registration and capable of distinguishing the

origin or any other common characteristic,

ELMER AT RANDOM including the quality of goods or services of
Anything from mundane to ethereal; from different enterprises which use the sign under
puerile to polemical. the control of the registered owner of the
collective mark; (Sec. 40, R. A. No. 166a)
Intellectual Property Law Reviewer
121.3. "Trade name" means the name or
THE LAW ON TRADEMARKS, SERVICE MARKS designation identifying or distinguishing an
AND TRADE NAMES enterprise; (Sec. 38, R. A. No. 166a)

Q. What is a monopoly? 121.4. "Bureau" means the Bureau of

A. It is the control obtained by one supplier over Trademarks;
the commercial market within a given region
(Blacks) 121.5. "Director" means the Director of
Trademarks;
Q. Is the exercise of Intellectual Property Law a
form of monopoly? 121.6. "Regulations" means the Rules of
A. In a way. Copyright laws allow others to Practice in Trademarks and Service Marks
enjoy an authors economic rights when there is formulated by the Director of Trademarks and
permission. Trademarks protect goodwill, it approved by the Director General; and
does not prevent production of similar goods.
Patent protection lasts for only 17 years. 121.7. "Examiner" means the trademark
examiner. (Sec. 38, R. A. No. 166a)
Q. If s, why is it allowed, since the Constitution Q. Can a trademark be a tradename at the same
prohibits monopolies? time?
A. Because it provides incentive for innovation A. Yes.
and technological advancement.
Q. Can smell be a proper trademark?
Q. The Constitution provides, the State shall A. The law does not seem to allow it, since a
regulate the acquisition, ownership, use, and mark is defined as a visible sign.
disposition of property and its increments.
How does this relate to IP law? Q. Can sound be a proper trademark? E.g. the
A. IP Law can be viewed as an exercise of this distinctive sound of a Harley Davidson
regulation. Copyright lasts for only 50 years. A. No. It must be a visible sign, under the IP
Patent protection for 17 years. Trademarks code, and under an American case.
have to be used.
Sec. 122. How Marks are Acquired. - The rights
Sec. 121. Definitions. - As used in Part III, the in a mark shall be acquired through registration
following terms have the following meanings: made validly in accordance with the provisions
121.1. "Mark" means any visible sign capable of of this law. (Sec. 2-A, R. A. No. 166a)
distinguishing the goods (trademark) or services Q. How is trademark protection acquired?
(service mark) of an enterprise and shall include A. By registration.
a stamped or marked container of goods; (Sec.
38, R. A. No. 166a) Q. A Singapore company sells products over the
internet to the Philippines. It does not have an
121.2. "Collective mark" means any visible sign office in RP. If a Philippine company sells
designated as such in the application for products here with the name of the Singapore
company, can the Singapore company sue here (e) Is identical with, or confusingly similar to, or
in the Philippines, not having registered its constitutes a translation of a mark which is
trademark here? considered by the competent authority of the
A. Yes, it may sue. Sec. 160 provides: Any Philippines to be well-known internationally
foreign national or juridical person who meets and in the Philippines, whether or not it is
the requirements of Section 3 of this Act and registered here, as being already the mark of a
does not engage in business in the Philippines person other than the applicant for registration,
may bring a civil or administrative action and used for identical or similar goods or
hereunder for opposition, cancellation, services: Provided, That in determining whether
infringement, unfair competition, or false a mark is well-known, account shall be taken of
designation of origin and false description, the knowledge of the relevant sector of the
whether or not it is licensed to do business in public, rather than of the public at large,
the Philippines under existing laws. including knowledge in the Philippines which
has been obtained as a result of the promotion
Q. Does it matter where title transfers, like if it of the mark;
were FOB Manila or FOB Singapore?
A. No. (f) Is identical with, or confusingly similar to, or
constitutes a translation of a mark considered
Sec. 123. Registrability. - well-known in accordance with the preceding
123.1. A mark cannot be registered if it: paragraph, which is registered in the Philippines
with respect to goods or services which are not
(a) Consists of immoral, deceptive or scandalous similar to those with respect to which
matter, or matter which may disparage or registration is applied for: Provided, That use of
falsely suggest a connection with persons, living the mark in relation to those goods or services
or dead, institutions, beliefs, or national would indicate a connection between those
symbols, or bring them into contempt or goods or services, and the owner of the
disrepute; registered mark: Provided further, That the
interests of the owner of the registered mark
(b) Consists of the flag or coat of arms or other are likely to be damaged by such use;
insignia of the Philippines or any of its political
subdivisions, or of any foreign nation, or any (g) Is likely to mislead the public, particularly as
simulation thereof; to the nature, quality, characteristics or
geographical origin of the goods or services;
(c) Consists of a name, portrait or signature
identifying a particular living individual except (h) Consists exclusively of signs that are generic
by his written consent, or the name, signature, for the goods or services that they seek to
or portrait of a deceased President of the identify;
Philippines, during the life of his widow, if any,
except by written consent of the widow; (i) Consists exclusively of signs or of indications
that have become customary or usual to
(d) Is identical with a registered mark belonging designate the goods or services in everyday
to a different proprietor or a mark with an language or in bona fide and established trade
earlier filing or priority date, in respect of: practice;
(i) The same goods or services, or
(ii) Closely related goods or services, or (j) Consists exclusively of signs or of indications
(iii) If it nearly resembles such a mark as to be that may serve in trade to designate the kind,
likely to deceive or cause confusion; quality, quantity, intended purpose, value,
geographical origin, time or production of the
goods or rendering of the services, or other Amigo v. Cluet Peabody Idem Sonans
characteristics of the goods or services; 354 SCRA 434 (2001)

(k) Consists of shapes that may be necessitated Cluet (NY) filed for cancellation of Amigo (RP)
by technical factors or by the nature of the TM for Gold Toe. Cluet owns Gold Top. Cluet
goods themselves or factors that affect their alleged Amigo uses similar logo, uses the word
intrinsic value; linenized which is their registered TM.
Director of Patents and CA ruled for
(l) Consists of color alone, unless defined by a cancellation, based on application of 1) idem
given form; or sonans rule and 2) existence of a confusing
similarity in appearance between the
(m) Is contrary to public order or morality. trademarks. Amigo argues that Gold Toe and
Gold Top do not sound alike and are
123.2. As regards signs or devices mentioned in pronounced differently. Since the words gold
paragraphs (j), (k), and (l), nothing shall prevent and toe are generic, Cluet has no right to
the registration of any such sign or device which exclusive use.
has become distinctive in relation to the goods
for which registration is requested as a result of HELD: Idem sonans argument incorrect.
the use that have been made of it in commerce Admittedly the pronunciation of Gold Top and
in the Philippines. The Office may accept as Gold Toe, do not by themselves, cause
prima facie evidence that the mark has become confusion. However, there is hardly a variance
distinctive, as used in connection with the in the appearance of the logos. SC used the
applicants goods or services in commerce, dominancy test and the holistic test. In either
proof of substantially exclusive and continuous test, there is an obvious colorable imitation.
use thereof by the applicant in commerce in the
Philippines for five (5) years before the date on Nestle v. CA Master not generic
which the claim of distinctiveness is made. 356 SCRA 207 (2001)

123.3. The nature of the goods to which the CFC Corp. filed application for registration of
mark is applied will not constitute an obstacle Flavor Master instant coffee. Nestle filed notice
to registration. (Sec. 4, R. A. No. 166a) of opposition claiming trademark is confusingly
similar for Master Roast and Master Blend are
A mark cannot be registered if it: its own TM. Nestle claims use of CFC will cause
confusion and deceive purchasers as dominant
(a) immoral, deceptive or scandalous matter word present in the three trademarks is Master.
CA used holistic test, Nestle claims dominancy
(b) flag or coat of arms test should be used.

(c) name of a particular living individual or HELD: Correct. Test is ordinary purchaser who in
portrait of a deceased President of the buying more common and less expensive
Philippines household products is less inclined to closely
examine specific details of similarities and
(d) Is identical with a registered mark as to : dissimilarities. The word Master is neither a
(i) The same goods or services, or generic nor a descriptive term, and as such, said
(ii) Closely related goods or services, or term cannot be invalidated as a trademark and
(iii) If it nearly resembles such a mark as to be may be legally protected. A generic term is the
likely to deceive or cause confusion; common descriptive name of an article or
substance, and a descriptive term conveys the
characteristics, functions, qualities and
ingredient of a product to one who has never Q. Why is this the proper answer?
seen it and does not know what it is. Master is a A. Case was drafted by Negre when he was in
suggestive term brought about by the the Bureau of Trademarks.
advertising scheme of Nestle, as when it uses
Jaworski and Puno.
(g) misleading as to the nature, quality,
(e) similar to, or translation of, internationally characteristics or geographical origin of the
known mark, registered or not as to same goods goods or services;

(f) similar to, or translation of, internationally (h) generic

known mark, when registered, as to all goods.
Kellogg v. National Biscuit Company
Canon v. CA
Nabisco brought a suit against Kellogg to enjoin
NSR Rubber filed an application for the unfair competition in the manufacture and sale
registration of the mark Canon for Sandals. of breakfast food known as shredded wheat.
Canon (Japan) filed an opposition, alleging that Kellogg, like Nabisco, uses the name shredded
it will be damaged by the registration of Canon wheat and produces it in pillow-shaped form.
for Sandals. Canon manufactures chemical Shredded wheat was introduced in 1893 by
products, photographic and cinematographic Perky and the patent expired in 1895, going into
instruments, and electrical instruments. The public domain. Nabisco was the first
products manufactured by the parties are manufacturer. Nabisco does not claim exclusive
dissimilar but Canon Japan points out that it has right to make shredded wheat but claims
branched out its business on various goods exclusive right to the trade name Shredded
including footwear. Wheat. Nabisco also claims that it has acquired
a secondary meaning.
Held: Ordinarily, ownership of trademark is a
property right which is entitled to protection. Held: Nabisco has no exclusive right to use the
However, when a TM is used for a product in term Shredded Wheat as a trade name, for
which the other party does not deal, the use of that is the generic term of the article which
the same trademark on the latters product describes it with a fair degree of accuracy. Since
cannot be validly objected to. The certificate of the term is generic, the original maker of the
registration shown by Canon Japan in RP and product acquired no exclusive right to use it.
other countries show that the covered goods There is no basis for applying the doctrine of
are paints, chemical products and toners. secondary meaning. To establish a trade name,
Trademark owner is entitled to protection when plaintiff must show more than a subordinate
junior user forestalls the normal expansion of meaning, but must show that the primary
the business, but Canon Japan has failed to significance of the term in the minds of the
attach evidence that would convince that it has consuming public is not the product but the
also embarked in the production of footwear producer.
products.
Q. Can you trademark the terms thermos,
Q. Do you agree with the decision? cellophane, aspirin?
A. Proper answer: The decision interpreted the A. No. These used to be big marks, but because
law then. The case would have been decided of improper use (not non-use) they were
differently today, due to the amendments abandoned. Xerox is now spending billions in
introduced by Sec. 123.1 (e). advertising to reclaim the trademark.
 terms shirt factory and nylon because the
(i) descriptive terms are merely descriptive or general terms,
incapable of appropriation by any single
Q. Can a descriptive word be appropriated? individual to the exclusion of others. This is
A. No. But it can be appropriated when used in because all persons have an equal right to
combination with other words. produce and vend similar articles and they also
have the right to describe them properly and to
Romero v. Maiden Form Inc. use appropriate language.

Maidenform, a foreign corporation, filed an Q. Can generic terms be appropriated by long

application for registration of the trademark use?
Adagio for the brassieres it manufactures. This A. no. Only descriptive words can be
was alleged to have first been used in US in appropriated by long use.
1937 and in RP in 1946. This was granted.
Romero filed a petition for cancellation on the Q. Xerox is descriptive or generic?
ground that it is a common descriptive name of A. Seems to be generic, since it is found in the
an article. It was said that that Adagio has dictionary as a verb.
become a common descriptive name of a
particular style of brassiere and is (j) Consists exclusively of signs or of indications
unregistrable. that may serve in trade to designate the kind,
quality, quantity, intended purpose, value,
Held: No merit. Adagio is a musical term geographical origin, time or production of the
meaning slow or easy manner first used by goods or rendering of the services, or other
owners because they are musically inclined. characteristics of the goods or services;
They also adopted other terms such as Etude,
Overture, Chansonette. The fact that said mark Q. Is a name denoting geographical location
is used also to designate a particular style of registrable as a trademark?
brassiere does not affect its registrability as a A. General rule: Cant be used when
trademark. Its long and continuous use has not 1. It induces public to believe that it is
rendered it merely descriptive. Widespread manufactured in a place where it is not really
dissemination does not justify the [oppositors] manufactured there, e.g. Champagne is a
use of the trademark. sparkling wine from a particular city in France;
no other wine can be called Champagne.
Ong Ai Gui v. Director 2. If that place is known for the goods, you cant
register, e.g. Batangas is known for its coffee
Ong Ai Gui filed an application for the Exception: If that place is not particularly known
registration of the tradename, 20th Century for products of that kind, e.g. Baguio Oil,
Nylon Shirts Factory. E. I. Du Pont filed an Seattles Best
opposition on the ground that the word nylon
was a name coined by Du Pont as a generic (k) shapes
name of a synthetic fabric and is a generic term,
the use of which is descriptive and the use Kellogg v. Nabisco
would cause confusion in trade. Opposition was
dismissed but director asked the word nylon Nabisco claims the exclusive right to make it in
be disclaimed. Ong appeals. pillow-shaped form. It is urged that all
possibility of deception and confusion would be
Held: The tradename may be registered, but it removed it Kellogg would adopt another form
may not be entitled to exclusive use of the other than the pillow shape.
 Q. Cerveza Negra means Black Beer in
Held: The evidence is persuasive that this form Spanish, can it be registered?
is functional that the cost of the biscuit would A. Yes, it has acquired secondary meaning
be increased and its high quality lessened if
some other form were substituted for the Arce Sons v. Selecta
pillow shape.
Selecta Biscuit filed a petition for the
In Re Weber registration of the word Selecta as trademark to
be used on its bakery products. Arce filed an
The examining attorney of the Trademark Board opposition saying that it has continuously used
refused registration of Webers barbecue grills that word in its products. It used this on its milk
as trademarks on the ground of functionality. products and as the name of a bakery. Director
granted trademark because the word as used by
Held. Wrong. The Trademark Trial and Appeals Arce points only to the place of business or
Board found that the examining attorney erred location of its restaurant.
in refusing registration in the absence of
evidence that the grills round configuration Held: Arce has made use of Selecta not only as a
was a superior design which other tradename, indicative of the location of the
manufacturers needed to be able to use in restaurant but also as a trademark to indicate
order to compete effectively. Trade dress is the goods it offers for sale to the public. The
mechanically functional when its elements are word Selecta is an ordinary or common word
so utilitarian or superior to alternative elements but once adopted or coined in connection with
that denying these elements to competitors ones business as an emblem or as a badge of
inhibits competition. The factors that show authenticity, it may acquire a secondary
mechanical functionality of trade dress include meaning as to be exclusively associated with its
1) if a utility patent discloses the utilitarian products and business.
advantages of the design, 2) the utilitarian
advantages are touted through advertising, 3) Q. Is premium a proper mark?
there is an unavailability of alternative designs, A. No. It is descriptive.
and 4) the design is the result of a relatively
simple or inexpensive manufacturing method. Etepha v. Director
In this case, the kettle body and legs
configuration for barbecue grills was found NOT Westmont (NY) sought registration of Atussin, a
de jure functional. Evidence was found medical expectorant antihistamine. Etepha
sufficient to establish acquired distinctiveness. (liechtenstin) objected, saying Atussin is
Hence, it can be registered. confusingly similar to Pertussin and that the
buying public will be misled into believing that
Westmonts product is that of Etephas which
Q. What is different from this case and Kellogg? enjoys goodwill.
A. Here, there is finding that the shape was not
entirely just functional, as in Kellogg. Held: Tussin is a Latin rootword meaning cough.
Tussin is merely descriptive; it is generic; it
(l) color furnishes to the buyer no indication of the
origin of the goods. Thus, it is barred from
(m) Is contrary to public order or morality. registration as a tradename. While tussin by
itself cannot be used exclusively, it may become
Secondary meaning a subject of trademark by combination with
another word of phrase.
Here, the two are entirely different in colors, adopts a distinctive or dominant mark or
content and arrangement so the contrast is so feature of anothers trademark, the intent to
pronounced that the label cannot be mistaken pass to the public his product as that of another
for another. They also dont sound alike when is quite obvious.
pronounced. Also, medicinal preparations are
unlike articles of everyday use which may freely Secondary meaning a word originally
be obtained by anyone. A buyer of medicine incapable of exclusive appropriation may
must first go to a doctor for instructions on nevertheless have been used so long and so
what to purchase, and he is cautious and would exclusively by one producer with reference to
examine the product sold to him. his article that, in that trade and to that branch
of the purchasing public, the word or phrase
Q. Do you agree with this case? has come to mean that the article was his
A. Hmm maybe not, since you should take the product. Here, there is evidence to show that
point of view of an ordinary consumer who the term Planters has become a distinctive
doesnt know what tussis means. mark or symbol as salted peanuts are
concerned.
Q. Would the case have been decided in the
same manner if it involved veterinary medicine? E Spinner v. Neuss Hesslein Corp.
A. Probably. People dont usually buy vet
medicine so they would be careful if they do. E Spinner (England) is engaged in manufacture
and sale of textiles. It sells khaki cloth in RP
Philippine Nut Industry v. Standard Brands under the brand Wigan. Neuss Hesslein (US)
came to RP later and sold khakis. It sold it under
Philippine Nut obtained registration of the Five Soldiers brand then it later asked its NY
Philippine Planters Cordial Peanuts. On its office to print the word Wigan conspicuously on
salted peanuts. Standard Brands, a foreign the khakis intended for sale in RP. Wigan is used
corporation filed for the cancellation of in commercial parlance as the name of a
registration saying that it was the owner of canvass-like cotton fabric used to stiffen parts
Planters Cocktail Peanuts trademark and that of garments. Neuss Hesslein claims to use the
Phil Nut closely resembles and is confusingly word to indicate color, saying that US dealers
similar to its own trademark. Phil Nut claims are accustomed to use the word Wigan to
that Planters cannot be considered a indicate a color of khaki cloth. E. Spinner files
dominant feature of the product since it is action to restrain use of the word Wigan,
merely descriptive. claiming that it uses that word to indicate
quality.
Held: Without merit. Planters is an ordinary
word but it is used in the label not to describe Held: The persons most to be considered is the
the nature of the product but to project the consumer and when the word Wigan is found
source or origin of the salted peanuts. Based on khaki, the ultimate buyer or the consumer
from the logos, it is true that other words are who would be led to suppose that the goods
displayed (cordial and cocktail) but these are are sold by E Spinner. It makes no difference
mere adjectives. As a whole, it is the word that dealers in the article are not deceived.
Planters which draws the attention of the buyer They are informed and usually know what they
and leads him to conclude that the salted are buying. The law concerns itself with the
peanuts originate from one and the same casual purchaser who knows the commodity
manufacturer. It is true that no producer may only by its name. The word Wigan here is used
have a monopoly of any color scheme or form in an entirely artificial sense and its association
of words in a label but when a competitor with quality had its origin exclusively in the use
which E Spinner originally intended. connotation. As to the argument that the goods
are not similar, although two noncompeting
Intel v. Advanced Micro Devices articles may be classified under two different
classes by the Patent office, nevertheless, if
Intel uses the 386 designation for processor simultaneous use on them would be likely to
microchips. AMD probably used this to cause confusion as to the source or origin, then
designate its own products and Intel filed a case there can be unfair competition. Also, it would
against AMD. prevent the natural expansion of his business
and it would cause the business to be confused
Held: AMD argued successfully that Intels 386 with the second user.
designation for processor microchips was
generic. Intel was subsequently unsuccessful in Q. Is Ang Tibay descriptive?
registering 486 or i486. Hence, it switched to A. Court held that it is a fanciful or coined term.
the Pentium and Celeron names. Note that The Court says that the proper descriptive term
in the US, trademark protection is acquired via is matibay and not Ang Tibay.
use, not registration. Because Intels purported
mark is unregistered, Intel has the burden of Q. Is grammar important?
proof on the issue of genericness of the A. No (?)
asserted mark
Q. Is the use of famous marks on unrelated
Q. Why is the E. Spinner decision different from goods permissible?
the Intel decision? A. Although they are noncompeting, if
A. Because in Intel, the mark was generic. In E. simultaneous use will cause confusion, it will
Spinner, the mark is descriptive of quality not be permissible.
because it is arbitrary.
Q. What are the kinds of words?
Ana Ang v. Toribio Teodoro A. The words are classified to:
1. common words
Teodoro used Ang Tibay for slippers and a. generic never capable of registration
shoes since 1910. Ang registered Ang Tibay b. descriptive there is immediate association
for shorts and shirts on 1932. Teodoro filed a - not registrable except when there is secondary
complaint to cancel the registration of the TM meaning, or used with other words
of Ana Ang. He claims that Ana Ang has not c. suggestive requires imegination/deduction
proven that she spent money for advertising 2. fanciful/coined - e.g. Kodak
Ang Tibay shirts and pants. Ana Ang claims that 3. arbitrary - e.g. Apple Computer
the term is descriptive and that there is no
secondary meaning attached to the term, and
that the goods are different and are not likely to
mislead the general public as to their origin.

Held: Ang Tibay is not a descriptive term but a

fanciful or coined phrase which may be legally Sec. 124. Requirements of Application. -
appropriated. Ang Tibay is an exclamation 124.1. The application for the registration of the
denoting admiration of strength, and can be mark shall be in Filipino or in English and shall
translated to mean How strong! Ang Tibay contain the following:
has also acquired a secondary meaning because (a) A request for registration;
the exclusive use of the phrase for Teodoros
product has allowed it to acquire a proprietary (b) The name and address of the applicant;
(c) The name of a State of which the applicant is (l) A signature by, or other self-identification of,
a national or where he has domicile; and the the applicant or his representative.
name of a State in which the applicant has a
real and effective industrial or commercial 124.2. The applicant or the registrant shall file a
establishment, if any; declaration of actual use of the mark with
evidence to that effect, as prescribed by the
(d) Where the applicant is a juridical entity, the Regulations within three (3) years from the
law under which it is organized and existing; filing date of the application. Otherwise, the
application shall be refused or the mark shall be
(e) The appointment of an agent or removed from the Register by the Director.
representative, if the applicant is not domiciled
in the Philippines; 124.3. One (1) application may relate to several
goods and/or services, whether they belong to
(f) Where the applicant claims the priority of an one (1) class or to several classes of the Nice
earlier application, an indication of: Classification.
(i) The name of the State with whose national
office the earlier application was filed or it filed 124.4. If during the examination of the
with an office other than a national office, the application, the Office finds factual basis to
name of that office, reasonably doubt the veracity of any indication
(ii) The date on which the earlier application or element in the application, it may require the
was filed, and applicant to submit sufficient evidence to
(iii) Where available, the application number of remove the doubt. (Sec. 5, R. A. No. 166a)
the earlier application;
Sec. 125. Representation; Address for Service. -
(g) Where the applicant claims color as a If the applicant is not domiciled or has no real
distinctive feature of the mark, a statement to and effective commercial establishment in the
that effect as well as the name or names of the Philippines, he shall designate by a written
color or colors claimed and an indication, in document filed in the office, the name and
respect of each color, of the principal parts of address of a Philippine resident who may be
the mark which are in that color; served notices or process in proceedings
affecting the mark. Such notices or services may
(h) Where the mark is a three-dimensional be served upon the person so designated by
mark, a statement to that effect; leaving a copy thereof at the address specified
in the last designation filed. If the person so
(i) One or more reproductions of the mark, as designated cannot be found at the address
prescribed in the Regulations; given in the last designation, such notice or
process may be served upon the Director. (Sec.
(j) A transliteration or translation of the mark or 3, R. A. No. 166a)
of some parts of the mark, as prescribed in the
Regulations; Sec. 126. Disclaimers. - The Office may allow or
require the applicant to disclaim an
(k) The names of the goods or services for which unregistrable component of an otherwise
the registration is sought, grouped according to registrable mark but such disclaimer shall not
the classes of the Nice Classification, together prejudice or affect the applicants or owners
with the number of the class of the said rights then existing or thereafter arising in the
Classification to which each group of goods or disclaimed matter, nor such shall disclaimer
services belongs; and prejudice or affect the applicants or owners
right on another application of later date if the (b) The use of other forms of signature, such as
disclaimed matter became distinctive of the a printed or stamped signature, or the use of a
applicants or owners goods, business or seal, instead of a hand-written signature:
services. (Sec. 13, R. A. No. 166a) Provided, That where a seal is used, it should be
accompanied by an indication in letters of the
Sec. 127. Filing Date. - name of the signatory.

127.1. Requirements. - The filing date of an 130.2. The Office shall accept communications
application shall be the date on which the to it by telecopier, or by electronic means
Office received the following indications and subject to the conditions or requirements that
elements in English or Filipino: will be prescribed by the Regulations. When
(a) An express or implicit indication that the communications are made by telefacsimile, the
registration of a mark is sought; reproduction of the signature, or the
(b) The identity of the applicant; reproduction of the seal together with, where
(c) Indications sufficient to contact the applicant required, the indication in letters of the name
or his representative, if any; of the natural person whose seal is used,
(d) A reproduction of the mark whose appears. The original communications must be
registration is sought; and received by the Office within thirty (30) days
(e) The list of the goods or services for which from date of receipt of the telefacsimile.
the registration is sought.
130.3. No attestation, notarization,
127.2 No filing date shall be accorded until the authentication, legalization or other
required fee is paid. (n) certification of any signature or other means of
self-identification referred to in the preceding
Sec. 128. Single Registration for Goods and/or paragraphs, will be required, except, where the
Services. - Where goods and/or services signature concerns the surrender of a
belonging to several classes of the Nice registration. (n)
Classification have been included in one (1)
application, such an application shall result in Sec. 131. Priority Right. -
one registration. (n) 131.1. An application for registration of a mark
filed in the Philippines by a person referred to in
Sec. 129. Division of Application. - Any Section 3, and who previously duly filed an
application referring to several goods or application for registration of the same mark in
services, hereafter referred to as the "initial one of those countries, shall be considered as
application," may be divided by the applicant filed as of the day the application was first filed
into two (2) or more applications, hereafter in the foreign country.
referred to as the "divisional applications," by
distributing among the latter the goods or 131.2. No registration of a mark in the
services referred to in the initial application. Philippines by a person described in this section
The divisional applications shall preserve the shall be granted until such mark has been
filing date of the initial application or the registered in the country of origin of the
benefit of the right of priority. (n) applicant.

Sec. 130. Signature and Other Means of Self- 131.3. Nothing in this section shall entitle the
Identification. - owner of a registration granted under this
130.1. Where a signature is required, the Office section to sue for acts committed prior to the
shall accept: date on which his mark was registered in this
(a) A hand-written signature; or country: Provided, That, notwithstanding the
foregoing, the owner of a well-known mark as
defined in Section 123.1(e) of this Act, that is 133.2. Where the Office finds that the
not registered in the Philippines, may, against conditions referred to in Subsection 133.1 are
an identical or confusingly similar mark, oppose fulfilled, it shall, upon payment of the
its registration, or petition the cancellation of its prescribed fee. Forthwith cause the application,
registration or sue for unfair competition, as filed, to be published in the prescribed
without prejudice to availing himself of other manner.
remedies provided for under the law.
133.3. If after the examination, the applicant is
131.4. In like manner and subject to the same not entitled to registration for any reason, the
conditions and requirements, the right provided Office shall advise the applicant thereof and the
in this section may be based upon a subsequent reasons therefor. The applicant shall have a
regularly filed application in the same foreign period of four (4) months in which to reply or
country: Provided, That any foreign application amend his application, which shall then be re-
filed prior to such subsequent application has examined. The Regulations shall determine the
been withdrawn, abandoned, or otherwise procedure for the re-examination or revival of
disposed of, without having been laid open to an application as well as the appeal to the
public inspection and without leaving any rights Director of Trademarks from any final action by
outstanding, and has not served, nor thereafter the Examiner.
shall serve, as a basis for claiming a right of
priority. (Sec. 37, R. A. No. 166a) 133.4. An abandoned application may be
revived as a pending application within three (3)
Sec. 132. Application Number and Filing Date. - months from the date of abandonment, upon
132.1. The Office shall examine whether the good cause shown and the payment of the
application satisfies the requirements for the required fee.
grant of a filing date as provided in Section 127
and Regulations relating thereto. If the 133.5. The final decision of refusal of the
application does not satisfy the filing Director of Trademarks shall be appealable to
requirements, the Office shall notify the the Director General in accordance with the
applicant who shall within a period fixed by the procedure fixed by the Regulations. (Sec. 7, R.
Regulations complete or correct the application A. No. 166a)
as required, otherwise, the application shall be
considered withdrawn. Sec. 134. Opposition. - Any person who believes
that he would be damaged by the registration
132.2 Once an application meets the filing of a mark may, upon payment of the required
requirements of Section 127, it shall be fee and within thirty (30) days after the
numbered in the sequential order, and the publication referred to in Subsection 133.2, file
applicant shall be informed of the application with the Office an opposition to the application.
number and the filing date of the application Such opposition shall be in writing and verified
will be deemed to have been abandoned. (n) by the oppositor or by any person on his behalf
who knows the facts, and shall specify the
Sec. 133. Examination and Publication. - grounds on which it is based and include a
133.1. Once the application meets the filing statement of the facts relied upon. Copies of
requirements of Section 127, the Office shall certificates of registration of marks registered in
examine whether the application meets the other countries or other supporting documents
requirements of Section 124 and the mark as mentioned in the opposition shall be filed
defined in Section 121 is registrable under therewith, together with the translation in
Section 123. English, if not in the English language. For good
cause shown and upon payment of the required corresponding class or classes; and such other
surcharge, the time for filing an opposition may data as the Regulations may prescribe from
be extended by the Director of Legal Affairs, time to time.
who shall notify the applicant of such extension.
The Regulations shall fix the maximum period of 137.3. A certificate of registration of a mark
time within which to file the opposition. (Sec. 8, may be issued to the assignee of the applicant:
R. A. No. 165a) Provided, That the assignment is recorded in
the Office. In case of a change of ownership, the
Sec. 135. Notice and Hearing. - Upon the filing Office shall at the written request signed by the
of an opposition, the Office shall serve notice of owner, or his representative, or by the new
the filing on the applicant, and of the date of owner, or his representative and upon a proper
the hearing thereof upon the applicant and the showing and the payment of the prescribed fee,
oppositor and all other persons having any issue to such assignee a new certificate of
right, title or interest in the mark covered by registration of the said mark in the name of
the application, as appear of record in the such assignee, and for the unexpired part of the
Office. (Sec. 9 R. A. No. 165) original period.

Sec. 136. Issuance and Publication of Certificate. 137.4. The Office shall record any change of
- When the period for filing the opposition has address, or address for service, which shall be
expired, or when the Director of Legal Affairs notified to it by the registered owner.
shall have denied the opposition, the Office
upon payment of the required fee, shall issue 137.5. In the absence of any provision to the
the certificate of registration. Upon issuance of contrary in this Act, communications to be
a certificate of registration, notice thereof made to the registered owner by virtue of this
making reference to the publication of the Act shall be sent to him at his last recorded
application shall be published in the IPO address and, at the same, at his last recorded
Gazette. (Sec. 10, R. A. No. 165) address for service.

Sec. 137. Registration of Mark and Issuance of a Sec. 138. Certificates of Registration. - A
Certificate to the Owner or his Assignee. - certificate of registration of a mark shall be
137.1. The Office shall maintain a Register in prima facie evidence of the validity of the
which shall be registered marks, numbered in registration, the registrants ownership of the
the order of their registration, and all mark, and of the registrants exclusive right to
transactions in respect of each mark, required use the same in connection with the goods or
to be recorded by virtue of this law. services and those that are related thereto
specified in the certificate.
137.2. The registration of a mark shall include a
reproduction of the mark and shall mention: its Fabrege v. CA
number; the name and address of the
registered owner and, if the registered owners Co Beng Kay registered Brute for use on
address is outside the country, his address for shirts, shoes and slippers. Fabrege, owner of
service within the country; the dates of the TM Brut for use on after shave lotion,
application and registration; if priority is shaving cream, deodorant, files opposition.
claimed, an indication of this fact, and the Fabrege claims that it will cause confusion.
number, date and country of the application,
basis of the priority claims; the list of goods or Held: Co Beng Kay may be permitted to register,
services in respect of which registration has since Fabrege has not ventured in the
been granted, with the indication of the production of briefs, so it cannot be allowed to
feight that Co has invaded Fabreges exclusive Developers filed a complaint for infringement
domain. Justice JBL Reyes says in the Sta. Ana against the Hotel. The Hotel seeks to suspend
case that the law does not require that the the infringement case because of the pendency
goods manufactured by the second user be of the cancellation proceedings.
related to the goods produced by the senior
user. But the law also says that there is Held: The earlier institution of the Hotel of the
infringement when the reproduction is that cancellation proceeding cannot effectively bar
which causes confusion. Since the products are the subsequent filing of the infringement case
different, there can be no confusion. by Developers. The certificate of registration
remains valid and subsisting for as long as it has
Q. Would the case have been decided the same not been canceled by the court. Developers
way today? certificate continues as prima facie evidence of
A. No, because of Sec. 138. the validity of the registration. Such certificate
still subsists and Developers may thus file a
Developers Group v. CA corresponding infringement case and recover
damages. Further, the issue in the cancellation
Developers (RP) filed an infringement case case is quite different from that raised in the
against Shangri-La Hotel claiming that it was trial court.
granted the Shangri-la mark for restaurant
services in 1983. It claims that the hotel was Q. In the Developers case, why wasnt it
using the mark causing it prejudice. Hotel claims considered that the certificate gives rise to
that it is the legal and beneficial owner of the prima facie presumption, such that Developers
mark which was first adopted in 1962, used in still had the burden of proof?
their hotel business in China, HK, Malaysia, A. Court probably focused on the preliminary
Singapore, etc. Hotel also filed a petition against injunction issue rather than to intellectual
Developers for the cancellation of its property law issues.
registration. RTC granted Developers an
injunction and Hotel seeks to lift the injunction. Mirpuri v. CA (not discussed in class)

Held: The conflicting claims of the parties show Escobar (RP) filed application for the use of the
that the right claims by Developers is far from TM Barbizon for brassiers. Barbizon (NY) filed
clear. The prima facie validity of its registration an opposition claiming that it is confusingly
has been put into serious question by the cases similar to its own mark. Opposition was
filed by Shangri-La 3 years ahead of its dismissed and the application was granted.
complaint. While it is not required that Later, Escobar failed to file the affidavit of use,
Developers right be conclusively established in so its registration was cancelled. Escobar
this case, it is nevertheless necessary to show reapplied for registration but assigned this to
that it exists and is not vitiated by any Mirpuri. This was again opposed by Barbizon
substantial challenge or contradiction. with the allegation that the mark was used in
Developers has failed to comply with this US and also it has protection under the Paris
requirement. Convention. Mirpuri claims the defense of res
judicata.

Shangri-La Hotel v. CA Held: The two caes do not have identical causes
of action. In the present case, Barbizon
Shangri-La filed a petition for cancellation of introduced a fact that did not exist at the time
Developers Shangri-La mark saying that this the first case was filed and terminated. The
was illegally and fraudulently obtained. cancellation from non-use could not have
occurred in the first case, and this gave an employee of the Office duly authorized by
Barbizon another cause to oppose the second said Director, shall be evidence in all cases
application. Res judicata extends only to facts wherein the originals would be evidence; and
and conditions as they existed at the time the any person who applies and pays the prescribed
judgment was rendered. When new facts fee shall secure such copies. (n)
intervene furnishing new basis, there is no
longer res judicata. Sec. 142. Correction of Mistakes Made by the
Office. - Whenever a material mistake in a
Sec. 139. Publication of Registered Marks; registration incurred through the fault of the
Inspection of Register. - Office is clearly disclosed by the records of the
139.1. The Office shall publish, in the form and Office, a certificate stating the fact and nature
within the period fixed by the Regulations, the of such mistake shall be issued without charge,
mark registered, in the order of their recorded and a printed copy thereof shall be
registration, reproducing all the particulars attached to each printed copy of the
referred to in Subsection 137.2. registration. Such corrected registration shall
thereafter have the same effect as the original
139.2. Marks registered at the Office may be certificate; or in the discretion of the Director of
inspected free of charge and any person may the Administrative, Financial and Human
obtain copies thereof at his own expense. This Resource Development Service Bureau a new
provision shall also be applicable to transactions certificate of registration may be issued without
recorded in respect of any registered mark. (n) charge. All certificates of correction heretofore
issued in accordance with the Regulations and
Sec. 140. Cancellation upon Application by the registration to which they are attached shall
Registrant; Amendment or Disclaimer of have the same force and effect as if such
Registration. - Upon application of the certificates and their issuance had been
registrant, the Office may permit any authorized by this Act. (n)
registration to be surrendered for cancellation,
and upon cancellation the appropriate entry Sec. 143. Correction of Mistakes Made by
shall be made in the records of the Office. Upon Applicant. - Whenever a mistake is made in a
application of the registrant and payment of the registration and such mistake occurred in good
prescribed fee, the Office for good cause may faith through the fault of the applicant, the
permit any registration to be amended or to be Office may issue a certificate upon the payment
disclaimed in part: Provided, That the of the prescribed fee: Provided, That the
amendment or disclaimer does not alter correction does not involve any change in the
materially the character of the mark. registration that requires republication of the
Appropriate entry shall be made in the records mark. (n)
of the Office upon the certificate of registration
or, if said certificates is lost or destroyed, upon Sec. 144. Classification of Goods and Services. -
a certified copy thereof. 144.1. Each registration, and any publication of
the Office which concerns an application or
Sec. 141. Sealed and Certified Copies as registration effected by the Office shall indicate
Evidence. - Copies of any records, books, the goods or services by their names, grouped
papers, or drawings belonging to the Office according to the classes of the Nice
relating to marks, and copies of registrations, Classification, and each group shall be preceded
when authenticated by the seal of the Office by the number of the class of that Classification
and certified by the Director of the to which that group of goods or services
Administrative, Financial and Human Resource belongs, presented in the order of the classes of
Development Service Bureau or in his name by the said Classification.
144.2. Goods or services may not be considered (g) A signature by the right holder or his
as being similar or dissimilar to each other on representative.
the ground that, in any registration or
publication by the Office, they appear in 146.2. Such request shall be in Filipino or
different classes of the Nice Classification. English and may be made at any time within six
(6) months before the expiration of the period
Sec. 145. Duration. - A certificate of registration for which the registration was issued or
shall remain in force for ten (10) years: renewed, or it may be made within six (6)
Provided, That the registrant shall file a months after such expiration on payment of the
declaration of actual use and evidence to that additional fee herein prescribed.
effect, or shall show valid reasons based on the
existence of obstacles to such use, as prescribed 146.3. If the Office refuses to renew the
by the Regulations, within one (1) year from the registration, it shall notify the registrant of his
fifth anniversary of the date of the registration refusal and the reasons therefor.
of the mark. Otherwise, the mark shall be
removed from the Register by the Office. 146.4. An applicant for renewal not domiciled in
the Philippines shall be subject to and comply
Sec. 146. Renewal. - with the requirements of this Act.
146.1. A certificate of registration may be
renewed for periods of ten (10) years at its Sec. 147. Rights Conferred. -
expiration upon payment of the prescribed fee 147.1. The owner of a registered mark shall
and upon filing of a request. The request shall have the exclusive right to prevent all third
contain the following indications: parties not having the owners consent from
(a) An indication that renewal is sought; using in the course of trade identical or similar
signs or containers for goods or services which
(b) The name and address of the registrant or are identical or similar to those in respect of
his successor-in-interest, hereafter referred to which the trademark is registered where such
as the "right holder"; use would result in a likelihood of confusion. In
case of the use, of an identical sign for identical
(c) The registration number of the registration goods or services, a likelihood of confusion shall
concerned; be presumed.

(d) The filing date of the application which 147.2. The exclusive right of the owner of a
resulted in the registration concerned to be well-known mark defined in Subsection 123.1(e)
renewed; which is registered in the Philippines, shall
extend to goods and services which are not
(e) Where the right holder has a representative, similar to those in respect of which the mark is
the name and address of that representative; registered: Provided, That use of that mark in
relation to those goods or services would
(f) The names of the recorded goods or services indicate a connection between those goods or
for which the renewal is requested or the services and the owner of the registered mark:
names of the recorded goods or services for Provided, further, That the interests of the
which the renewal is not requested, grouped owner of the registered mark are likely to be
according to the classes of the Nice damaged by such use. (n)
Classification to which that group of goods or
services belongs and presented in the order of Sec. 148. Use of Indications by Third Parties for
the classes of the said Classification; and Purposes Other than those for which the Mark
is Used. - Registration of the mark shall not 150.1. Any license contract concerning the
confer on the registered owner the right to registration of a mark, or an application
preclude third parties from using bona fide their therefor, shall provide for effective control by
names, addresses, pseudonyms, a geographical the licensor of the quality of the goods or
name, or exact indications concerning the kind, services of the licensee in connection with
quality, quantity, destination, value, place of which the mark is used. If the license contract
origin, or time of production or of supply, of does not provide for such quality control, or if
their goods or services: Provided, That such use such quality control is not effectively carried
is confined to the purposes of mere out, the license contract shall not be valid.
identification or information and cannot
mislead the public as to the source of the goods 150.2. A license contract shall be submitted to
or services. (n) the Office which shall keep its contents
confidential but shall record it and publish a
Sec. 149. Assignment and Transfer of reference thereto. A license contract shall have
Application and Registration. - no effect against third parties until such
149.1. An application for registration of a mark, recording is effected. The Regulations shall fix
or its registration, may be assigned or the procedure for the recording of the license
transferred with or without the transfer of the contract. (n)
business using the mark. (n)
Sec. 151. Cancellation. -
149.2. Such assignment or transfer shall, 151.1. A petition to cancel a registration of a
however, be null and void if it is liable to mark under this Act may be filed with the
mislead the public, particularly as regards the Bureau of Legal Affairs by any person who
nature, source, manufacturing process, believes that he is or will be damaged by the
characteristics, or suitability for their purpose, registration of a mark under this Act as follows:
of the goods or services to which the mark is (a) Within five (5) years from the date of the
applied. registration of the mark under this Act.

149.3. The assignment of the application for (b) At any time, if the registered mark becomes
registration of a mark, or of its registration, the generic name for the goods or services, or a
shall be in writing and require the signatures of portion thereof, for which it is registered, or has
the contracting parties. Transfers by mergers or been abandoned, or its registration was
other forms of succession may be made by any obtained fraudulently or contrary to the
document supporting such transfer. provisions of this Act, or if the registered mark
is being used by, or with the permission of, the
149.4. Assignments and transfers of registration registrant so as to misrepresent the source of
of marks shall be recorded at the Office on the goods or services on or in connection with
payment of the prescribed fee; assignment and which the mark is used. If the registered mark
transfers of applications for registration shall, becomes the generic name for less than all of
on payment of the same fee, be provisionally the goods or services for which it is registered, a
recorded, and the mark, when registered, shall petition to cancel the registration for only those
be in the name of the assignee or transferee. goods or services may be filed. A registered
mark shall not be deemed to be the generic
149.5. Assignments and transfers shall have no name of goods or services solely because such
effect against third parties until they are mark is also used as a name of or to identify a
recorded at the Office. unique product or service. The primary
significance of the registered mark to the
Sec. 150. License Contracts. - relevant public rather than purchaser
motivation shall be the test for determining Pagasa Industrial v. CA
whether the registered mark has become the
generic name of goods or services on or in 1961 - Kaisha registers YKK as trademark for
connection with which it has been used. (n) slide fasteners and zippers.
1967- Pagasa files application for registration of
(c) At any time, if the registered owner of the YKK for zippers.
mark without legitimate reason fails to use the 1977 - Kaisha files petition for cancellation of
mark within the Philippines, or to cause it to be Pagasas registration claiming both are
used in the Philippines by virtue of a license confusingly similar.
during an uninterrupted period of three (3) Pagasa claims that failure or neglect to assert its
years or longer. trademark rights for more than five years bars
Kaisha from filing the petition.
151.2. Notwithstanding the foregoing
provisions, the court or the administrative Held: Law requires actual commercial use of the
agency vested with jurisdiction to hear and mark prior to registration. Here, Kaisha was
adjudicate any action to enforce the rights to a prior registrant but it did not present proof that
registered mark shall likewise exercise it had considerable sales since its first use. The
jurisdiction to determine whether the invoices submitted date back to 1957 showing
registration of said mark may be cancelled in sale of samples. Samples are not for sale and
accordance with this Act. The filing of a suit to are of no commercial value. Only after more
enforce the registered mark with the proper than 7 years too did Kaisha file for cancellation.
court or agency shall exclude any other court or An unreasonable length of time had already
agency from assuming jurisdiction over a passed before the right was asserted. There is a
subsequently filed petition to cancel the same presumption of neglect already amounting to
mark. On the other hand, the earlier filing of abandonment.
petition to cancel the mark with the Bureau of
Legal Affairs shall not constitute a prejudicial Bata Industries v. CA
question that must be resolved before an action
to enforce the rights to same registered mark New Olympian sought registration of Bata as
may be decided. trademark for casual rubber shoes, claiming
that it has used this mark since 1970. Bata
Q. Is there a presumption of abandonment (Canada) opposed this saying that it owns and
under the law? has not abandoned the trademark Bata. It was
A. Yes. If the registered owner of the mark shown that Bata shoes were indeed sold in RP
without legitimate reason fails to use the mark prior to WWII, until 1948.
within the Philippines, or to cause it to be used
in the Philippines by virtue of a license during Held: Any slight goodwill generated by Bata was
an uninterrupted period of three (3) years or completedly abandoned and lost in the more
longer, a petition may be filed for the than 35 years that have passed since it last used
cancellation of the mark. the trademark. Bata has no Philippine goodwill
that would be damaged by the registration of
Q. What if your TM expires and before you the mark in New Olympians favor.
register it, someone registers before you file?
A. It would depend on the gap. If its just a Sec. 152. Non-use of a Mark When Excused. -
matter of days or months, prior registrant has 152.1. Non-use of a mark may be excused if
priority. It long gap, senior registrant has caused by circumstances arising independently
priority. of the will of the trademark owner. Lack of
funds shall not excuse non-use of a mark.
 counterfeit, copy, or colorable imitation of a
152.2. The use of the mark in a form different registered mark or the same container or a
from the form in which it is registered, which dominant feature thereof in connection with
does not alter its distinctive character, shall not the sale, offering for sale, distribution,
be ground for cancellation or removal of the advertising of any goods or services including
mark and shall not diminish the protection other preparatory steps necessary to carry out
granted to the mark. the sale of any goods or services on or in
connection with which such use is likely to
152.3. The use of a mark in connection with one cause confusion, or to cause mistake, or to
or more of the goods or services belonging to deceive; or
the class in respect of which the mark is
registered shall prevent its cancellation or 155.2. Reproduce, counterfeit, copy or
removal in respect of all other goods or services colorably imitate a registered mark or a
of the same class. dominant feature thereof and apply such
reproduction, counterfeit, copy or colorable
152.4. The use of a mark by a company related imitation to labels, signs, prints, packages,
with the registrant or applicant shall inure to wrappers, receptacles or advertisements
the latters benefit, and such use shall not affect intended to be used in commerce upon or in
the validity of such mark or of its registration: connection with the sale, offering for sale,
Provided, That such mark is not used in such distribution, or advertising of goods or services
manner as to deceive the public. If use of a on or in connection with which such use is likely
mark by a person is controlled by the registrant to cause confusion, or to cause mistake, or to
or applicant with respect to the nature and deceive, shall be liable in a civil action for
quality of the goods or services, such use shall infringement by the registrant for the remedies
inure to the benefit of the registrant or hereinafter set forth: Provided, That the
applicant. (n) infringement takes place at the moment any of
the acts stated in Subsection 155.1 or this
Sec. 153. Requirements of Petition; Notice and subsection are committed regardless of
Hearing. - Insofar as applicable, the petition for whether there is actual sale of goods or services
cancellation shall be in the same form as that using the infringing material.
provided in Section 134 hereof, and notice and Q. Is registration needed for infringement
hearing shall be as provided in Section 135 cases?
hereof. A. Yes. Sec. 155 says, any person who shall,
without the consent of the owner of the
Sec. 154. Cancellation of Registration. - If the REGISTERED MARK.
Bureau of Legal Affairs finds that a case for
cancellation has been made out, it shall order Similar Goods Dominancy/wholistic test
the cancellation of the registration. When the
order or judgment becomes final, any right Nestle v. CA
conferred by such registration upon the
registrant or any person in interest of record Flavor Master v. Master Roast. Applied the
shall terminate. Notice of cancellation shall be dominancy test.
published in the IPO Gazette.

Sec. 155. Remedies; Infringement. - Any person Asia Brewery v. CA & San Miguel Corporation
who shall, without the consent of the owner of
the registered mark: Grino-Aquino, J.
155.1. Use in commerce any reproduction,
SMC filed a complaint against Asia Brewery Inc. test of similarity. Average shopper is usually in a
(ABI) for infringement and unfair competition hurry and does not inspect every product on
for ABIs Beer Pale Pilasen or Beer na Beer. SMC the shelf as if he were browsing in a library. So
cites the following issues (ratio follows issue) the casual purchaser who is unsuspicious must
1. SMC Pale Pilsen has rectagular hops and malt be the standard. The factors to consider are (1)
design which is similar with ABIs trademark the training and education of the usual
Test of Dominancy was used where similarity in purchaser, (2) the cost of the article and the (3)
size form and color while relevant is not conditions under which it is usually purchased.
conclusive. Here, Beer does not appear in Thus, there is TM infringement of the mark but
SMCs TM, San Miguel does not appear in none as to the bottle because although bad
ABIs TM. No similarity in sound, spelling or faith of Sunshine is evident since Del Montes
appearance. No evidence presented by SMC bottle states, Del Monte Corp, Not to be
proving that anyone who purchases ABI can be Refilled, there is still no infringement since the
deceived that it is SMCs. bottles design was registered only in the
2. Bottles are bottled in amber-colored steinie Supplemental Register and this does not vest
bottles of 320 ml capacity steinie bottles are the registrant with the exclusive right to use the
similar but not identical. Also, the bottle is a label nor does it give rise to the presumption of
standard type originally developed in US and validity of the registration.
not an SMC design. Also, protection is confined
to nonfunctional features. Amber color is for
preventing transmission of light and provides Converse Rubber v. Universal Rubber
maximum protection to beer. Also, 320 ml is the
standard prescribed under a circular of the DTI. Universal Rubber filed an application for the
Court also held that there is a substantial price registration of Universal Converse for use on
difference. rubber shoes and rubber slippers. Converse files
an opposition saying that the TM is confusingly
Negre: The case seems to be decided in a wrong similar to the word Converse. Converse
manner, by an old lady justice. San Miguel Light presents lone witness, a private merchant with
comes out in transparent bottles, and there are stores selling Converse that the sales in her
green and yellow bottles in the market. Also, store averaged 12-20 pairs a month purchased
after consuming 3 beers, you cant really tell the mostly by basketball palyers of local private
difference in taste. educational institutions. She presents sales
invoices as proof.

Del Monte v. CA & Sunshine Sauce Held: Converse is the dominant word which
identifies petitioner. Universal admits that
Del Monte (US) granted PhilPack (RP) right to Converse has known that the word Converse
manufacture and sell products under Del Monte belongs to and is being used by petitioner.
TM and it registered the TM. Sunshine Boundless choice of words are available and
manufactures sauce too, contained in various when there is no reasonable explanation for the
kinds of bottles including the Del Monte bottle defendants choice of such a mark, the
which it bought from junk shops. Philpack files inference is inevitable that it wsa chosen to
complaint for TM infringement and for unfair deceive. Sales invoices are best proof of actual
competition. CA held that a side-by-side sales of Converse products in RP. Sale of 12-20
comparison shows no colorable imitation of TM pairs is not considered insignificant because the
since design is different. shoes are of high expensive quality which not
too many people can afford. Such actual use of
Held: Side-by-side comparison is not the final goods in the local market establishes trademark
use which serves as the basis for action aimed filed its application.
at trademark pre-emption.
Q. Would the result have been different had a
Q. What is the best proof of use of the product different test been used?
in the country? A. It seems that way, since the CA used
A. Sales invoices. dominancy test and the result was different
from the SC decision which used the holistic
Q. What if the sales were done over the test.
internet, is it sufficient to establish actual use?
A. Yes. There is no need for actual presence in Q. Why was this case decided differently from
RP. the Converse?
A. In Converse, there was proof of actual prior
Q. What if the foreign based company does commercial use.
advertising in cable, is it sufficient to prove use
of the mark in RP?A. No definite answer, but Lim Hoa v. Director
Converse seems to require actual sales, since it
says that sales invoices are the best proof of use Lim Hoa filed for application of registration of
in a country. TM consisting of two midget roosters in combat
with the word Bantam, for food seasoning.
Emerald Garments v. CA Agricom Devt opposed the application saying
that it is confusingly similar with its own TM
HD Lee (Lee Jeans) filed for the cancellation of which is a pictorial representation of a hen with
the TM of Emerald Garments called Stylistic the words Hen Brand and Marca Manok
Mr. Lee (skirts, jeans, blouses, socks, briefs, also used in food seasoning.
jackets, jogging suits). HD Lee claims that the
products are so closely related that it will cause Held: There is such similarity between them as
confusion, mistake and deception. CA used the to cause confusion. In the test of dominancy,
test of dominancy saying that if the competing similarity in size, form, color, while relevant, is
trademark contains the essential or dominant not conclusive. If the competing trademark
features of another, such that it will cause contains the main or essential dominant
confusion and deception, then there would be features of another, infringement takes place.
infringement. Thus, since the labels are similar, Duplication is not necessary, not is it necessary
the CA ruled there was infringement. that the infringing label should suggest an effort
to imitate. Also, the product is purchased by
Held: The SC used the holistic test which says cooks and household help, sometimes illiterate
that the entirety of the marks in question must who are guided by pictorial representations and
be considered in determining confusing the sound of the word. There is also greater
similarity. It ruled that there is no infringement. danger here since the products are cheap.
Emeralds TM is Stylistic Mr. Lee and is not
confusingly similar to Lee. Since the product is Q. What was the factor considered by the
jeans which are not inexpensive, the casual court?
buyer is more cautious and discriminating. A. Same animals and similar products.
Confusion and deception is less likely. The
average consumer also buys his jeans by brand. Q. Would there be infringement in crocodile
Also, Lee is primarily a surname, so HD Lee and alligator?
cant acquire exclusive ownership of the term. A. Yes.
In addition, HD Lee failed to show prior actual
commercial use of its Lee TM in RP before it Q. Tiger and lion?
A. Yes. test. Note that when goods are similar and the
marks are identical, Sec. 147.1 gives a
Q. Would the ruling be the same if the case presumption of the likelihood of confusion.
involved leather goods?
A. It may have been decided differently since Spectrum of the Likelihood of Confusion
the case would involve expensive products Same goods Different goods
where the buyers are wary and not illiterate.

Philips Export v. CA & SEC

Philips Export (Netherlands) owns TM for

Philips, for electrical products. Standard
Philips (RP) was issued a certificate of
registration by SEC for the business of chain Identical marks Different marks
rollers, belts, bearing. PE filed a complaint
asking for the cancellation of SPs name and
filed for a petition for injunction. SEC ruled
against PE, saying that Sec. 18 of the Corp. Code
is applicable only when the corporate names
are identical.

Held: The right to use a corporate name is a

property right, a right in rem which it may
assert. Corp Code gives two requirements: (1)
That complaint acquired a prior right over such
name and (2) that the proposed name is either Negre: There should be no difference between
identical, deceptively or confusingly similar, or the dominancy and holistic test. With either
patently deceptive. PEs prior adoption of the test, you should arrive at the same conclusion,
term Philips is not in doubt, and the test as to based on this spectrum.
whether it would be confusing is the ordinary
person. Philips is indeed the dominant word. Dissimilar Goods
Note that although no proof was presented of Polaroid v. Polarad
actual confusion, it is sufficient that confusion is
probably or likely to occur. Polaroid (Delaware) is registrant of the name
Polaroid for the use of sheet polarizing material,
Q. Where did the case emanate? lamps, optical lans. It files an action for
A. From SEC. injunction against Polarad claiming that its use
infringed on its trademark and is unfair
Q. Does SEC have jurisdiction over the case? competition. Polarad is engaged in manufacture
A. Yes because it involves corporate names. of microwave generating devices and TV studio
equipment. Polarad admits that he had some
Q. Who has jurisdiction over cases involving knowledge of plaintiffs use of the name
corporate names under PD 902-A, the SEC or Polaroid, but not as to electronics. Polarad used
the RTC? the name as early as 1945, but there was no
A. This is still a grey area. protest. It registered in 1953, and plaintiff
delayed suit until 1956. Polaroid claims that
Q. Which test should be applied in this case? laches does not apply in tm cases since
A. The court seemed to apply the dominancy injunction, rather than damages, are sought.
 selected the word Mc Sleep deliberately to
Held: Plaintiff is guilty of laches. Doctrine of trade on the goodwill and reputation of
laches has no such reach as claimed when the McDonalds.
goods are different. TM owners interest is in
preventing such use because he may wish to Conclusion: The Court finds and concludes that
preempt the market for later exploitation. Here, (1) McDonalds is entitled to enforce its family
owners rights in such appendant markets are of marks that are characterized by the
easily lost. They must be asserted early, lest combination of the prefix Mc with a generic
they be made the means of reaping a harvest word; (2) the name McSleep Inn is likely to
which others have sown. cause an appreciable number of the public to
be confused by believing McSleep Inn is
Q. What are the factors cited by the court in sponsored, associated, affiliated, connected, or
deciding infringement cases when the products endorsed by McDonalds; and (3) the adoption
are different? and use by Quality International of the name
A. 1. Strength of the mark McSleep Inn was a deliberate attempt to
2. Degree of similarity between the two marks benefit by the good will and reputation of
3. Proximity of the products McDonalds. The Court found trademark
4. Likelihood that the prior owner will bridge infringement, unfair competition, and dilution
the gap under the Illinois statute.
5. Actual confusion
6. Defendants good faith in adopting its own Q. In this case, what were the 7 factors applied?
mark Similar with the earlier ones given. These are
7. Quality of the defendants product considered in determining the likelihood of
8. Sophistication of the buyers confusion:
(1) the strength of distinctiveness of the mark,
QUALITY INNS INTERNATIONAL, INC. v. (2) the similarity of the two marks,
McDONALDS CORPORATION (3) the similarity of the goods or services with
the marks identify,
On September 21, 1987 , Quality Inns (4) the similarity of the facilities used by the
International, Inc. announced a new chain of parties in conducting their businesses,
economy hotels to be marketed under the (5) the similarity of advertising used by the
name McSleep Inn. McDonalds Corporation parties,
responded immediately claiming that the name (6) the defendants intent,
McSleep infringed on the McDonalds family (7) and actual confusion.
of marks that are characterized by the prefix If we apply the facts of the case to this statute,
Mc combined with a generic word. Robert C. we will see that some of these conditions have
Hazard, Jr., CEO of Quality International in 1980, been met.
claimed he was driving down the highway when
it hit him, to name the new economy chain Q. Can bad faith in trademark infringement
McSleep, and had no intent of using cases be presumed?
McDonalds goodwill to its advantage. A. No, it should be proven.
McDonalds contends that it is the owner of a
family of marks each of which is formulated by Q. Are surveys admissible? Since in the Quality
combining the prefix Mc with a generic word Inn case, a survey was presented by McDonalds
to form a fanciful trademark or service mark. It which showed that people associated
contends that McSleep Inn that had been McDonalds with Quality Inns McSleep.
adopted by Quality International is likely to A. Yes, if accompanied with testimony of the
cause confusion and that Quality International person conducting the survey, or if it falls under
the commercial list exception. no notice to infringer? Like when he is not
aware that he is infringing?
A. It appears that the court can do this, since
Sec. 156. Actions, and Damages and Injunction intent to mislead is not essential. (?)
for Infringement. -
156.1. The owner of a registered mark may Sec. 157. Power of Court to Order Infringing
recover damages from any person who infringes Material Destroyed. -
his rights, and the measure of the damages 157.1. In any action arising under this Act, in
suffered shall be either the reasonable profit which a violation of any right of the owner of
which the complaining party would have made, the registered mark is established, the court
had the defendant not infringed his rights, or may order that goods found to be infringing be,
the profit which the defendant actually made without compensation of any sort, disposed of
out of the infringement, or in the event such outside the channels of commerce in such a
measure of damages cannot be readily manner as to avoid any harm caused to the
ascertained with reasonable certainty, then the right holder, or destroyed; and all labels, signs,
court may award as damages a reasonable prints, packages, wrappers, receptacles and
percentage based upon the amount of gross advertisements in the possession of the
sales of the defendant or the value of the defendant, bearing the registered mark or trade
services in connection with which the mark or name or any reproduction, counterfeit, copy or
trade name was used in the infringement of the colorable imitation thereof, all plates, molds,
rights of the complaining party. matrices and other means of making the same,
shall be delivered up and destroyed.
156.2. On application of the complainant, the
court may impound during the pendency of the 157.2. In regard to counterfeit goods, the
action, sales invoices and other documents simple removal of the trademark affixed shall
evidencing sales. (n) not be sufficient other than in exceptional cases
which shall be determined by the Regulations,
156.3. In cases where actual intent to mislead to permit the release of the goods into the
the public or to defraud the complainant is channels of commerce.
shown, in the discretion of the court, the
damages may be doubled. Sec. 158. Damages; Requirement of Notice. - In
any suit for infringement, the owner of the
156.4. The complainant, upon proper showing, registered mark shall not be entitled to recover
may also be granted injunction. profits or damages unless the acts have been
Q. What are the types of remedies granted for committed with knowledge that such imitation
infringement? is likely to cause confusion, or to cause mistake,
A. 1) Damages, 2) impounding of sales invoice, or to deceive. Such knowledge is presumed if
3) injunction. the registrant gives notice that his mark is
registered by displaying with the mark the
Q. What kind of damages are compensable? words "Registered Mark" or the letter R within
A. Only loss of profit. But when there is intent a circle or if the defendant had otherwise actual
to mislead, double the profit. notice of the registration.

NOTE: It is thus evident that even when there is Sec. 159. Limitations to Actions for
no intent to mislead, there can be Infringement. - Notwithstanding any other
infringement. provision of this Act, the remedies given to the
owner of a right infringed under this Act shall
Q. Can the court award damages when there is be limited as follows:
 prevent or delay the issuance of an injunction
159.1 Notwithstanding the provisions of Section or restraining order with respect to such
155 hereof, a registered mark shall have no infringing matter. (n)
effect against any person who, in good faith,
before the filing date or the priority date, was Sec. 160. Right of Foreign Corporation to Sue in
using the mark for the purposes of his business Trademark or Service Mark Enforcement Action.
or enterprise: Provided, That his right may only - Any foreign national or juridical person who
be transferred or assigned together with his meets the requirements of Section 3 of this Act
enterprise or business or with that part of his and does not engage in business in the
enterprise or business in which the mark is Philippines may bring a civil or administrative
used. action hereunder for opposition, cancellation,
infringement, unfair competition, or false
159.2 Where an infringer who is engaged solely designation of origin and false description,
in the business of printing the mark or other whether or not it is licensed to do business in
infringing materials for others is an innocent the Philippines under existing laws.
infringer, the owner of the right infringed shall Q. Converse and Canon required prior actual
be entitled as against such infringer only to an use in RP of the mark in order for the foreign
injunction against future printing. oppositors case to prosper. Is actual use in RP
still required?
159.3. Where the infringement complained of is A. It appears that this is no longer a
contained in or is part of paid advertisement in requirement, since the foreign national who
a newspaper, magazine, or other similar sues under this section is required not to
periodical or in an electronic communication, engage in business in the Philippines.
the remedies of the owner of the right infringed
as against the publisher or distributor of such Yu v. CA
newspaper, magazine, or other similar
periodical or electronic communication shall be Philip Yu is the exclusive distributor of House of
limited to an injunction against the Mayfair wallcovering products. Unisia imported
presentation of such advertising matter in the same goods via FNF Trading and sold the
future issues of such newspapers, magazines, or products in the domestic market. Yu filed for
other similar periodicals or in future injunction. Unisia claims ignorance of the
transmissions of such electronic exclusive contract.
communications. The limitations of this
subparagraph shall apply only to innocent Held: The right to perform an exclusive
infringers: Provided, That such injunctive relief distributorship agreement and to reap the
shall not be available to the owner of the right profits resulting from such performance are
infringed with respect to an issue of a proprietary rights which a party may protect
newspaper, magazine, or other similar and which may not be diminished by the
periodical or an electronic communication expedient act of utilizing a person to obtain
containing infringing matter where restraining goods from the supplier to defeat the very
the dissemination of such infringing matter in purpose for which the exclusive distributorship
any particular issue of such periodical or in an was conceptualized at the expense of the
electronic communication would delay the exclusive distributor. Also, the House of Mayfair
delivery of such issue or transmission of such in England was duped into believing that the
electronic communication is customarily goods ordered through FNF Trading was to be
conducted in accordance with the sound shipped to Nigeria only but the goods were
business practice, and not due to any method actually sold in the Philippines.
or device adopted to evade this section or to
Q. What does this case have to do with IP right to registration, order the cancellation of a
rights? (actual question asked by Negre) registration, in whole or in part, and otherwise
A. IP rights, like exclusive distributorship, are rectify the register with respect to the
proprietary rights which a party may protect. registration of any party to the action in the
exercise of this. Judgment and orders shall be
Q. Co. A based in Singapore has exclusive certified by the court to the Director, who shall
distribution with Co. B in RP for product D. make appropriate entry upon the records of the
Can Co. B prevent Co. C from bringing the Bureau, and shall be controlled thereby.
product to the Philippines?
A. Yes. Sec. 162. Action for False or Fraudulent
Declaration. - Any person who shall procure
Q. What if C is not aware of the exclusive registration in the Office of a mark by a false or
distributorship? fraudulent declaration or representation,
A. From the case, it seems that intent is whether oral or in writing, or by any false
required. (but answer changes later) means, shall be liable in a civil action by any
person injured thereby for any damages
Q. What if the product is a life-saving drug sustained in consequence thereof.
imported by the government?
A. The government may probably import it by Sec. 163. Jurisdiction of Court. - All actions
exerting its police power. under Sections 150, 155, 164, and 166 to 169
shall be brought before the proper courts with
appropriate jurisdiction under existing laws.
Q. Where do you draw the line?
A. Maybe for life-saving drugs, or important Sec. 164. Notice of Filing Suit Given to the
technologies like fast growing rice palay. If not, Director. - It shall be the duty of the clerks of
government will be depriving persons of such courts within one (1) month after the filing
proprietary rights (property) without due of any action, suit, or proceeding involving a
process. mark registered under the provisions of this Act,
to notify the Director in writing setting forth:
Q. What does TRIPS and WTO provide on the names and addresses of the litigants and
parallel importation? designating the number of the registration or
A. Once the product is distributed, he can no registrations and within one (1) month after the
longer control resale because the right is limited judgment is entered or an appeal is taken, the
to the first distribution. clerk of court shall give notice thereof to the
Office, and the latter shall endorse the same
Q. So should B have been able to prevent upon the filewrapper of the said registration or
importation, since after the first sale, there is registrations and incorporate the same as a part
no more right to control sale? Wont there be a of the contents of said filewrapper. (n)
monopoly if this is the case?
A. Yes, it does seem that way, because only the Sec. 165. Trade Names or Business Names. -
government, in the exercise of police power, 165.1. A name or designation may not be used
can deprive persons of property rights without as a trade name if by its nature or the use to
due process. which such name or designation may be put, it
is contrary to public order or morals and if, in
particular, it is liable to deceive trade circles or
Sec. 161. Authority to Determine Right to the public as to the nature of the enterprise
Registration. - In any action involving a identified by that name.
registered mark, the court may determine the
165.2. (a) Notwithstanding any laws or name, the name of the locality in which his
regulations providing for any obligation to goods are manufactured, or his registered mark
register trade names, such names shall be or trade name, and thereupon the Collector of
protected, even prior to or without registration, Customs shall cause one (1) or more copies of
against any unlawful act committed by third the same to be transmitted to each collector or
parties. to other proper officer of the Bureau of
(b) In particular, any subsequent use of the Customs. (Sec. 35, R. A. No. 166)
trade name by a third party, whether as a trade Q. Can the customs seize the goods?
name or a mark or collective mark, or any such A. It appears under this section that all they can
use of a similar trade name or mark, likely to do is to prevent entry. But under Art. 9 of the
mislead the public, shall be deemed unlawful. Paris Convention, All goods unlawfully bearing
a trademark or trade name shall be seized on
165.3. The remedies provided for in Sections importation into those countries of the Union
153 to 156 and Sections 166 and 167 shall apply where such mark or trade name is entitled to
mutatis mutandis. legal protection. Note that under the Paris
convention, authorities shall not be bound to
165.4. Any change in the ownership of a trade effect seizure. If the legislation of a country
name shall be made with the transfer of the does not permit seizure on importation, it shall
enterprise or part thereof identified by that be replaced by prohibition of importation or by
name. The provisions of Subsections 149.2 to seizure on inside the country.
149.4 shall apply mutatis mutandis.
Sec. 167. Collective Marks. -
Sec. 166. Goods Bearing Infringing Marks or 167.1. Subject to Subsections 167.2 and 167.3,
Trade Names. - No article of imported Sections 122 to 164 and 166 shall apply to
merchandise which shall copy or simulate the collective marks, except that references therein
name of any domestic product, or to "mark" shall be read as "collective mark."
manufacturer, or dealer, or which shall copy or
simulate a mark registered in accordance with 167.2 (a) An application for registration of a
the provisions of this Act, or shall bear a mark collective mark shall designate the mark as a
or trade name calculated to induce the public to collective mark and shall be accompanied by a
believe that the article is manufactured in the copy of the agreement, if any, governing the
Philippines, or that it is manufactured in any use of the collective mark.
foreign country or locality other than the (b) The registered owner of a collective mark
country or locality where it is in fact shall notify the Director of any changes made in
manufactured, shall be admitted to entry at any respect of the agreement referred to in
customhouse of the Philippines. In order to aid paragraph (a).
the officers of the customs service in enforcing
this prohibition, any person who is entitled to 167.3. In addition to the grounds provided in
the benefits of this Act, may require that his Section 149, the Court shall cancel the
name and residence, and the name of the registration of a collective mark if the person
locality in which his goods are manufactured, a requesting the cancellation proves that only the
copy of the certificate of registration of his registered owner uses the mark, or that he uses
mark or trade name, to be recorded in books or permits its use in contravention of the
which shall be kept for this purpose in the agreements referred to in Subsection 166.2 or
Bureau of Customs, under such regulations as that he uses or permits its use in a manner
the Collector of Customs with the approval of liable to deceive trade circles or the public as to
the Secretary of Finance shall prescribe, and the origin or any other common characteristics
may furnish to the said Bureau facsimiles of his of the goods or services concerned.
 (b) Any person who by any artifice, or device, or
167.4. The registration of a collective mark, or who employs any other means calculated to
an application therefor shall not be the subject induce the false belief that such person is
of a license contract. offering the services of another who has
identified such services in the mind of the
Sec. 168. Unfair Competition, Rights, Regulation public; or
and Remedies. -
168.1. A person who has identified in the mind (c) Any person who shall make any false
of the public the goods he manufactures or statement in the course of trade or who shall
deals in, his business or services from those of commit any other act contrary to good faith of a
others, whether or not a registered mark is nature calculated to discredit the goods,
employed, has a property right in the goodwill business or services of another.
of the said goods, business or services so
identified, which will be protected in the same 168.4. The remedies provided by Sections 156,
manner as other property rights. 157 and 161 shall apply mutatis mutandis.
Q. What is unfair competition?
168.2. Any person who shall employ deception A. It is the passing off of ones goods as those of
or any other means contrary to good faith by another.
which he shall pass off the goods manufactured
by him or in which he deals, or his business, or Compana General de Tabacos v. Alhambra Cigar
services for those of the one having established
such goodwill, or who shall commit any acts Compania files case against Alhambra who sold
calculated to produce said result, shall be guilty cigarettes bearing the words Alhambra
of unfair competition, and shall be subject to an Isabelas, for TM infringement and unfair
action therefor. competition, arising from the use of the word
Isabelas.
168.3. In particular, and without in any way
limiting the scope of protection against unfair Held: In infringement case, the action does not
competition, the following shall be deemed proceed on the theory that the public will be
guilty of unfair competition: defrauded, although that may be the result. It is
on the claim that the plaintiffs right on the
(a) Any person, who is selling his goods and mark ahs been invaded. There is no need to
gives them the general appearance of goods of proof anything more than right to the exclusive
another manufacturer or dealer, either as to use. No proof of fraud or intent to defraud is
the goods themselves or in the wrapping of the necessary. In unfair competition, the action is
packages in which they are contained, or the exclusively based on fraud. A violation of TM
devices or words thereon, or in any other cannot be carried on with an action of unfair
feature of their appearance, which would be competition based on similarity to the plaintiffs
likely to influence purchasers to believe that the TM. The law does not permit these two actions
goods offered are those of a manufacturer or to be maintained on the same facts.
dealer, other than the actual manufacturer or
dealer, or who otherwise clothes the goods (As to infringement case)
with such appearance as shall deceive the There can be no registration of a TM which
public and defraud another of his legitimate represents the geographical place of production
trade, or any subsequent vendor of such goods or the origin of the product or is merely the
or any agent of any vendor engaged in selling description. Also, there is no secondary
such goods with a like purpose; meaning of the word Isabela acquired by long
association with plaintiffs cigarettes. There are
also other cigarettes using Isabela. (b) in commercial advertising or promotion,
misrepresents the nature, characteristics,
Q. Can a person file for both trademark qualities, or geographic origin of his or her or
infringement and unfair competition? another persons goods, services, or commercial
A. Yes, they are not mutually exclusive. activities, shall be liable to a civil action for
damages and injunction provided in Sections
Q. Can you file for both in the same action? 156 and 157 of this Act by any person who
A. Yes. But in Alhambra, if the action is based on believes that he or she is or likely to be
the mark, it is only an action for infringement. damaged by such act.

169.2. Any goods marked or labeled in

contravention of the provisions of this Section
shall not be imported into the Philippines or
Q. Compare infringement and unfair admitted entry at any customhouse of the
competition. Philippines. The owner, importer, or consignee
A. See chart. of goods refused entry at any customhouse
under this section may have any recourse under
the customs revenue laws or may have the
Trademark Infringement remedy given by this Act in cases involving
Unfair Competition goods refused entry or seized. (Sec. 30, R. A.
What is? No. 166a)
Unauthorized use of a trademark
Passing off of ones product for another based Sec. 170. Penalties. - Independent of the civil
on general appearance and administrative sanctions imposed by law, a
Bad faith/intent necessary? criminal penalty of imprisonment from two (2)
No. years to five (5) years and a fine ranging from
Intent to deceive/Fraudulent intent is essential Fifty thousand pesos (P50,000) to Two hundred
Registration of the trademark required? thousand pesos (P200,000), shall be imposed on
Prior registration is required any person who is found guilty of committing
Registration is not necessary any of the acts mentioned in Section 155,
Section 168 and Subsection 169.1.
Sec. 169. False Designations of Origin; False Q. What actions are available to TM holders?
Description or Representation. - A. Civil, criminal and administrative cases.
169.1. Any person who, on or in connection
with any goods or services, or any container for Q. What is the venue?
goods, uses in commerce any word, term, A. For civil cases, either MTC (below P300K,
name, symbol, or device, or any combination below P400K for Manila) or RTC depending on
thereof, or any false designation of origin, false the amount.
or misleading description of fact, or false or For criminal cases, it is unclear if jurisdiction
misleading representation of fact, which: should depend on the imprisonment or fine.
For administrative cases, the DTI for
(a) is likely to cause confusion, or to cause tradenames, the IPO for trademarks.
mistake, or to deceive as to the affiliation,
connection, or association of such person with
another person, or as to the origin, sponsorship,
or approval of his or her goods, services, or
commercial activities by another person; or
 relationships with persons located in the
Member State;

PRIMER ON INTERNET RELATED (ii) whether the user has stated, in conjunction
TRADE MARK ISSUES with the use of the sign on the Internet, that he
does not intend to deliver the goods or services
Joint Recommendation Concerning Provisions offered to customers located in the Member
on State and whether he adheres to his stated
the Protection of Marks, and Other Industrial intent;
Property Rights in Signs, on the Internet
(iii) whether the user offers post-sales activities
Q. What are some of the important provisions in the Member State, such as warranty or
discussed in Joint Recommendation? service;
A. Only Article 2 and 3 were discussed in class.
They are: (iv) whether the user undertakes further
Article 2Use of a Sign on the Internet in commercial activities in the Member State
a Member State which are related to the use of the sign on the
Use of a sign on the Internet shall constitute use Internet but which are not carried out over the
in a Member State for the purposes of these Internet.
provisions, only if the use has a commercial
effect in that Member State as described in (c) the connection of an offer of goods or
Article 3. services on the Internet with the Member State,
including:
Article 3Factors for Determining Commercial
Effect in a Member State (i) whether the goods or services offered can be
lawfully delivered in the Member State;

(1) [Factors] In determining whether use of a (ii) whether the prices are indicated in the
sign on the Internet has a commercial effect in a official currency of the Member State.
Member State, the competent authority shall
take into account all relevant circumstances. (d) the connection of the manner of use of the
Circumstances that may be relevant include, sign on the Internet with the Member State,
but are not limited to: including:

(a) circumstances indicating that the user of the (i) whether the sign is used in conjunction with
sign is doing, or has undertaken significant plans means of interactive contact which are
to do, business in the Member State in relation accessible to Internet users in the Member
to goods or services which are identical or State;
similar to those for which the sign is used on
the Internet. (ii) whether the user has indicated, in
conjunction with the use of the sign, an
(b) the level and character of commercial address, telephone number or other means of
activity of the user in relation to the Member contact in the Member State;
State, including:
(iii) whether the sign is used in connection with
(i) whether the user is actually serving a domain name which is registered under the
customers located in the Member State or has ISO Standard country code 3166 Top Level
entered into other commercially motivated Domain referring to the Member State;
 to those for which the sign is used on the
(iv) whether the text used in conjunction with Internet.
the use of the sign is in a language
predominantly used in the Member State; Q. Japanese company is selling products in the
Internet using Japanese language. Is this
(v) whether the sign is used in conjunction with commercial use?
an Internet location which has actually been A. No.
visited by Internet users located in the Member
State. Q. If a company has no means of delivering the
products to a particular country, is this an
important factor to consider?
(e) the relation of the use of the sign on the A. Yes.
Internet with a right in that sign in the Member
State, including: Q. Post sales services, where should this be
done?
(i) whether the use is supported by that right; A. The place where the item is sold.

(ii) whether, where the right belongs to Q. Does the place where the sale is perfected
another, the use would take unfair advantage determine where the commercial use of the
of, or unjustifiably impair, the distinctive trademark is undertaken? (Just a note:
character or the reputation of the sign that is General Rule: Art. 1523, Civil code: Where in
the subject of that right. pursuance of a contract of sale, the seller is
authorized to send the goods to the buyer,
(2) [Relevance of Factors] The above factors, delivery of the goods to a carrier is deemed to
which are guidelines to assist the competent be delivery of the goods to the buyer.
authority to determine whether the use of a Exception: When otherwise specified, e.g., the
sign has produced a commercial effect in a Incoterms, i.e., FOB Manila (title transfers in
Member State, are not pre-conditions for Manila)
reaching that determination. Rather, the A. No. There is commercial use when the user
determination in each case will depend upon of the mark is actually serving customers
the particular circumstances of that case. In located
some cases all of the factors may be relevant. In in the Member State or has entered into other
other cases some of the factors may be commercially motivated relationships with
relevant. In still other cases none of the factors persons located in the Member State.
may be relevant, and the decision may be based
on additional factors that are not listed in
paragraph (1), above. Such additional factors
may be relevant, alone, or in combination with Domain Names
one or more of the factors listed in paragraph
(1), above. Q. What are the parts of a domain name?
A. Everything that precedes the dot is second
Q. Is actual sale needed to constitute use? level domain yahoo[.]com Everything that
A. No. The Joint Recommendation states that comes after the dot is first level domain.
the following are sufficient: (a) circumstances
indicating that the user of the sign is doing, or Q. What are the dual functions of a domain
(b) has undertaken significant plans to do, name?
business in the Member State in relation to A. The functions are:
goods or services which are identical or similar 1. Represents the address of a computer on the
Internet so that every computer can c. registrant canr efuse to transfer, dispute
communicate with every other computer. name is on hold
2. Serves the same function in electronic d. registrant can file for declaratory judgment
commerce as the trademark in more traditional
modes of business. Q. What are the requirements to invoke the NSI
dispute resolution?
Q. How do you obtain a domain name? A. TM owner must have TM registration, the
A. Through an Internet Service Provider that dispute is for an identical second level registry,
submits the electronic application to 240 on the federal principal register, application
registries worldwide. Among these are NSI filing date predates the creation date of the
Network Solutions Inc. domain name.

Q. What is the system of registry? Q. Is the dispute resolution viable?

A. Domain names are assigned on a first come A. Not if the TM owner wishes to use the
first serve basis. Thre is no requirement of use domain name because the domain name will be
of the domain name in connection with an put on hold indefinitely.
Internet-related service. While this may seem to
aid cyberpiracy, this aids in defensive registry to Q. What is the new method for domain name
prevent cyber-piracy. dispute resolution?
A. The Uniform Dispute Resolution Policy
Q. What is the manner by which disputes on (UDRP) which applies to any domain name
domain names are resolved? confusingly similar to the complainants
A. The owner of a trademark registration can trademark, not simply an identical one.
challenge the domain name holders
registration of an identical second-level Q. What is the complainants burden of proof?
domain provided the effective date of the A. They are three
complainants trademark registration predates 1. The registrants domain name is identical or
the creation date of the domain name confusingly similar to a trademark or service
registration. mark of the complainant;
2. The registrant has no rights or legitimate
Q. What is the procedure? interest in the domain name;
A. It is as follows: 3. The domain name has been registered and
1. NSI will send a letter to the domain name used in bad faith.
registrant giving him 30 days to supply his own
trademark registration. Q. What are some indicators of bad faith?
A. (1) Respondents offer to sell the domain
2. If the domain name registrants TM name
registration predates the notice of dispute, he (2) no use of the domain name
will be able to keep his domain name. The (3) attempt to show affiliation or trade off the
trademark owners recourse would be to file a goodwill of the complainant
lawsuit or to have a settlement or arbitration. (4) failure to file a response
(5) pattern of registering domain name
3. If the domain name registrant cannot consisting of marks belonging to others who are
produce its own TM registration: not affiliated with respondent
a. registrant can transfer domain name to TM (6) suspect timing in that respondent was aware
owner of complainants prior rights
b. registrant can register new TM which places
the disputed name on hold Q. Please give a short summary of the
proceedings. acquired philips.com.ph and registered it with
A. Certainly. dotPHone, Inc. in RP. There are no active
1. A complaint is filed in hard copy and via e- websites for them but are currently pointed to
mail this should request transfer of domain name servers.When Philips sent it a cease and
name and not cancellation; a provider (such as desist letter, it replied that it is not willing to sell
WIPO) is selected, and the panelists must be the domain names yet, but would like to know
selected. exactly about the condition and proposition of
2. A response is filed 20 days from those who are interested in these domain
commencement date in hard copy and e-mail. names. Park argues that it used Philips
because it is an acronym for Philippine
Q. Are precedents respected? Information Providing Service.
A. Some UDRP decisions have cited other
decisions as precedent but there are many Held: (1) confusion the names are identical;
inconsisted decisions. (2) legitimate rights Park has no legitimate
right over the TM Philips. It is not supported by
any evidence of use, and reference to the
Yahoo! Inc. v. Net Games, Inc. Oxford Dictionary does not disclose such
accepted abbreviation. (3) bad faith the
Yahoo owns the trademarks YAHOO! and response to the letter suggests that it was part
YAHOO!; services include both local and of Parks intention to sell the domain name at
international web directory and search services, some time for valuable consideration. The court
online games, people searches. Net Games uses also observed a pattern of registering famous
the domain name yahoops.com for a gambling marks in RP. There is no evidence that Park has
website that offers gambling on a variety of ever had a business which attempted to use the
sports, including basketball, hockey, tennis, and domain names.
boxing. Yahoo filed a cease-and-desist letter but
Net Games claims that it uses the name with a
bona fide offering of goods, has used the name Yahoo! v. Yahoo Computer Services
for many months without objection and it does
not promote search engines nor cause actual Yahoo! (Delaware) is a search engine and Yahoo
confusion. Computer Services (RP) is a business in Makati
which registered yahoo.com.ph and
Held: Based on the 3 factor test, (1) confusion - yahoo.ph. Yahoo! Claims that it is the owner
a reader is likely to believe that the subject of the mark and the use of YCS is infringing. YCS
domain name is related to the comlainant and claims that its main income is from the sale of
its mark.; (2) legitimate right it is a reasonable services and sale of hardware and software. Its
inference that the subject domain name was income has risen only 1.7% since the domain
created with YAHOO!s mark in mind. Net name was acquired and it is only a small
Games has spent little time and money to company which has had 1,004 hits on its site.
develop the site, and it cannot be said to have
legitimate interest in the domain name; (3) bad Held: YCS has no legitimate right of interest in
faith but there is no bad faith. The only proof the domain name. Its alleged rights are based
alleged is that Net Games is benefiting from the on a certificate of registration of business name.
notoriety of its mark. This is not enough. But there is no evidence that registration of a
business name with the DTI of RP provides the
Philips v. Park Kyoung Seok registrant with any exclusive rights with respect
to the business name. It did not provide YCS
Philips (Netherlands) owns the TM Philips. Park with an exclusive right to use of the domain
name. There is also clear bad faith since it is is, online stock brokerage services. There is fair
inconceivable that YCS could have been use of the disputed domain name and the use
unaware of the complainants name and TM of Frank is merely descriptive of the services
when it registered. offered by Frank. There is also a disclaimer on
the website of any affiliation with AOL which
Philips v. Relson supports the finding of good faith.

Philips Electronics (Netherlands) filed a

complaint against Relson Ltd. of Western Yahoo! v. Syrynx, Inc.
Samoa which registered philips.ws. Relson did
not reply to the complaint. April 99, Yahoo officially anounced its
acquisition of broadcast.com, an internet co.
Held: The fact that Relson failed to provide a that specializes in aggregation and broadcast of
response to the complaint does not relieve the streaming audio via the internet. But as early as
complainant Philips of the burden of proving its March 99, there had been industry speculation
case. Though Relson did not expressly challenge on such merger. The day before Syrynx
any of the assertions, this cannot simply be registered the domain name
taken as an admission. (1) identity - There is yahoobroadcast.com and yahoolinux.com
indeed identity of the names. (2) legitimate (Mar 99), Wall Street Journal reported that
rights not proven. Its allegations say that it Yahoo! Was in talks to acquire Broadcast.com.
has no right to the domain name are no more Yahoo filed a complaint but Syrynx claims that it
than the factors given in the Policy. Mere spent $100-$125K to get the site going although
assertion is not proof. (3) Bad faith there is no the site actually connects to an index page
challenge to the complaint. But there ought not displaying a deadline. Syrynx filed no response.
to be any inferences from default other than
those that have been established or can be Held: (1) identical established; (2) legitimate
fairly inferred from the facts in the complaint. use respondent has to prove use or
There is also no evidence that there is intention preparation to use; that he has been commonly
to sell, nor a plan to sell the domain name. known by the disputed domain name, and that
he is making a legitimate noncommercial or fair
use of the name with no intent for commercial
America Online v. Frank Albanese gain. Here, Syrynx is in default and he has failed
to prove the factors; (3) the name is also
America Online uses aol.com. Frank registered in bad faith, because it has registered
registered aoltrader.com. AOL filed a multiple domain names all identical to names
complaint saying that there is use in bad faith, belonging to Yahoo.
since Frank registered the domain name after
AOLs adoption of the mark, that they are Arthur Guinness v. Dejan Macesic
nearly identical, that Frank has registered
numerous other domain names that infringe Arthur Guiness (Ireline) owns the TM
upon famous marks including inteltrader.com, Guinness for beer. Dejan registered the
ciscotrader.com, ibmtrader.com, etc. domain name guiness.com for a website
dedicated to the discussion of home brewing
Held: AOL has not met all the requirements. No and sports.
question that it is confusingly similar. However,
Frank has rights or legitimate interests to the Held: (1) identity Dejan is not infringing on
domain name, since he has used the domain Arthurs mark as he is not selling similar wares
name with a bona fide offering of services, that or services. Guinness has other products like
the Guinness World Book of Records, Guinness Jollibee file a case against it in RP RTCs?
Flight, Guinness Group. The word guinness is A. No. RP court cant acquire jurisdiction over
not automatically associated with guinness that foreign firm, the cause of action of Jollibee
beer. There is also a legitimate would not be on RP law, and this case differs
noncommercial, fair use of the domain name from traditional TM infringement cases in many
with no intent for commercial gain. Revenues aspects.
are modest and serve to cover hosting and
maintenance costs. Also, there is no bad faith Abuse of Web Technologies
since every effort has been made to eliminate
the likelihood of any possible mistaken Q. What are the issues in linking?
association of the site with the beer. A. Linking is vital to the seamless functioning of
the web, because it reduces the need to use
Q. What are the factors showing bad faith? complex address and provides nearly
A. The factors are: instantaneous access to other sites of interest.
(i) circumstances that indicate that the Linking increases hits which increases
Respondent has registered or has acquired the advertising revenues. But the problem primarily
domain name primarily for the purpose of is that one loses track of exactly whose website
selling, renting, or otherwise transferring the one is on, where the information is coming
domain name registration to the Complainant from, and how current it is.
who is the owner of the trademark or service
mark or to a competitor of the Complainant, for Q. What are the dangers of framing?
valuable consideration in excess of the A. In framing, a user reads content from one
Respondents documented out-of-pocket costs site in anothers site. In the Total News case,
directly related to the domain name; plaintiff objected not to linking per se but only
(ii) registration of the domain name in order to to partial linking, where their advertising has
prevent the owner of the trademark or service been edited or deleted and the defendants
mark from reflecting the mark in a have substituted their own advertising. Implied
corresponding domain name, provided that the license to link did not permit any right to alter.
Respondent has engaged in a pattern of such
conduct; Q. Summarize the dangers of framing.
(iii) registration of the domain name primarily A. They are: (1) Loss of advertising revenue, and
for the purpose of disrupting the business of a (2) Confusion over the ownership of a site
competitor;
(iv) by using the domain name, intentionally Q. What is a metatag?
attempting to attract, for commercial gain, A. It is a software parameter of HTML, where a
Internet users to the Respondents web site or website creator can describe what is available in
other on-line location, by creating a likelihood that particular site, and search engines rely on
of confusion with the complainant's mark as to that to match a website to a search query.
the source, sponsorship, affiliation, or
endorsement of the web site or location or of a Q. What is cyberstuffing?
product or service on it or a location. A. It is the placing of multiple entries of a
keyword on the face of a webpage. It can be
Q. Is the UDRP available to RP companies for invisible on the face of a webpage (black
violation of domain names? lettering against black background) or from
A. Yes, since jurisdiction is acquired by UDRP repeated use of a word (e.g. This site is not
when parties submit to its jurisdiction. related to X, is not endorsed by X, we dont use
X, X, sorry if you see this, X, we love you.)
Q. A UK company registeres jollibee.uk, can
Q. What is the problem brought about by of abuse of right provisions under Art. 19, 20,
metatagging and cyberstuffing? 21 of the Civil Code, and that the freedom of
A. Internet advertising erevenues are driven by speech does not extend to that.
the number of hits or times a certainw ebsite is
accessed. The purpose of both is to lure persons Q. US firm distributing porn over the net. How
searching the third-party trademark to an can RP stop pornographers over the internet?
unrelated website. A. Maybe through ISPs, under the E-Commerce
Act.
Q. Cause of action in metatagging and
cyberstuffing?
A. Unfair competition.

Q. What is an aggregation site?

A. A site that essentially serves as a specialized
search engine. An auction aggregation site will
serve to search multiple auction sites by use of
automated software programs.

Q. Cause of action.
A. In one case, eBay filed for trespass, false
advertising, trademark dilution, computer fraud
and abuse, unfair competition, unjust
enrichment. The court granted it an injunction
since it was found that the aggregation sites
actions was unauthorized and the proximate
cause of injury suffered by eBay due to loss of
bandwidth or server capacity.

Q. What is mousetrapping?
A. Here, when one views a webpage, he is
unable to go back to any of the previous pages
visited and is trapped at the last site viewed.

Q. What are webrings?

A. Webrings are a web within a web, where
owners of websites with a common theme band
together to arrange sites into linked circles. For
examples, there can be a Star Trek webring, etc.

Q. What are possible violations in webrings?

A. There could be violation on how the
trademarks are used.

Q. Will an action in RP against sucks sites

prosper? E.g., jollibeesucks.com,
ateneosucks.com.
A. Possible causes of action would be violation