Intellectual Property Law Reviewer PDF

INTELLECTUAL PROPERTY LAW REVIEWER ALYSSA CABALANG REPUBLIC ACT NO. 8293: An Act Prescribing the Section 2. DECLARATION OF STATE POLICY. — The State Intellectual Property Code and Establishing the Intellectual recognizes t...

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