi Kaisha Isetan vs. IAC, likely to deceive or cause confusion where a mark is well-known in Japan, but not in the Philippines, the mark cannot be considered as a wellknown mark. Thus, the trademark “Isetan” being claimed by FIRST-TO-FILE RULE Kabushi Kaisha Isetan, a foreign corporation organized and Applications are rejected on “relative grounds” when the existing under the laws of Japan, is unknown to trademark conflicts with prior trademark rights. Having two Filipinos. identical trademarks for the same type of product could cause confusion among consumers. Exceptions— CRITERIA FOR DETERMINING WHETHER A MARK IS a. Prior registration made in bad faith WELL-KNOWN: (DRRUM-SICLEEE) b. Prior registration was preceded by a prior use in good faith and in concept of owner by another a) Degree of the inherent or acquired distinction of the c. There is a conflict with a claim to a priority right mark b) Reputation acquired by the mark RELATED GOODS DOCTRINE c) extent to which the mark has been Registered in the Trademark protection under IP Code provides that although world not specified in the certificate of registration, but are d) duration, extent and geographical area of any Use of “related” to the goods specified in the certificate, such goods the mark would be covered by trademark protection. The test whether e) Market share, in the Philippines and in other countries or not the goods are related to each other is the similarity f) record of Successful protection of the rights in the of the products involved and not the arbitrary mark classification or general description of their properties or g) presence or absence of Identical or similar marks characteristics. validly registered for or used on identical or similar goods or services h) Commercial value attributed to the mark in the world Is identical with, or confusingly similar to, or i) outcome of Litigations dealing with the issue of constitutes a translation of a mark which is whether the mark is a well-known mark considered by the competent authority of the j) Exclusivity of registration attained by the mark in the Philippines to be well-known internationally and world 5 in the Philippines, WHETHER OR NOT IT IS k) Exclusivity of use attained by the mark in the world REGISTERED HERE, as being already the mark l) Extent to which the mark has been registered in the of a person other than the applicant for world registration, and USED FOR IDENTICAL OR SIMILAR GOODS OR SERVICES Is likely to mislead the public, particularly as to 7 the nature, quality, characteristics or WELL-KNOWN MARKS geographical origin of the goods or services In determining whether a mark is well-known, account shall be taken of the knowledge of the relevant sector of the public, rather than of the public at large including 7|NOTES The test as to whether or not it is deceptive is how it would be regarded by the majority of purchasers at the time that the question arises and the fact that an ignorant person Note that ordinary geometric shapes cannot be registered. might be deceived. The rationale for the prohibition is to prevent trademark protection from granting its proprietor a monopoly on For example, “BOLPENS” for pencils, “COLA” for alcoholic technical solutions or functional characteristics of a product beverages. Marketing margarine under a trademark which a user is likely to seek in the products of competitors. featuring a COW would probably be rejected as it would be considered misleading for consumers who are likely to associate the mark with dairy products (butter). Consists of color alone, UNLESS defined by a 12 given form Consists exclusively of signs that are generic for 8 the goods or services that they seek to identify Where the applicant claims color as a distinctive feature of the mark, a statement to that effect as well as the name or names of the color or colors claimed and an indication, in GENERIC MARKS are names of products they seek to respect of each color, of the principal parts of the mark identify. They are juris publici, incapable of appropriation which are in that color. by any single individual to the exclusion of others. The term “generic” must be understood in reference to the goods or COLOR DEPLETION RULE services associated with the word or sign in question. They The registration of color alone is prohibited because cannot acquire secondary meaning. While descriptive or eventually all types of colors will be exhausted if exclusive generic terms may not be registered, an exception is acquisition is permitted. recognized where such descriptive or generic term is made distinctive by combination with another word or phrase. 13 Is contrary to public order or morality Consists exclusively of signs or of indications that have become customary or usual to 9 designate the goods or services in everyday Words and illustrations that are considered to violate language or in bona fide and established trade commonly accepted norms or morality and religion are practice generally not allowed to be registered as trademarks. A mark cannot also be registered if it is prohibited by express provision of the law Thus, they no longer distinguish the goods or services because they are used so often to refer to the good or WEAK AND STRONG MARKS services. Example is VCO for virgin coconut oil, DIAMOND PEEL for services involving cosmetic procedure Distinctiveness is an essential element of a trademark. All trademark must, therefore, be distinctive. Thus, Consists exclusively of signs or of indications distinctiveness is a question of fact. that may serve in trade to designate the kind, quality, quantity, intended purpose, value, The weaker the mark is, in terms of distinctiveness, the more 10 geographical origin, time or production of the likelihood of it being rejected. The stronger the mark, the goods or rendering of the services, or other more likelihood of it being approved for registration. The characteristics of the goods or services weaker the mark is the more likelihood of it becoming “confusingly similar” with another mark. DESCRIPTIVE MARKS are words that are usually used in Weak Marks — trade to describe the product in question. They convey a) Generic marks characteristics, functions, qualities, or ingredients of a b) Indications that have been customary for trade product to one who has never seen it or does not know it. c) Descriptive terms and geographical marks d) Deceptive or misleading trademarks Examples of descriptive marks are: “Certified” for motor oil, e) Relating to a particular person “Turbodiesel” foe diesel engines, “Maskuline” foe men’s underwear, outerwear, pajamas, and shirts. STRONG MARKS are marks which can be registered — The statute provides for refusal ONLY when the mark is Fanciful Mark – invented for the sole purpose of functioning merely descriptive as applied to applicant’s good or services as a trademark and have no other meaning than acting as a mark. Coined words have the advantage of being easy to GEORGRAPHICAL MARKS geographical origin of the goods protect as they are more likely to be considered inherently or rendering of the service. Note that a mere geographical distinctive name or term per se is NOT prohibited. What are prohibited are the use of geographical names in the misdescriptive or Arbitrary Mark – utilized as a device having a common descriptive manner. It must be the likelihood of goods meaning that has no relation to the goods or services being originating in the areas in question that is prohibited. sold. They bear no logical relation to the product they Exceptions— advertise and to the actual characteristics of the product it a. When the mark acquired secondary meaning represents b. When the geographical mark was not used in a descriptive sense Suggestive Mark – hint at one or some of the attributes of the products. The appeal of suggestive mark is that they act as a form of advertising. Consists of shapes that may be necessitated by technical factors or by the nature of the goods Composite Mark – consisting of two or more elements or 11 themselves or factors that affect their intrinsic combination of words, phrases, designs, symbols or color value schemes. Although they cannot be registered by themselves, 8|NOTES together they may be a part of a composite mark as long as the license is usually called the licensee. It is a partnership they provide a disclaimer between the intellectual property rights owners and another who is authorized to use such rights in exchange for an Coined Mark – marks which are contractions of or coined agreed payment. from generic or descriptive terms Assignment of Trademarks DOCTRINE OF SECONDARY MEANING An assignment is a transfer of the ownership of the mark. It While as a general rule, generic, indicative or descriptive should be distinguished from a license which is the contract marks are incapable of appropriation, nothing shall prevent giving another, the licensee, the right to use the mark while the registration of such mark when such kind of mark has the ownership of the mark is retained by the licensor. The become distinctive in relation to the goods for which Deed of Assignment itself constitutes sufficient proof of its registration is requested. ownership of the trademark. The Office may accept as prima facie evidence that the mark TRADEMARK INFRINGEMENT (Section 155) has become distinctive, as used in connection with the applicant's goods or services in commerce, proof of Any person who shall, without the consent of the owner of substantially exclusive and continuous use thereof by the the registered mark: applicant in commerce in the Philippines for 5 years before A. Use in commerce any reproduction, counterfeit, the date on which the claim of distinctiveness is made. copy, or colorable imitation of a registered mark or the same container or a dominant feature thereof in RIGHTS CONFERRED BY REGISTRATION connection with the— i. Sale The owner of a registered mark shall have the exclusive ii. Offering for sale right to prevent all third parties not having the owner's iii. Distribution consent from using in the course of trade identical or similar iv. Advertising of any goods or services including signs or containers for goods or services which are identical other preparatory steps necessary to carry out or similar to those in respect of which the trademark is the sale of any goods or services on or in registered where such use would result in a likelihood of connection with which such use is likely to confusion. In case of the use of an identical sign for identical cause confusion, or to cause mistake, or to goods or services, a likelihood of confusion shall be deceive presumed. B. Reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant feature thereof and The exclusive right of the owner of a well-known mark which apply such reproduction, counterfeit, copy or is registered in the Philippines, shall extend to goods and colorable imitation to labels, signs, prints, packages, services which are not similar to those in respect of which wrappers, receptacles or advertisements intended to the mark is registered: Provided, That use of that mark in be used in commerce upon or in connection with relation to those goods or services would indicate a the— connection between those goods or services and the owner i. Sale of the registered mark: Provided further, That the interests ii. Offering for sale of the owner of the registered mark are likely to be damaged iii. Distribution by such use. iv. Advertising of any goods or services including other preparatory steps necessary to carry out Limitations on Trademarks Involving Medicines the sale of any goods or services on or in In case the use of an identical sign for identical goods or connection with which such use is likely to services, a likelihood of confusion shall be presumed. cause confusion, or to cause mistake, or to EXCEPT in cases of importation of drugs, and medicines deceive allowed under Section 72.1 and of off-patent drugs and medicines. Provided that such drugs and medicines bear the ELEMENTS OF INFRINGEMENT UNDER R.A. NO. 8293 registered marks that have not been tampered, unlawfully 1. The trademark being infringed is registered in the modified, or infringed upon. Intellectual Property Office; however, in infringement of trade name, the same need not be registered Limitation on the Right to Preclude Use of Third Parties 2. The trademark or trade name is reproduced, of Names, etc. (Section 148) counterfeited, copied, or colorably imitated by the Registration of the mark shall not confer on the registered infringer owner the right to preclude third parties from using bona 3. The infringing mark or trade name is used in connection fide their names, addresses, pseudonyms, a geographical with the sale, offering for sale, or advertising of any name, or exact indications concerning the kind, quality, goods, business or services; or the infringing mark or quantity, destination, value, place of origin, or time of trade name is applied to labels, signs, prints, packages, production or of supply, of their goods or services: Provided, wrappers, receptacles or advertisements intended to be that such use is confined to the purposes of mere used upon or in connection with such goods, business identification or information and cannot mislead the public or services as to the source of the goods or services 4. The use or application of the infringing mark or trade name is likely to cause confusion or mistake or to LICENSE CONTRACTS deceive purchasers or others as to the goods or services themselves or as to the source or origin of such goods or Any license contract concerning the registration of a mark, services or the identity of such business or an application therefor, shall provide for effective control 5. It is without the consent of the trademark or trade name by the licensor of the quality of the goods or services of the owner or the assignee thereof licensee in connection with which the mark is used. If the license contract does not provide for such quality control, or Among the elements, the element of likelihood of if such quality control is not effectively carried out, the confusion is the gravamen of trademark infringement. license contract shall not be valid. Intent to deceive is NOT required in trademark Intellectual Property License infringement and it is the LIKELIHOOD of confusion and A license is a permission to do, something that, without the NOT actual confusion license, would be an infringement of IP. The person granting the license is usually the licensor, and the person receiving 9|NOTES TYPES OF CONFUSION Since UFC’s product, catsup, is also a household product There are two types of confusion in trademark infringement: found on the same grocery aisle, in similar packaging, the confusion of goods and confusion of business. public could think that UFC had expanded its product mix to include lechon sauce, and that the “PAPA BOY” lechon Confusion of goods in which event the ordinarily sauce is now part of the “PAPA” family of sauces, which is prudent purchaser would be induced to purchase not unlikely considering the nature of business that UFC is one product in the belief that he was purchasing the in. Thus, if allowed registration, confusion of business may other. In which case, defendant’s goods are then set in, and UFC’s hard-earned goodwill may be associated to bought as the plaintiffs, and the poorer quality of the newer product introduced by Barrio Fiesta, all because the former reflects adversely on the plaintiff’s of the use of the dominant feature of UFC’s mark on Barrio reputation. Fiesta’s mark, which is the word “PAPA.” Confusion of business: Here though the goods of GREAT WHITE SHARK ENTERPRISES VS. CARALDE: A the parties are different, the defendants product is TRADEMARK DEVICE IS SUSCEPTIBLE TO such as might reasonably be assumed to originate REGISTRATION IF IT IS CRAFTED FANCIFULLY AND IS with the plaintiff, and the public would then be CAPABLE OF IDENTIFYING AND DISTINGUISHING THE deceived either into that belief or into the belief that GOODS OF ONE MANUFACTURER OR SELLER FROM there is some connection between the plaintiff and THOSE OF ANOTHER defendant which, in fact, does not exist. Court finds no confusing similarity between the subject marks. While both marks use the shape of a shark, the Court noted distinct visual and aural differences between Confusion of Goods Confusion of Business them. In Great White Shark's "GREG NORMAN LOGO," there is an outline of a shark formed with the use of green, Confusingly similar Confusingly similar yellow, blue and red lines/strokes. The visual dissimilarities marks are employed in marks are used on the between the two marks are evident and significant, negating different or non- same kind of goods or the possibility of confusion in the minds of the ordinary competing goods or services purchaser, especially considering the distinct aural services difference between the marks. TWO TESTS TO DETERMINE LIKELIHOOD OF CONFUSION MCDONALD'S CORPORATION VS. L.C. BIG MAK: DOMINANCY TEST HOLISTIC TEST TRADEMARK INFRINGEMENT To establish trademark infringement, the following elements Focuses on the similarity Considers the entirety of must be shown: (1) the validity of plaintiff's mark; (2) the of the main, prevalent or the marks, including plaintiff's ownership of the mark; and (3) the use of the mark essential features of the labels and packaging, in or its colorable imitation by the alleged infringer results in competing trademarks determining confusing "likelihood of confusion." Of these, it is the element of that might cause similarity likelihood of confusion that is the gravamen of trademark confusion infringement. Clearly, respondents have adopted in "Big Mak" not only the dominant but also almost all the features of "Big Mac." Applied to the same food product of Relies on visual, aural, hamburgers, the two marks will likely result in confusion in and connotative the public mind. Certainly, "Big Mac" and "Big Mak" for comparisons and overall Relies only on visual hamburgers create even greater confusion, not only aurally impression between the but also visually. Absent proof that respondents' adoption of two trademarks the "Big Mak" mark was due to honest mistake or was fortuitous, the inescapable conclusion is that respondents adopted the "Big Mak" mark to "ride on the coattails" of the The test is whether the more established "Big Mac" mark. There is actually no notice general confusion made to the public that the "Big Mak" hamburgers are products of The test is whether there by the article upon the is a similarity of the "L.C. Big Mak Burger, Inc." and not those of petitioners who eye of the casual have the exclusive right to the "Big Mac" mark. This clearly prevalent features of the purchaser, who is shows respondents' intent to deceive the public. Had competing trademarks unsuspicious and off his respondents' placed a notice on their plastic wrappers and which might cause guard, is such as to likely bags that the hamburgers are sold by "L.C. Big Mak Burger, confusion result in the Inc.", then they could validly claim that they did not intend confounding it with the to deceive the public. In such case, there is only trademark original infringement but no unfair competition. FACTORS IN DETERMINING WHETHER GOODS ARE While proof of actual confusion is the best evidence of infringement, its absence is inconsequential RELATED (Mighty Corporation v. E. & J. Gallo Winery) 1) Classification of the goods; 2) Nature of the goods; UFC PHILIPPINES, INC. VS. BARRIO FIESTA: THE 3) Descriptive properties, physical attributes or WORD "PAPA" IS THE DOMINANT FEATURE OF essential characteristics of the goods, with NUTRI-ASIA’S MARK "PAPA KETSARAP." THE reference to their form, composition, texture or WORD "PAPA" IS ALSO THE DOMINANT FEATURE quality; OF BARRIO FIESTA’S "PAPA BOY & DEVICE" 4) Style of distribution and marketing of the goods, MARK including how the goods are displayed and sold. Barrio Fiesta’s mark cannot be registered. The mark is 5) Relatedness of the goods 6) Similarity of marks related to a product, lechon sauce, an everyday all-purpose 7) Similarity of appearance condiment and sauce, that is not subjected to great scrutiny 8) Similarity in sound (Idem Sonans Rule) and care by the casual purchaser, who knows from regular 9) Design marks visits to the grocery store under what aisle to find it, in which bottle it is contained, and approximately how much it costs. 10 | N O T E S Colorable Imitation — that which denotes such a close or harm caused to the right holder, or destroyed; and all labels, ingenious imitation as to be calculated to deceive ordinary signs, prints, packages, wrappers, receptacles and persons. It refers to such similarity in form, content, words, advertisements in the possession of the defendant, bearing sound, meaning, and special arrangement of the mark with the registered mark or trade name or any reproduction, that of the other mark in their overall presentation or in their counterfeit, copy or colorable imitation thereof, all plates, essential and substantive parts. molds, matrices and other means of making the same, shall be delivered up and destroyed. Idem Sonans Rule — two trademarks used on identical or related goods may be confusingly similar if they have similar In regard to counterfeit goods, the simple removal of the sound of pronunciation trademark affixed shall NOT be sufficient other than in exceptional cases which shall be determined by the TRADEMARK DILUTION is the lessening of the capacity of Regulations, to permit the release of the goods into the a famous mark to identify and distinguish goods or services, channels of commerce. regardless of the presence or absence of: a) competition between the owner of the famous mark REQUIREMENT OF NOTICE and other parties Registrant shall give notice that their marks are registered b) likelihood of confusion, mistake or deception by displaying with the mark the words '"Registered Mark" or the letter R within a circle or “Reg. IPOPHL.” Such mark Subject to the principles of equity, the owner of a famous supplies the presumption of knowledge that such imitation mark is entitled to an injunction against another person’s is likely to cause confusion, or to cause mistake, or to commercial use in commerce of a mark or trade name, if deceive. This presumed knowledge establishes the basis for such use begins after the mark has become famous and recovery of damages. Without such notice, the registrant causes dilution of the distinctive quality of the mark. This is must prove that the infringer had knowledge of the intended to protect famous marks from subsequent uses registration in order to recover damage. that blur distinctiveness of the mark or tarnish or disparage it. DEFENSES AGAINST INFRINGEMENT SUITS — 1. Prior use by the defendant To be eligible for protection from dilution, there has to be 2. No likelihood of confusion or mistake or deception a finding that: 3. Plaintiff’s claimed mark is not protected 1. the trademark sought to be protected is famous and 4. Plaintiff’s mark has become generic distinctive 5. Plaintiff’s fraudulent registration 2. he use by respondent of mark began after the 6. Plaintiff’s mark was abandoned petitioner’s mark became famous 7. Plaintiff has not come to the court with clean hands 3. such subsequent use defames petitioners mark 8. Laches or estoppel 9. Non-competing products or services The IP Code does not expressly provide protection against 10. Defendant’s good faith trademark dilution. Nonetheless, the concept of trademark dilution is very much present in the protection of REMEDIES AGAINST TRADEMARK INFRINGEMENT — internationally well-known marks. 1. Civil action for damages (Section 156.1) 2. Impounding of infringing goods by the court (Section Section 156. ACTIONS, AND DAMAGES AND 156.2) INJUNCTION FOR INFRINGEMENT — 3. Doubling of damages (Section 156.3) The owner of a registered mark may recover damages from 4. Injunctive relief (Section 156.4) any person who infringes his rights, and the measure of the 5. Dispose of infringing goods outside the channels of damages suffered shall be either commerce (Section 157.1) a) the reasonable profit which the complaining party 6. Destruction of infringing goods (Section 157.1) would have made, had the defendant not infringed 7. Criminal action (Section 170) his rights 8. Administrative action before IP Office b) or the profit which the defendant actually made out 9. Prohibit importation of infringing goods (Section 166) of the infringement c) or in the event such measure of damages cannot be LIMITATIONS TO ACTIONS FOR INFRINGEMENT readily ascertained with reasonable certainty, then the court may award as damages a reasonable A. Prior User (Section 159.1) percentage based upon the amount of gross sales of Notwithstanding the provisions of Section 155 the defendant or the value of the services in hereof, a registered mark shall have no effect connection with which the mark or trade name was against any person who, in good faith, before the used in the infringement of the rights of the filing date or the priority date, was using the mark complaining party. for the purposes of his business or enterprise The court may impound during the pendency of the action, B. Printer of Infringing Mark (Section 159.2) Where an sales invoices and other documents evidencing sales. infringer who is engaged solely in the business of printing the mark or other infringing materials for In cases where actual intent to mislead the public or to others is an innocent infringer, the owner of the defraud the complainant is shown, in the discretion of the right infringed shall be entitled as against such court, the damages may be doubled. infringer only to an injunction against future printing The complainant, upon proper showing, may also be granted injunction. C. Advertisement (Section 159.3) Where the infringement complained of is contained in or is part of paid advertisement in a newspaper, Section 157. POWER OF COURT TO ORDER INFRINGING magazine, or other similar periodical or in an MATERIAL DESTROYED — electronic communication, the remedies of the In any action arising under this Act, in which a violation of owner of the right infringed as against the publisher any right of the owner of the registered mark is established, or distributor of such newspaper, magazine, or the court may order that goods found to be infringing be, other similar periodical or electronic without compensation of any sort, disposed of outside the communication shall be limited to an injunction channels of commerce in such a manner as to avoid any against the presentation of such advertising matter 11 | N O T E S  in future issues of such newspapers, magazines, or representation, is lodged with the Court of First other similar periodicals or in future transmissions Instance (now Regional Trial Court) of such electronic communications. SEC. 27. JURISDICTION OF COURT OF FIRST The limitations of this subparagraph shall apply only to INSTANCE. - All actions under this Chapter [V - innocent infringers provided that such injunctive relief shall Infringement] and Chapters VI [Unfair Competition] not be available to the owner of the right infringed with and VII [False Designatiion of Origin and False respect to an issue of a newspaper, magazine, or other Description or Representation], hereof shall be similar periodical or an electronic communication containing brought before the Court of First Instance. infringing matter where restraining the dissemination of such infringing matter in any particular issue of such periodical SEC. 239. REPEALS. - 239.1. All Acts and parts of or in an electronic communication would delay the Acts inconsistent herewith, more particularly delivery of such issue or transmission of such electronic Republic Act No. 165, as amended; Republic Act No. communication is customarily conducted in accordance 166, as amended; and Articles 188 and 189 of the with the sound business practice, and not due to any Revised Penal Code; Presidential Decree No. 49, method or device adopted to evade this section or to prevent including Presidential Decree No. 285, as amended, or delay the issuance of an injunction or restraining order are hereby repealed. with respect to such infringing matter FALSE OR FRAUDULENT DECLARATION (Section 162) Notably, the aforequoted clause did not expressly repeal R.A. No. 166 in its entirety, otherwise, it would not have used the Any person who shall procure registration in the Office of a phrases parts of Acts and inconsistent herewith. The use of mark by a false or fraudulent declaration or representation, whether oral or in writing, or by any false means, shall be the phrases parts of Acts and inconsistent herewith only means that the repeal pertains only to provisions which are liable in a civil action by any person injured thereby for any repugnant or not susceptible of harmonization with R.A. No. damages sustained in consequence thereof 8293. Section 27 of R.A. No. 166, however, is consistent and in harmony with Section 163 of R.A. No. 8293. Had R.A. No. ANONYMOUS & PSEUDONYMOUS WORKS (Section 179) 8293 intended to vest jurisdiction over violations of The publishers shall be deemed to represent the authors of intellectual property rights with the Metropolitan Trial articles and other writings published without the names of Courts, it would have expressly stated so under Section 163 the authors or under pseudonyms, UNLESS: thereof. a) contrary appears b) or the pseudonyms or adopted name leaves no doubt as to the author's identity Validity of special intellectual property courts or special c) or if the author of the anonymous works discloses commercial court was upheld by the Supreme Court. A.M. his identity 03-03-03-SC 2003-6-17 provides that all IP cases shall be transferred to the designated Special Commercial Courts except those which have undergone the pretrial stage in civil cases or those where any of the accused has been arraigned in criminal cases which shall be retained by the court previously assigned to try them. The Special Commercial PENALTY AND JUSRISDICTION Courts shall have jurisdiction over cases arising within their respective territorial jurisdiction Under Section 170 of R.A. No. 8293, which took effect on UNFAIR COMPETITION (Section 168) January 1, 1998, the criminal penalty for infringement of registered marks, unfair competition, false designation of Any person who shall employ deception or any other means origin and false description or representation, is contrary to good faith by which he shall pass off the goods imprisonment from 2 to 5 years and a fine ranging from Fifty manufactured by him or in which he deals, or his business, Thousand Pesos to Two Hundred Thousand Pesos, to wit: for those of the one having established such goodwill, or who shall commit any acts calculated to produce said results, is SEC. 170. PENALTIES. - Independent of the civil guilty of unfair competition and administrative sanctions imposed by law, a criminal penalty of imprisonment from two (2) Elements of Unfair Competition years to five (5) years and a fine ranging from Fifty 1. Employment of deception or any means contrary to thousand pesos (P50,000.00) to Two hundred good faith thousand pesos (P200,000.00) shall be imposed on 2. To pass off goods he deals in any person who is found guilty of committing any 3. As those of one who has established goodwill of the acts mentioned in Section 155 [Infringement], Section 168 [Unfair Competition] Among the elements, the element of passing off goods is and Section 169.1 [False Designation of Origin and the gravamen of unfair competition. False Description or Representation]. In particular, and without in any way limiting the scope of Corollarily, Section 163 of the same Code states that actions protection against unfair competition, the following shall be (including criminal and civil) under Sections 150, 155, 164, deemed guilty of unfair competition: 166, 167, 168 and 169 shall be brought before the proper a. Selling his goods and gives them the general courts with appropriate jurisdiction under existing laws, appearance of goods of another manufacturer or thus - dealer, as to i. the goods themselves SEC. 163. JURISDICTION OF COURT. - All actions ii. the wrapping of the packages in which they are under Sections 150, 155, 164 and 166 to 169 shall contained be brought before the proper courts with iii. the devices or words thereon appropriate jurisdiction under existing laws. iv. any other feature of their appearance which would be likely to influence purchasers to The existing law referred to in the foregoing provision is believe that the goods offered are those of a Section 27 of R.A. No. 166 (The Old Trademark Law) manufacturer or dealer which provides that jurisdiction over cases for b. Use any artifice, or device, or who employs any other infringement of